WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Jugo Patel
Case No. D2019-0932
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Jugo Patel, United States.
2. The Domain Name and Registrar
The disputed domain name <leclercenergie.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2019. That day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and 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 April 25, 2019 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 April 26, 2019.
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 April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 22, 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
Named after its founder, Monsieur Edouard Leclerc, the Complainant, based in France, is the registered proprietor of European Union registered trademark LECLERC, No. 002700656, registered on February 26, 2004 in Classes 1 - 45, under which, as an organization of independent storekeepers, it operates a chain of 691 supermarkets and hypermarkets in France and 100 such stores in other European countries.
The Complainant has imported gasoline since 1979 and presently operates 660 petrol stations. Since 2015 it has offered energy related products and services, including fuels and charge stations for electric cars, under the figurative trademark:
That mark was registered by the Complainant in France on September 8, 2015, No. 4208114, and as an International trademark on January 13, 2016, No. 1298402.
On October 5, 2017 the Complainant registered the domain name <energies.leclerc>, which resolves to the website “www.energies.leclerc” offering green electricity.
The Domain Name was registered on December 28, 2018. It resolves to a website at “www.leclercenergie.com” which states, inter alia:
“Leclerc Corporation, through its subsidiaries, is an international manufacturer and marketer of transportation fuels and other petrochemical products. Leclerc is a company based in Cathedral, California…”
5. Parties’ Contentions
In summary, the Complainant says the Domain Name is identical to its LECLERC trademark and confusingly similar to its ENERGIES E. LECLERC figurative mark and its <energies.leclerc> domain name; and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Domain Name was registered anonymously; the Respondent has not been authorized by the Complainant to use the names LECLERC or LECLERC ENERGIE; the Respondent’s name is not LECLERC; the Respondent is not commonly known as LECLERC and appears to make no business use of that name. Further, the Respondent has not used the Domain Name in connection with a bona fide offering of goods and services. In this regard the Complainant says it has every reason to believe the Respondent’s website is a fake. Searches failed to reveal any company called “Leclerc Corporation” or “Leclerc Energie” incorporated in California or Nevada; on January 17, 2019 the Respondent’s website described Mr. G. B. as Chief Executive Officer and President since 2007 and as founder of “leclercenergie” in that year. However, on April 24, 2019 the website applied exactly the same description to a Mr. B. B. Other enquiries by the Complainant revealed inter alia that there is no company named “Leclerc” nor any person named B. having a business licence in Cathedral City, California; the telephone number on the Respondent’s website is not functioning; and the address of “Leclerc Corporation” is a house in a residential area.
As to bad faith registration, the Complainant says its LECLERC trademark is highly distinctive and very well known, as has been recognized in several WIPO UDRP cases: Association of E. Leclerc Distributor Centers - ACD Lec against Guziewicz Ryszard, WIPO Case No. D2018-0482; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Wang Lian Feng, WIPO Case No. D2018-0659; Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc, WIPO Case No. D2018-1185, and Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii, WIPO Case No. D2019-0108. Accordingly, it is likely that the Respondent was aware of the Complainant, its activities and its rights in the LECLERC mark when registering the Domain Name. The use in the Domain Name of the French word “energie” is odd for an American company engaged in the energy business. The Complainant submits the registration of the Domain Name was fraudulent and made with the intention to benefit from the goodwill in the Complainant’s trademarks and to prevent the Complainant from reflecting its marks in the Domain Name.
As to bad faith use, for the reasons given above in relation to legitimacy, the Complainant says the Respondent’s website is fake and contains inaccurate and unreliable information since there is no company “Leclerc Corporation” or “Leclerc Energie”. Further, the Respondent’s website displays the same blue colour and the same white colour characters on a blue background as one of the Complainant’s websites, “www.e‑leclerc.com”. Accordingly, consumers may think the Respondent’s website is one of the Complainant’s or that it is dedicated to the Complainant’s energy products and services.
Further, the Domain Name is configured to operate with mail servers, so there is a risk the Respondent may be able to operate a phishing scheme, to deceive consumers into thinking they are dealing with the Complainant.
The Complainant says the Respondent failed to respond to a cease and desist letter, offering no plausible explanation for registering the Domain Name nor the use of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
This element requires a comparison to be made between the Domain Name and a trademark in which the Complainant has rights. Accordingly, it is unnecessary to compare the Domain Name with the Complainant’s <energies.leclerc> domain name.
The specific Top-Level Domain (“TLD”) of the Domain Name, “.com” is generally considered irrelevant to this element and may be disregarded. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Domain Name comprises the Complainant’s LECLERC trademark together with the French dictionary word “energie”, which does not prevent a finding of confusing similarity between the Domain Name and that mark. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8:“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Panel finds the Domain Name to be confusingly similar to the Complainant’s LECLERC trademark. The Complainant has established this element. It is therefore unnecessary to consider whether the Domain Name is identical or confusingly similar to the Complainant’s figurative mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the LECLERC mark is distinctive and widely known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,
WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
It is to be noted that for sub-paragraph 4(b)(ii) to apply, proof of a pattern of conduct by the Respondent is required. No such proof has been provided.
Having regard to the Complainant’s contentions and to the extensive evidence it has provided in support of them, and in the absence of any explanation by the Respondent of its purpose in registering a domain name incorporating the well known LECLERC trademark together with the French word “energie”, which describes some of the activities for which the Complainant is well known, and having regard to the use of the Domain Name to resolve to a website displaying the same colours and characters as one of the Complainant’s websites and containing conflicting accounts of the creation of a company of which there is no business record, purporting to be engaged in the energy industry, the Panel concludes that the Domain Name was registered with the Complainant, its LECLERC mark and its energy activities in mind and has been used by the Respondent intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on its website or location.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith. The Complainant has established this element.
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 <leclercenergie.com> be transferred to the Complainant.
Alan L. Limbury
Date: May 26, 2019