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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. WhoisGuard Protected, WhoisGuard, Inc. / Amaury Demichelis

Case No. D2019-3011

1. The Parties

The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lee, France, represented by Inlex IP Expertise, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Amaury Demichelis, France.

2. The Domain Name and Registrar

The disputed domain name <sodisro-e-leclerc.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 December 13, 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 December 17, 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 December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on January 22, 2020. 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 the French association “Association des Centres Distributeurs E. Leclerc – A.C.D Lec.”, and is a well-known of supermarkets stores in France.

The Complainant owns several trademarks composed of the term E LECLERC, among which the European Union Trademark E LECLERC No. 002700664, filed on May 17, 2002 in classes 1 to 45.

The disputed domain name is <sodisro-e-leclerc.com> which was registered on August 17, 2019.

At the time the Complaint was filed, the disputed domain name resolved to a holding page of the Registrar Namecheap.

The Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

(1) The Complainant first alleges that the disputed domain name <sodisro-e-leclerc.com> is similar to its earlier trademark E LECLERC, to the point of creating confusion.

The disputed domain name incorporates the Complainant’s earlier trademark E LECLERC in its entirety, associated to the denomination “Sodisro” which corresponds to the company name of an independent storekeeper belonging to the Complainant’s organization.

The presence of the name “Sodisro” within the disputed domain name enhances the likelihood of confusion with the Complainant’s trademarks and business, given “Sodisro” is related to the Complainant’s organization and business.

(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

- The disputed domain name was registered anonymously;

- The Respondent has not been authorized by the Complainant to use the term “E LECLERC” or register the disputed domain name;

- The name of the Respondent is not composed of the term “E LECLERC” or “Sodisro”;

- The disputed domain name is neither used in connection with a bona fide offering of goods of services nor constitute a legitimate noncommercial fair use as it resolves to holding page of the Registrar Namecheap.

(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

- Registered in bad faith

The Complainant alleges that the trademark E LECLERC is well-known in France and in several other countries of Europe, which has been recognized in several decisions issued by the Administrative Panel.

The terms E LECLERC and SODISRO have no meaning in French nor English.

The Complainant alleges that the Respondent was well-aware of the existence of the Complainant as well of its activities when he registered the disputed domain name: it cannot be a coincidence as it incorporates in the identical way both the trademark E LECLERC and the term “Sodisro”.

- Use in bad faith:

The Respondent has no right or legitimate interests in respect of the domain name identically reproducing the Complainant’s trademark E LECLERC and the company name “Sodisro” and therefore creating the confusion with the Complainant’s activities.

There is no legitimate or fair use of the domain name it resolves to a holding page of the Registrar Namecheap.

The disputed domain name disrupts the Complainant’s business and causes harm to the Complainant’s brand image: the Internet users can believe that the disputed web site is operated or at least linked to the Complainant.

The Respondent did not answer to the cease and desist letter sent by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(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 respect of the disputed domain name; and

(iii) The disputed domain names has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in E LECLERC, which predate the registration of the disputed domain name <sodisro-e-leclerc.com>.

The Panel finds that the disputed domain name is confusingly similar to the registered E LECLERC, trademark owned by the Complainant.

Indeed, the disputed domain name incorporates the entirety of the Complainant’s E LECLERC, trademark with the addition of the company name “Sodisro”, which has no other signification but being the name of a company of an independent storekeeper belonging to the Complainant’s organization.

The addition of the name “Sodisro” is related to the Complainant’s organization and business, does not prevent a finding of confusing similarity (section 1.7 and 1.8 of the Overview 3.0)

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate non commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the Complainant raises a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests. See De Beers Intangibles Limited v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2016-1465.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its E LECLERC trademark.

It results from the circumstances that the Respondent does not own any right on the trademark E LECLERC or is commonly known by the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

Since E LECLERC is a well-known and distinctive trademark, and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name <sodisro-e-leclerc.com>.

Futhermore,, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the E LECLERC trademark at the time of registration of the disputed domain name, since the Respondent has chosen to associate the well-known trademark E LECLERC to the name “Sodisro”, which has no meaning (nor in French, nor in English) but corresponds to the company name of an independent French storekeeper belonging to the Complainant’s organization.

The Respondent has no apparent connection with the E LECLERC trademark.

Moreover, the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.

In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name <sodisro-e-leclerc.com> also amounts to use of the disputed domain name in bad faith for the purpose of the Policy (see section 3.3 of the WIPO Overview 3.0.).

In the circumstances the Panel holds that the disputed domain name <sodisro-e-leclerc.com> was registered and is being used in bad faith.

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 name <sodisro-e-leclerc.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: February 5, 2020

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