WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. 夏龙 (xia long)
Case No. D2020-2847
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 夏龙 (xia long), China.
2. The Domain Name and Registrar
The disputed domain name <e-eleclerc.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2020, 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 October 30, 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 in English on October 30, 2020.
On October 30, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 30, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020.
The Center appointed Rachel Tan as the sole panelist in this matter on December 30, 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 a French association, ACD Lec (Association des Centres Distributeurs E. Leclerc). “Leclerc” refers to the last name of the founder and promoter of the Complainant, Mr. Edouard Leclerc. The Complainant is using the E LECLERC mark on its chain of supermarkets and hypermarkets stores in France. The Complainant has over 700 stores in France and around 100 in the other European countries. In 2019, the turnover of the Complainant was EUR 48.20 billion in France, and it employs around 133,000 people.
The Complainant owns several trade mark registrations incorporating the E LECLERC mark, including European Union Trade Mark Registration No. 002700664 for E LECLERC registered on January 31, 2005 and Registration No. 011440807 for registered on May 27, 2013 in all 45 international classes. It also owns a domain name <e-leclerc.com> registered in 1996.
The Respondent is 夏龙 (xia long), China.
The disputed domain name was registered on September 15, 2020 and does not resolve to an active webpage.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is strongly confusingly similar to the Complainant’s E LECLERC mark and domain name <e-leclerc.com>. The disputed domain name reproduces the E LECLERC mark identically and the generic Top-Level Domain (“gTLD”) “.com” should not be considered as it is a compulsory element of a domain name. The presence of the additional letter “-e” is in no help in avoiding the risk of confusion with the E LECLERC mark as it may be an act of typo squatting by the Respondent or understood as an indication of electronic products and/or services which makes a direct association with the Complainant’s marks/products.
The Complainant further alleges that the Respondent has no link of any nature with the Complainant, does not seem to have rights or legitimate interests in the registration and use of the disputed domain name. The Respondent is not commonly known under the name “E Leclerc” and has no rights in the name “E Leclerc”. The Respondent has not been authorized by the Complainant to use the name “E Leclerc”. The Complainant has not authorized, licensed, or permitted the Respondent to use any of its trade marks or to apply for or use any domain name incorporating the Complainant’s trade marks. There is no relationship existing between the Complainant and the Respondent. The disputed domain name is neither used in connection with a bona fide offering goods or/and services nor constitutes a legitimate noncommercial fair use.
The Complainant finally asserts that the disputed domain name was registered in bad faith as the E LECLERC mark has been well known for many years and it is unlikely that the Respondent was unaware of the Complainant’s activities and of the existence and use of the E LECLERC mark at the time of registering the disputed domain name. The mere fact that the Respondent registered the disputed domain name, reproducing the Complainant’s E LECLERC mark is in and of itself evidence of bad faith registration. The presence of the letter “-e” within the disputed domain name is an act of typosquatting. The sole purpose of the Respondent is to create a risk of confusion with the Complainant’s rights. The disputed domain name leads to an error page and such use clearly deprived of any real and substantial offer of goods or services and cannot be considered as a legitimate noncommercial or fair use. The disputed domain name disrupts the Complainant’s business and causes harm to the Complainant’s brand image. Therefore, the disputed domain name has been used in bad faith as well.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) The disputed domain name is registered with the TLD “.com” which is in Roman characters, rather than Chinese letters;
(b) English is the most widely used language in international relations;
(c) The Complainant being based in France and the Respondent being based in China, English is the fairest neutral language for the proceeding;
(d) The Complainant is unable to communicate in Chinese and would incur considerable expenses in retaining the services of a translator in order to translate the Complaint and its Annexes in Chinese; and
(e) The Complainant noticed that the Respondent seems to be located in California and English should be understood by the Respondent.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.
(a) The Complainant is a company based in France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of Roman letters for the disputed domain name indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.
The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the E LECLERC mark.
The Panel notes the disputed domain name <e-eleclerc.com> is comprised of the E LECLERC trade mark in its entirety. The positioning of the E LECLERC trade mark in the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the additional element “-e” does not preclude a finding of confusing similarity between the E LECLERC trade mark and the disputed domain name. In cases where a domain name consists of a common, obvious, or intentional misspelling of a trade mark, the domain name will normally be considered confusingly similar to the relevant mark for purposes of UDRP standing. See section 1.9 of the WIPO Overview 3.0; Mediarex Enterprises Limited v. Yong Woon Chin, Webolutions, WIPO Case No. DCO2020-0014.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the E LECLERC trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “E Leclerc”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s E LECLERC trade mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s E LECLERC trade mark and <e-leclerc.com> domain name had been registered well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s E LECLERC mark is known throughout the world. Moreover, the term “E Leclerc” is not merely a name. Search results using the key word “E Leclerc” on the Baidu and Google search engines direct Internet users to the Complainant and its products/services, which indicates that an exclusive connection between the E LECLERC mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s E LECLERC mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous E LECLERC mark creating a presumption of bad faith.
In addition, the Panel finds that the inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, current passive holding of the disputed domain name and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 disputed domain name <e-eleclerc.com> be transferred to the Complainant.
Date: January 14, 2021