WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc v. Joe Shamji
Case No. D2018-2645
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Joe Shamji of London, the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <e-leclerrc.com> (the “Domain Name”) is registered with One.com A/S (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2018. On November 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 21, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2018.
The Center appointed Linda Chang as the sole panelist in this matter on December 27, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a French association of independent storekeepers.
The Complainant owns several E LECLERC trademarks, including European Union Trademark Registration No. 002700664 registered on January 31, 2005 in classes 1 to 45. The E LECLERC trademark is widely used in connection with a chain of super and hypermarket stores, including 680 E LECLERC stores in France and around 100 in other European countries such as Poland, Spain, Portugal, Andorra and Slovenia. The Complainant owns a domain name <e-leclerc.com> registered on May 28, 1996 and uses it as official website related to its super and hypermarkets network.
The Domain Name was registered by the Respondent on May 4, 2018, and currently points to an inactive webpage. Evidence submitted by the Complainant shows that the Respondent was using the Domain Name in connection with email scam in the name of the Complainant, through a <e-leclerrc.com> email address (“[…]@e-leclerrc.com”).
5. Parties’ Contentions
The Complainant made the following contentions:
The Domain Name imitates the Complainant’s E LECLERC trademark with the duplication of the letter “r”, which has no impact on the overall similarities and cannot avoid the risk of confusion. The Domain Name therefore is confusingly similar to the Complainant’s prior trademark E LECLERC.
The Respondent has no link with the Complainant and is not commonly known by the Domain Name. The Domain Name is neither used in connection with a bona fide offering of goods or services nor legitimate noncommercial fair use. The Respondent thus has no rights or legitimate interests over the Domain Name.
The Respondent was well aware of the existence of the Complainant’s company and business, but still registered the Domain Name in order to create the fake email address. The Respondent is using the Domain Name to send fraudulent emails by misusing the identity of the Complainant for unlawful financial gain. The Domain Name was thus registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a registered trademark in the European Union for E LECLERC under trademark registration number 002700664.
The Domain Name differs from the Complainant’s E LECLERC trademark only by the addition of a letter “r” between letters “e” and “c” and the generic Top-Level Domain (“gTLD”) “.com”. Visually and aurally the Domain Name is similar to the Complainant’s trademark.
It is well established that a domain name that is a misspelling of a trademark is a typical example of typo-squatting. The Panel thus finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not authorized by the Complainant to use the E LECLERC trademark, nor is commonly known by the Domain Name. The Panel determines that the Complainant has established a prima facie case that the Respondent does not have legitimate interests in the Domain Name.
In the absence of evidence to the contrary from the Respondent, the Panel accepts the evidence provided by the Complainant as true. As documented by the Complainant, the Respondent was using the Domain Name to send fraudulent emails, purporting to work within the Complainant’s company. The Panel views that this is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Typo-squatting per se is sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy. Clearly, the Respondent was well aware of the existence of the Complainant and its E LECLERC trademark, but intentionally chose the Domain Name that is nearly identical to the Complainant’s trademark and its official website relying on the fact that the duplicated letter “r” might go unnoticed.
The Respondent’s bad faith is further evidenced by its use of the Domain Name to impersonate the Complainant and seek to place orders for unlawful financial benefits. Recipients of these emails may be misled into believing that they are dealing with the Complainant itself and consequently suffer financial losses.
The Respondent’s bad faith is further supported by the fact that the Respondent is using a privacy service to hide its true identity and has not responded to the Complainant’s contentions.
For the reasons above, the Panel views that the Respondent’s conduct amounts to bad faith registration and use of the Domain Name in accordance with paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <e-leclerrc.com> be transferred to the Complainant.
Date: January 10, 2019