WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Nanci Nette
Case No. D2019-2545
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 Nanci Nette, United States of America.
2. The Domain Name and Registrar
The disputed domain name <leclerc-mdm.com> (the “Domain Name”) is registered with OldWorldAliases.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.
The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on November 27, 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 French association, Association des Centres Distributeurs E. Leclerc or A.C.D. Lec, whereby “E. Leclerc” or “Lec” refers to the last name of the founder of the association, being Mr. Edouard Leclerc. The Complainant operates a chain of supermarkets and hypermarkets in France and in various other European countries. One of Complainant’s stores is in the French commune of Mont-de-Marsan.
The Complainant owns a trade mark registration (word mark) for LECLERC in the European Union (“EU”). The Complainant’s trade mark was filed on May 17, 2002 and registered as an EU trade mark on February 26, 2004 (registration no. 002700656), for a wide variety of goods and services, that predates the date of the Domain Name registration, hereinafter referred to as the “Trade Mark”.
The Domain Name was registered on June 8, 2019. The Domain Name resolves to different websites with various contents at different times, including infected and fraudulent websites.
5. Parties’ Contentions
The Complaint alleges that Leclerc is one of the most renowned chain of supermarkets and hypermarkets stores in France. The Complainant’s chain of stores and the LECLERC trade marks are well known in France and also in several other European countries. The Complainant emphasizes that “Leclerc” has no meaning in French nor English and is therefore highly distinctive.
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
Besides, the Complainant noticed that the Respondent created the subdomain <brico.leclerc-mdm.com> which was associated with the keyword “Brico E-Leclerc Mont-de-Marsan” on Google.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.
The Domain Name consists of the elements “leclerc” and “mdm”. The element “leclerc” is identical to the Complainant’s registered trade marks and the element “mdm” is most likely an abbreviation of Mont-de-Marsan, merely a geographical description that does not serve to avoid the confusing similarity between the Domain Name from the Complainant’s trade marks.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (gTLD), “.com” in this case, as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the name of the Respondent is not composed of the name “Leclerc” and that the Respondent is not commonly known by the Domain Name or the Trade Mark, nor does it make any use of a business name including the name “Leclerc”.
The Complainant has not granted the Respondent any authorization, license or any right whatsoever to use the Trade Mark as part of the Domain Name. Nor is there any business relationship or any commercial link with the Complainant.
The Domain Name is neither used in connection with a bona fide offering of goods or services nor constitutes a legitimate noncommercial or fair use.
The Domain Name resolves to different websites with various contents at different times, including infected and fraudulent websites.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trade mark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark LECLERC and uses it for the purpose of misleading and diverting Internet traffic. There is no reasonable explanation for choosing the Domain Name. Next to that, the fact that the Respondent has created the subdomain <brico.leclerc-mdm.com> which was associated with the keyword “Brico E-Leclerc Mont-de-Marsan” on Google, underlines that the Respondent knew the Complainant’s Trade Mark and activities.
As the Domain Name resolves to different websites with various contents at different times, including infected and fraudulent websites the use cannot be considered as a good faith use.
The Domain Name disrupts the Complainant’s business and is harmful for the activities and image of the Complainant.
The Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 <leclerc-mdm.com> be transferred to the Complainant.
Richard C.K. van Oerle
Date: December 11, 2019