WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. WHOIStrustee.com Limited, Registrant of e-leclerc-groupes.com / Mathieu Ettori
Case No. D2021-0172
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc - ACD Lec, France, represented by Inlex IP Expertise, France.
The Respondent is WHOIStrustee.com Limited, Registrant of e-leclerc-groupes.com, United Kingdom / Mathieu Ettori, France.
2. The Domain Name and Registrar
The disputed domain name <e-leclerc-groupes.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 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 25, 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 26, 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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on March 9, 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 A.C.D. Lec, Association des Centres Distributeurs E. Leclerc, a French association belonging to the "E. Leclerc". E. Leclerc is a group of French hypermarkets and supermarkets.
The Complainant is the owner of the European Union trademark E LECLERC n° 002700664 filed on May 17, 2002 and registered on January 31, 2005.
The Complainant provides its services under the disputed domain name <e-leclerc.com>.
The disputed domain name <e-leclerc-groupes.com> was registered on December 15, 2020 and resolves to an inactive page.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is an identical reproduction of the trademark E LECLERC. The Complainant also contends that the presence of the generic term "group" in the disputed domain name does not eliminate the likelihood of confusion between the disputed domain name and the Complainant's trademark. The Panel notes that the panels have already recognized the existence of a likelihood of confusion between the Complainant's E LECLERC trademark and the domain names <groupe-e-leclerc.com> and <groupes-e-leclerc.com>. The Complainant concludes that the disputed domain name must be considered to be highly similar to the Complainant's E LECLERC mark, to the point of creating a likelihood of confusion.
Second, according to the Complainant, the Respondent, who has no connection whatsoever with the Complainant, has no legitimate interests or rights in the the disputed domain name. The Complainant is not making use of the disputed domain name in the context of a serious offer of goods and/or services, nor is it making legitimate use of the disputed domain name, as the associated website links to an inactive page. The Respondent would have proceeded to reserve the disputed domain name for the sole purpose of impersonating the Complainant, since email servers has been configured to operate with the disputed domain name, which creates a risk that the Respondent may be engaged in a phishing scheme.
The Complainant's trademarks LECLERC and E LECLERC have been recognized on several occasions by UDRP panels as well known. The registration of the disputed domain name could not be a coincidence. In addition, the Complainant considers that the Respondent is making bad faith use of the disputed domain name because it is used as a support to fraudulent email account impersonating the Complainant and some of its employees. In addition, according to the Complainant, the disputed domain name disrupts the Complainant's business and damages its brand image. According to the Complainant, because the disputed domain name incorporates the Complainant's trademark in an identical manner, Internet users, and especially the Complainant's customers, may mistakenly believe that the site it links to is the Complainant's site or that the Complainant's site is not functioning properly or has been hacked.
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 name 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 Complainant has justified its rights on the European Union trademark E LECLERC n° 002700664 filed on May 17, 2002 and registered on January 31, 2005.
The Complainant's trademark E LECLERC is included in its entirety in the disputed domain name.
The ".com" extension should not be taken into account in examining the similarity between the trademark and the disputed domain name. The addition of the word "groups" does not prevent a finding of confusing similarity.
The disputed domain name is confusingly similar to the Complainant's mark.
For these reasons, the Panel finds that the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel is not aware of any rights or legitimate interests of the Respondent in the disputed domain name, as the Respondent has not presented any defense.
Furthermore, the Complainant asserts that there is no relationship of any kind between it and the Respondent that would justify the use of the disputed domain name. Thus, no authorization was granted to the Respondent to make any use of the Complainant's mark to register the disputed domain name.
For these reasons, the Panel finds that the second requirement of paragraph 4(a) of the Policy is satisfied.
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.”
The choice of the disputed domain name by the Respondent who is established in France could not have been made randomly, given that the E. Leclerc supermarkets and hypermarkets enjoy a certain notoriety in France. As a result, the Respondent could not have been unaware of the Complainant's E LECLERC trademark at the time of registration of the disputed domain name. In addition, the disputed domain name was registered under a false identity and false contact information, which attests further bad faith registration
In the same way, the addition of "groupes" only strengthens the likelihood of confusion since it refers to the idea of an affiliation or a group of E-Leclerc companies.
Moreover, the Complainant submitted printouts showing that email servers have been configured with regard to the disputed domain name by the Respondent.
This is likely reflective of a phishing attempt which further supports a finding of bad faith registration and use of the disputed domain name by the Respondent. See section 2.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the Respondent’s use of the disputed domain name cannot therefore constitute use of the disputed domain name in the bona fide offering of the goods.
Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
For these reasons, the Panel finds that the third condition of paragraph 4(i) of the Policy is satisfied.
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-groupes.com> be transferred to the Complainant.
Date: April 15, 2021