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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc v. Redacted for Privacy, See PrivacyGuardian.org / pastal dolly malhotra

Case No. D2021-0037

1. The Parties

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

The Respondent is Redacted for Privacy, See PrivacyGuardian.org, United States of America / pastal dolly malhotra, India.

2. The Domain Name and Registrar

The disputed domain name <eleclerc-fr.club> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2021, 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 January 28, 2021 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 January 29, 2021.

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 February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 15, 2021.

The Center appointed Dennis A. Foster as the sole panelist in this matter on March 24, 2021. 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 based in France and operates hundreds of supermarkets and hypermarkets located there and in several other European countries. The Complainant conducts its business under the

E LECLERC mark, which is registered with the European Union Intellectual Property Office (“EUIPO”) (e.g., Registration No. 002700664; registered on January 31, 2005).

The disputed domain name, <eleclerc-fr.club>, is owned by the Respondent, and the date of creation is October 30, 2020. According to the evidence provided in Annex 6 of the Complaint, the disputed domain name resolved to a website that contained a replica of the Complainant’s stylized mark and suggested that free coupons could be obtained by Internet users if they provided their WhatsApp contact information. Subsequently, the disputed domain name did not resolve to an active page (Annex 8 of the Complaint). Currently, the disputed domain name does not resolve to an active page.

5. Parties’ Contentions

A. Complainant

- Based in France for nearly 70 years, the Complainant owns and operates supermarkets and hypermarkets. Some 721 of the Complainant’s stores are in France, and there are about 100 such stores in other European countries. The Complainant accounts for more than 20% of the relevant market in France, with revenue of EUR 48.2 Billion in 2019 and approximately 133,000 employees.

- The Complainant sells its goods under its E LECLEC mark, which is well known throughout Europe and comes from the name of the Complainant’s founder, Mr. Edouard Leclerc. The Complainant has registered the mark with the EUIPO.

- The disputed domain name, <eleclerc-fr.club>, is confusingly similar to the Complainant’s E LECLERC mark, as the mark is wholly included within that domain name. Inclusion of the hyphenated country code term, “-fr”, does not effectively distinguish the disputed domain name from the mark and may even increase the confusion since that county code applies to France, the country where the Complainant is based. Also, the addition of the generic Top-Level Domain (“gTLD”), “.club”, is irrelevant in the preceding comparison. Moreover, the Complainant’s mark is distinctive and is neither a French nor an English language common word.

- The Respondent has no rights or legitimate interests in the disputed domain name. There is no business relationship between the Complainant and the Respondent, and the Complainant has not authorized, permitted or licensed the Respondent to use the E LECLERC mark. Also, there is no evidence that the Respondent is commonly known as the disputed domain name.

- The disputed domain name resolved to a website that contained the Complainant’s plain and stylized marks, making it appear erroneously that the website was operated by the Complainant. Moreover, that website requested that Internet users submit their WhatsApp contact information should they wish to request free coupons. That usage is consistent with neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Instead, the Respondent appeared to be engaged in a fraudulent phishing scheme.

- The disputed domain name was registered and is being used in bad faith. The Complainant’s mark is famous in France and in several other European countries, so it is implausible that the Respondent was unaware of the Complainant or its mark. The addition of the “fr” country code provides further evidence of this awareness. Also, the Respondent has used a privacy service in registering the disputed domain name in order to hide its real identity. Moreover, the website attached to the disputed domain name was designed to allow the Respondent to conduct illegitimate phishing solicitations. The latter actions were intended to cause bad faith disruption to the Complainant's operations.

- The Complainant sent a demand to the Registrar in order to obtain the deactivation of the website at the disputed domain name (Annex 7 of the Complaint). Following this request, the website was deactivated (Annex 8 of the Complaint).

B. Respondent

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

6. Discussion and Findings

In accordance with paragraphs 4(a)(i) - (iii) of the Policy, the Panel may find for the Complainant and grant a transfer of the disputed domain name, <eleclerc-fr.club>, if the Complainant can prove that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Because the Complainant has supplied evidence of its trademark registration with the EUIPO for the E LECLERC mark, the Panel finds that the Complainant has the necessary rights in that mark for the purposes of Policy paragraph 4(a)(i). See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1; and Adventia Pharma, S.L. v. Super Privacy Service LTD c/o Dynadot LLC / bilal bal, WIPO Case No. D2020-1592 (“The Complainant has demonstrated rights in the PERMEACARE trademark through its registration in the EUIPO.”).

In comparing the disputed domain name, <eleclerc-fr.club>, with the E LECLERC trademark, the Panel notices that a prior Policy panel concluded that the domain name <e-leclerc-fr.club> is confusingly similar to that trademark. See, Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio, WIPO Case No. D2020-2200. The only difference between that domain name and the disputed domain name is the inclusion of a dash to substitute for a space between the two sections of the trademark, whereas the disputed domain name merely eliminates the space. Clearly, if the former domain name is confusingly similar to the Complainant's E LECLERC mark (which this Panel agrees it is), the disputed domain name in this proceeding also is confusingly similar to that mark. As a result, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. In both cases, the inclusion of the “.club” gTLD is of no relevance in the comparison of the disputed domain name to the mark.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The consensus of prior Policy panels is that a complainant need present only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, and then the burden of production shifts to that respondent to furnish evidence that it does possess those rights or legitimate interests. See, WIPO Overview 3.0, section 2.1; and OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149 (“...once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name.”).

The Complainant has successfully shown that the disputed domain name is confusingly similar to its valid trademark and asserted that it has not authorized, permitted or licensed the Respondent to use that mark for any purpose. The Panel finds that those circumstances create a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

As the Respondent failed to file a Response, the Panel will rely on the reasonable assertions presented in the Complaint to determine whether there is a possible rebuttal to the Complainant’s prima facie case. See, OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, supra (“The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true.”).

The Complainant contends, supported by evidence (Annex 6 of the Complaint), that the disputed domain name resolved to a website that mimicked the Complainant’s own website (containing the Complainant’s stylized trademark) and offered an inducement for Internet users to present personal WhatsApp contact information to obtain potentially free coupons from the Complainant. The Panel concludes that this use does not constitute “a bona fide offering of goods or services” as would comport with the requirements of Policy paragraph 4(c)(i). Instead, in agreement with the Complainant, the Panel believes that this usage is more than likely an illegitimate attempt to phish for Internet users’ personal information, consistent with a fraudulent intent on the part of the Respondent. See, Wesco Aircraft Hardware Corp. v. Contact Privacy Inc. Customer 1245095601 / Gulf Guns and Gear, WIPO Case No. D2019-2131 (“...the Panel finds that [the] purpose of registering the [disputed] Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services.”); and CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (“...such phishing scam cannot be considered a bona fide offering of goods or services...”).

With respect to Policy paragraph 4(c)(ii), the Panel agrees with the Complainant that the name of the Respondent, as presented on the disputed domain name Whois registration material, provides no evidence that the Respondent has been commonly known as the disputed domain name.

Finally, since use of the disputed domain name for phishing schemes, as described above, appears to be neither legitimate, noncommercial nor fair, the Panel concludes that Policy paragraph 4(c)(iii) also is not applicable.

Subsequently, the disputed domain name did not resolve to an active page. Currently, the disputed domain name also does not resolve to an active page.

Given the complete inapplicability of Policy paragraph 4(c) to this case, and there being no other discernible evidence to support a rebuttal, the Panel determines that the Complainant’s prima facie case must prevail.

Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant’s mark is well known and thus was known by the Respondent prior to its registration of the disputed domain name. The inclusion of the "fr" country code, referencing the Complainant's country of origin in the disputed domain name, only reinforces this conclusion regarding the Respondent's knowledge. See, Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Domain Administrator, See PrivacyGuardian.org / cunshuo zhang, WIPO Case No. D2019-1580 ("Given the distinctiveness of the Complainant’s trademark 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 trademark LECLERC..."). Moreover, as noted above, the Panel has concluded that the Respondent registered and has used the disputed domain name for illegitimate, and likely fraudulent, phishing schemes directed at obtaining Internet user personal information. Finally, the Panel accepts the Complainant’s contention that the privacy service used by the Respondent as registrant of the disputed domain name is deliberately misleading as to the actual identity of the Respondent. Taken together, all of these circumstances convince the Panel that the Respondent has registered and used the disputed domain name in bad faith. See, Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017 (“The registration of a domain name in furtherance of phishing scams supports a finding of bad faith registration and use.”); and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“...the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); and H & M Hennes & Mauritz AB v. Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2017-0491 (“the Panel views both the persistent use of proxy services and seemingly false names in the chain of title of the disputed domain name [...] as evidence of bad faith registration.”).

The fact that subsequently and currently the disputed domain name does not resolve to an active page does not prevent a finding of bad faith.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name 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, <eleclerc-fr.club>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: April 7, 2021

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