WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc v. WhoisGuard, Inc. / Lorenzo Minecan

Case No. D2019-1437

1. The Parties

Complainant is Association des Centres Distributeurs E. Leclerc, France, represented by Inlex IP Expertise, France.

Respondent is WhoisGuard, Inc., Panama / Lorenzo Minecan, Romania.

2. The Domain Names and Registrar

The disputed domain names <eleclercbonline.club>, <eleclerconline.club> and <e-leclerc.shopping> (“Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 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 Respondent of the Complaint, and the proceedings commenced on July 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2019. The Center received email communications from Respondent on July 3, and July 5, 2019. The Center invited the Parties to explore settlement negotiations on July 3, 2019, and Complainant requested suspension of the proceeding on July 3, 2019. The proceeding was suspended on July 5, 2019 and reinstituted at the request of Complainant on July 25, 2019. Accordingly, the Response due date was extended until August 11, 2019. Respondent did not submit any Response or further communication. Accordingly, the Center notified the Parties on August 12, 2019 that it would proceed to panel appointment.

The Center appointed Marina Perraki as the sole panelist in this matter on August 21, 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

According to the Complaint, Complainant is a French association, founded by Mr. Edouard Leclerc. Complainant operates a chain of retail supermarkets and hypermarket stores in France as well as in several other European countries, such as Italy, Spain, Portugal, Poland, Andorra and Slovenia. The opening of its first store took place in France almost 70 years ago. In 2018 there were 691 supermarkets/hypermarkets/express “E LECLERC” in France and 99 stores “E LECLERC” at international level. In 2016, the turnover of Complainant was EUR 43.44 billion, whereas 123,000 people are employed by Complainant in France.

Complainant provides its services also online through, inter alia, its website “www.e-leclerc.com”.

Complainant holds numerous trademark registrations composed of the term E LECLERC, including the European trademark registration E LECLERC (word), No. 002700664, filed on May 17, 2002 and registered on January 31, 2005, for goods and services in classes 1-45.

The first Domain Name <e-leclerc.shopping> was registered on March 27, 2019. The second Domain Name <eleclerconline.club> was registered on March 28, 2019. The third Domain Name <eleclercbonline.club> was registered on March 28, 2019. All Domain Names lead to inactive websites, namely a holding page of the webhost cPanel. As Complainant demonstrated, email servers (MX) have been activated for all three Domain Names.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use of the E LECLERC mark.

The Panel finds that the first Domain Name <e-leclerc.shopping> is confusingly similar to the E LECLERC trademark of Complainant.

The first Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The hyphen “-“ between the first letter “e” and the word “leclerc” in the “e-leclerc” portion of the first Domain Name is immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The generic Top-Level Domain (“gTLD”) “.shopping” is also disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are required for technical reasons only (Credit Agricole S.A. v. Yang Xiao Yuan, WIPO Case No. D2018-1476; Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The second Domain Name <eleclerconline.club> incorporates the E LECLERC trademark of Complainant in its entirety. The word “online” added in the second Domain Name does not avoid a finding of confusing similarity as it is non-distinctive and the E LECLERC mark remains clearly distinguishable (Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Inc / David Grandpierre, WIPO Case No. D2018-2237; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 ).

The gTLD “.club” is also disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, supra; Hay & Robertson International Licensing AG v. C. J. Lovik, supra).

The Panel finds that the second Domain Name <eleclerconline.club> is confusingly similar to the E LECLERC trademark of Complainant.

The third Domain Name <eleclercbonline.club> incorporates the E LECLERC trademark of Complainant in its entirety. The addition of the letter “b” and the word “online” in the “eleclercbonline” portion of the third Domain Name do not avoid a finding of confusing similarity as they are non-distinctive and the E LECLERC mark remains clearly distinguishable (Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, supra; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, supra; WIPO Overview 3.0 , sections 1.8 and 1.9 ).

The Panel finds that the third Domain Name <eleclercbonline.club> is confusingly similar to the E LECLERC trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Names include the trademark of Complainant E LECLERC entirely, with the addition of a hyphen and the gTLD “.shopping” for the first Domain Name, the word “online” and the gTLD “.club” for the second Domain Name and the letter “b”, the word “online” and the gTLD “.club” for the third Domain Name. These signal an intention on the part of Respondent to confuse users seeking or expecting Complainant (Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, WIPO Overview 3.0, section 2.5.1).

Furthermore, as Complainant has demonstrated, the Domain Names lead to inactive websites, whereas an email server has been configured on them. These indicate the intention of Respondent to potentially use the Domain Names for purposes other than hosting a website, including potentially for constructing an email composition containing the second Domain Name, possibly to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Lastly, the Domain Names, per Complainant, were initially registered with a privacy shield service and subsequently appeared as registered in the name of Respondent.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith.

Because the E LECLERC mark is a fictitious combination incorporating the first letter of the first name “Edouard” and the surname “Leclerc” of a natural person, namely the founder of Complainant, Mr. Edouard Leclerc, and therefore is highly distinctive and it had been widely used and registered by Complainant at the time of the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, provided also online through its website “www.e-leclerc.com“, namely online shopping (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, the Domain Names incorporate in whole Complainant’s mark. Use of the Domain Names therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names. It also indicates knowledge of Complainant and its field of business. This also supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).

Use of the gTLD “.shopping” further enhances a likelihood of confusion with Complainant’s mark, given the nature of Complainant’s services which are also provided “online” (online shopping). Similarly use of the gTLD “.club” may be perceived as referring to a brand loyalty program implemented by Complainant to its customers (L’Oréal and Biotherm v. Li Hai Lu, WIPO Case No. D2016-0631).

Lastly, as Complainant has demonstrated, initially the Domain Names were registered with a privacy shield service to hide the holder’s identity. In the circumstances of this case, the use of privacy service further supports a finding of bad faith.

As regards bad faith use, Complainant demonstrated that the Domain Names lead to inactive websites, namely a holding page of the webhost cPanel. There is also a risk that they be used for purposes other than to host a website. This is indicated by the fact that, as Complainant has demonstrated, an email server has been configured on all three Domain Names. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3). Furthermore, use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognised (in, inter alia, Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc, WIPO Case No. D2018-1185, Association des Centres Distributeurs E. Leclerc - ACD Lec v. Guziewicz Ryszard, WIPO Case No. D2018-0482, Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii, WIPO Case No. D2019-0108, 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 – A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Jugo Patel, WIPO Case No. D2019-0932), (ii) the failure of Respondent to submit a formal response, (iii) the initial concealment of the Domain Names holder’s identity through use of a privacy shield, and (iv) the implausibility of any good faith use to which the Domain Names may conceivably be put, given that as Complainant has demonstrated the corresponding websites are inactive and an email server has been configured on the Domain Names, which indicates a risk that Respondent potentially uses the Domain Names to create an email address to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

Lastly, as Complainant has demonstrated, Respondent did not reply to the cease and desist letter sent by Complainant through the intermediate of the registrar Namecheap by email on April 10, 2019, which remained unanswered since April 27, 2019, when the intermediate confirmed to have forwarded it to the domain name holders.

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

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 names <eleclercbonline.club>, <eleclerconline.club> and <e-leclerc.shopping> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: September 3, 2019