WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio
Case No. D2020-2200
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”) / Ghuilo Dhulio, India.
2. The Domain Name and Registrar
The disputed domain name <e-leclerc-fr.club> (the “Disputed 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 August 20, 2020. On August 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 August 25, 2020, 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 August 25, 2020.
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 September 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 29, 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, a well-known operator of supermarkets and hypermarkets in France as well as in several other European Union countries, has been in operation for over 60 years. The Complainant currently owns 721 stores in France and about 100 elsewhere in Europe.
The Complainant owns the trademark E LECLERC, European Union Trade Mark Registration No. 002700664, registered on January 31, 2005 in international classes 1-45 (the “E LECLERC Mark”). The Complainant’s official website is at “www.e-leclerc.com”.
The Disputed Domain Name was registered on April 14, 2020 and resolves to a parking page that has no active content.
On June 9, 2020, the Complainant’s counsel sent a cease and desist letter to the Respondent but never received a response.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii):
(i) the Disputed 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 respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the E LECLERC Mark.
It is uncontroverted that the Complainant has established rights in the E LECLERC Mark based on its years of use as well as its registered trademark for the E LECLERC Mark in France and other jurisdictions in Europe. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the E LECLERC Mark.
The Disputed Domain Name consists of the entirety of the E LECLERC Mark with the letter “e” connected by a hyphen to the term “leclerc”, which, in turn, is connected by a hyphen to the geographical abbreviation “fr”, which stands for France, and then is followed by the generic Top-Level Domain (“gTLD”) “.club”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, the addition of the geographic abbreviation “fr” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s E LECLERC Mark. See WIPO Overview 3.0, section 1.8; see also KPMG International Cooperative v. WhoisGuard Protected, WhoisGuard, Inc./ Kore Bailly, Blue Label, WIPO Case No. D2019-1112 (the addition of the geographic abbreviation “hk” for Hong Kong, China to the complainant’s KPMG mark “does not prevent a finding of confusing similarity”).
Additionally, although the Disputed Domain Name contains hyphens between the letters “e” and “leclerc” and “fr” and “leclerc”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Silew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214).
Regarding the addition of the gTLD “.club” to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy. See, e.g., Koninklijke KPN N.V. v. Cui Daoen, WIPO Case No. D2015-1577. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s E LECLERC Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its E LECLERC Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
Based on the foregoing, the Complainant has made out a prima facie case and the Respondent has not demonstrated any rights or legitimate interests in respect of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, with respect to the use of the Disputed Domain Name, passive holding does not prevent a finding of bad faith. By using the Disputed Domain Name passively and having no content on its web page, the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).
The Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s registered trademark is suggestive of bad faith registration and use. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s E LECLERC Mark. The registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark is additional evidence of bad faith.
Moreover, the Respondent did not respond to the cease-and-desist letter sent by the Complainant. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <e-leclerc-fr.club> be transferred to the Complainant.
Lynda M. Braun
Date: October 9, 2020