WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii
Case No. D2019-0108
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 Privacy Protection of Moscow, the Russian Federation / Andrei Kislovodskii of Kazan, the Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <leclercdrive.site> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email communication in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on January 23, 2019 and requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings.
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 in both English and Russian, and the proceedings commenced on January 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 25, 2019. 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 well-known operator of supermarkets and hypermarkets in France as well as in several other European Union countries. In 2007, the Complainant has developed a concept of online business “Leclerc Drive” which allows consumers to collect in the stores the product previously ordered online.
The Complainant is the owner of trademark registrations across various jurisdictions including:
- the European Union trade mark registration for LECLERC, goods and services in classes 1-45, registered on February 26, 2004 (No. 002700656);
- the international registration for E.LECLERC DRIVE, goods and services in class 35, 38, 39, registered on July 20, 2010 under No. 1052904;
- the French registration for E.LECLERC DRIVE, goods and services in class 35, 38, 39, registered on February 9, 2010 under No. 3711622;
- the French registration for E.LECLERC DRIVE, goods and services in class 35, 38, 39, registered on October 7, 2011 under No. 3865024.
Moreover, the Complainant owns a domain name <leclercdrive.fr> registered on May 7, 2007 which resolves to the Complainant’s official website relating to its online business.
The Respondent appears to be an individual based in the Russian Federation. No additional information about the Respondent is known.
The Respondent registered the disputed domain name on October 9, 2018.
Currently, the website that the disputed domain name resolves to has no content, except for the message “leclercdrive.site”.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is identical or confusingly similar to the LECLERC and E.LECLERC DRIVE marks. According to the Complainant, a word “leclerc” has no generic meaning neither in English nor in French and is highly distinctive. The Complainant asserts that the disputed domain name reproduces the well-know trademark LECLERC in association with a generic and descriptive term “drive”. The addition of the term “drive” does not distinguish the disputed domain name from its registered mark LECLERC as it merely informs the Internet users about the type of services offered by the domain name holder. Furthermore, the terms “leclerc” and “drive” mirror the main parts of the E.LECLERC DRIVE mark.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name and the Complainant has not authorized the Respondent to register the disputed domain name. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the Respondent aims at obtaining sensitive consumer information.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent appears to have knowledge about its marks which shows that the disputed domain name was intentionally registered to benefit unfairly from the goodwill of the Complainant’s mark. In the Complainant’s opinion, the fact that the Respondent’s webpage, using the disputed domain name, does not function can make the Internet’s users believe that the Complainant’s website is not active – this perception will be harmful for the Complainant’s image and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complaint was filed in English. The Complainant requests English to be the language of the administrative proceeding. The Complainant contends that the Respondent deliberately chose to register a domain name containing an English word, namely “drive”, and the mere registration of the disputed domain name is therefore and of itself evidence of the ability of the Respondent to understand English language. The Complainant also emphasizes that it is unable to communicate in Russian and will occur considerable expenses in retaining the services of a translator in order to translate the Complaint and the Annexes into Russian.
Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
6.2. Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name contains the LECLERC mark in its entirety, with an addition of “drive”. The descriptive term “drive” does not serve to render the disputed domain name dissimilar to the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”), section 1.8. Moreover, the disputed domain name includes main parts of the E.LECLERC DRIVE mark, namely “Leclerc” and “drive”.
The generic Top-Level Domain (“gTLD”) “.site” should not be take into consideration while assessing the similarity between the disputed domain name and the Complainant’s marks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the LECLERC and E.LECLERC DRIVE marks and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panels that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 3.0, section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent used the privacy shield to register the disputed domain name (c) the Complainant did not authorize the Respondent to register the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, not only the Complainant’s marks predate the registration of the disputed domain name, but also they enjoy considerable renown as a chain of hypermarkets in France a few other counties (see Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc, WIPO Case No. D2018-1185).
Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the screenshots of the Respondent’s inactive website.
In the light of above, registering a domain name corresponding to reputable trademarks, and subsequent passive holding of such a domain name, thus preventing the trademark holder from registering such a domain name, is considered to satisfy the standard set out in 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 disputed domain name <leclercdrive.site> be transferred to the Complainant.
Date: March 11, 2019