WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt
Case No. D2021-0186
1. The Parties
Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec., France, represented by Inlex IP Expertise, France.
Respondent is Privacy Hero Inc., Turks and Caicos Islands / Honey Salt ltd, Pat Honeysalt, Turks and Caicos Islands, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <eleclerc.sucks> (the “Domain Name”) is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 1, 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. Respondent requested an extension to file a response and the new Response due date was February 26, 2021. The Response was filed with the Center on February 26, 2021. On March 5, 2021, Complainant requested to withdraw the Complaint. On March 11, 2021, Respondent provided its comments on the Complainant’s request seeking the issuance of a decision on the merits. On March 17, 2021, Complainant filed a supplemental filing.
The Center appointed Robert A. Badgley, Douglas M. Isenberg, and Brian J. Winterfeldt as panelists in this matter on April 8, 2021. The Panel finds that it was properly constituted. Each member of 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
Complainant, named after its founder Edouard Leclerc, operates a large chain of supermarkets and hypermarkets in France, with more than 700 such stores. Complainant holds several registered trademarks for E LECLERC, including European Union Reg. No. 002700664 for the word mark E LECLERC, registered on January 31, 2005. Complainant contends, and Respondent does not dispute, that the E LECLERC trademark is “well known in France and also in several other European countries”.
The Domain Name was registered on October 15, 2020. The Domain Name resolves to a fairly rudimentary website which appears to invite users to submit customer reviews and other feedback; in fact it appears that these “reviews” may not have been submitted to the site itself, but are scraped off of third party sites. The site notes that E. Leclerc is “a French cooperative society and hypermarket chain”. Some users, employing nicknames and purporting to be former employees, appear to have posted content, largely critical in nature, about their unsatisfying experiences with Complainant’s chain stores.
Respondent’s website also contains a number of hyperlinks, many involving brand names of parties unrelated to Complainant. According to Complainant, these links lead to the main website, “www.everything.sucks”.
Respondent states that it “registers domain names on the .sucks registry for the benefit of a non-profit, Everything.sucks, which provides an open forum for the public to discuss complaints about anything with which they may find fault”. According to Respondent, users “may create Wiki pages at Everything.sucks, each devoted to commentary on and criticism of a particular subject”. Once a Wiki page is created, Everything.sucks “may register a domain name using the topic of criticism as the SLD [Second-Level Domain] and the TLD [Top-Level Domain] ‘.sucks’ to direct users who wish to engage in criticism of that topic to the relevant Wiki page”.
The same Respondent has been found to have registered and used domain names in several recent UDRP cases, also involving the overall platform of Everything.sucks. Some of these decisions were handed down after the Complaint in this proceeding was filed. See, e.g., Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 (involving <tetrapak.sucks>); Sanofi v. Privacy Hero Inc / Honey Salt ltd., pat honey salt, WIPO Case No. D2020-2836 (involving <sanofi.sucks).
In those other cases, the panels found that Respondent had done essentially the same thing with the domain names as Respondent is doing in the instant case, setting up an individual website purporting to invite criticism of a company and its trademarked products or services, and putting up on those websites hyperlinks to other sites Respondent had created in its overall Everything.sucks platform. The panels in those cases found that Respondent had engaged in the cross-reference linking in order to “increase the traffic to the respective domain names and websites, which would increase their attractiveness and price in case they are being offered for sale’. Tetra Laval, supra, section 6.B. Moreover, it was found that Respondent ‘admits that it has put offers for sale of the disputed domain name and other domain names in the ‘.sucks’ gTLD on the open market”. Sanofi, supra, section 6.C. The Tetra Laval panel found the offers to be “at an amount apparently exceeding Respondent’s out-of-pocket expenses”. Tetra Laval, supra, section 6.B.
The panels in the prior cases against Respondent further held that Respondent was not itself exercising free speech rights or operating a genuine “gripe site” with the domain names it had registered. Rather, the panels found Respondent’s alleged free-speech platform to be “a pretext to create the impression that the registration and use of the Domain Name [<tetrapak.sucks>] is legitimate and not in bad faith”, and that “the actual intent behind the actions of Respondent is possibly to increase the price that it may receive from the sale of the Domain Names”. Tetra Laval, supra, section 6.B (citing Sanofi).
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name. Among other things, Complainant asserts that Respondent’s “Everything.sucks” business model does not require Respondent to register a domain name whose SLD is identical to the E LECLERC trademark; rather, Respondent could have simply created an internal page at the main Everything.sucks site.
Respondent asserts that it has a legitimate interest in creating a platform for users to exercise their speech rights. According to Respondent, “no one encountering Respondent’s website would conclude that the site is owned by or affiliated with Complainant”.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark E LECLERC through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is identical to the E LECLERC mark. The Second-Level Domain contains the E LECLERC mark and nothing else. The generic Top-Level Domain, or “gTLD” (here, “.sucks”), is generally disregarded when considering identity or confusing similarity under the UDRP, since a gTLD is required for technical reasons. See Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 (finding <tetrapak.sucks> to be identical to TETRA PAK trademark).
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The record presented here indicates that the conduct at issue in this case is not fundamentally different from the conduct by the same Respondent in the Tetra Laval and Sanofi cases discussed above in the “Factual Background” section. It appears to the Panel here, as it appeared to the panels in those other recent cases, that Respondent is not genuinely exercising free speech rights, but is instead creating a platform that pretextually facilitates the speech of others. The comments found on the website at the Domain Name are anonymous, undated, follow highly similar topics, and even use similar sentence structure. For example, almost all of the comments include the abbreviation “Cons:” followed by further negative comments. The Panel believes that this strongly indicates that the content is automatically generated or otherwise not genuine, just as another panel noted in a case involving Respondent. See Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517. As in that case, Respondent has failed here to provide any evidence that the comments on the site at the Domain Name were actually made by real people on specific dates.
Therefore, the Panel finds that, in reality, the true purpose of the Everything.sucks platform is to bundle and cross-reference numerous well-known company brands in order to increase traffic for the overall enterprise, and thus seek to enhance the sales value of the domain names within Respondent’s “.sucks” portfolio by preying on brand owners, which includes the Domain Name at issue here.
Respondent asserts that “one of the primary purposes for which ICANN approved the .sucks registry was to allow sites to be registered for the purposes of criticism and comment”. Respondent did not cite to any authority for this self-serving proposition. In any event, even if this were part of the basis for creating the “.sucks” gTLD, the UDRP applies in full measure here, and monetizing a domain name through the strength of a complainant’s trademark under the guise of providing a speech platform does not give rise to a legitimate interest under the Policy.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. There is no dispute that Respondent had Complainant’s E LECLERC trademark in mind when registering the Domain Name. As discussed above, the Panel finds, on a balance of probabilities, that Respondent’s use of the Domain Name and others in the Everything.sucks platform, is to monetize the Domain Name for an ultimate profit upon resale of the Domain Name. This constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(i).
In addition, given the Panel’s findings above, and the prior cases against Respondent making similar findings, the Panel also concludes that Respondent’s registration and use of the Domain Name is part of a pattern of preclusive registrations, thus constituting bad faith within the meaning of the above-quoted Policy paragraph 4(b)(ii).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <eleclerc.sucks> be transferred to Complainant.
Robert A. Badgley
Douglas M. Isenberg
Brian J. Winterfeldt
Date: April 16, 2021