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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc – ACD Lec v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Leclerc E

Case No. D2021-2222

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Leclerc E, France.

2. The Domain Names and Registrar

The disputed domain names <e-leclerc-france.com> and <e-leclerc-france.shop> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 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 July 15, 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 July 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on August 20, 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 large supermarket chain headquartered in France.

The Complainant is the owner of several trade marks for E LECLERC, including the following:

- European Union Trade Mark E LECLERC No. 002700664, registered on January 31, 2005.

The Complainant is also the owner of several domain names reflecting its trade mark such as <e-leclerc.com> and <e.leclerc> (the Complainant owns the generic Top-Level-Domain (“gTLD”) “.leclerc”).

Both Domain Names were registered on February 16, 2021. At the time of the Decision, the Domain Names do not resolve to active websites but they used to resolve to the Registrar’s parking page displaying pay-per-click (“PPC”) links targeting the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the E LECLERC trade mark in which the Complainant has rights as the Domain Names incorporate the entire E LECLERC trade mark with the mere addition of an hyphen “-” and the country name “france” and that such addition to each of the Domain Names does not prevent the likelihood of confusion between the Domain Names and the Complainant’s trade mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant states that the Respondent is not commonly known by either of the Domain Names. The Complainant contends that the Respondent is not related in any way to the Complainant and that no license or authorisation has been granted to the Respondent by the Complainant to register or use the Domain Names. Finally, the Complainant points to the use of the Domain Names to resolve to the Registrar’s parking page displaying PPC links targeting the Complainant’s business to conclude that this type of use is not a bona fide offering of goods or services.

The Complainant contends that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trade mark and the Respondent could not have ignored the reputation of the Complainant’s trade mark E LECLERC as it is well-known. The Complainant also points to the fact that the Respondent has registered the Domain Names under a false identity impersonating the Complainant. The Complainant alleges that the Respondent is using both Domain Names in bad faith. The Complainant has provided screen captures showing that the Domain Names were used to point to the Registrar’s parking page with PPC links targeting the Complainant’s business. The Complainant submits that such use of the Domain Names constitutes use in bad faith and that they were registered for the purpose of disrupting the business of the Complainant. The Complainant also points to the use of a false identity impersonating the Complainant to register the Domain Names along with the fact that the Domain Names have been set up to allow the sending of emails which constitute a risk hanging over the Complainant’s head. Therefore, the Complainant concludes that the Respondent has registered and is using the Domain Names in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to prevail the Complainant must substantiate, for each Domain Name, that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the 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.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to decide on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in E LECLERC, which is reproduced in its entirety in both Domain Names (the addition of the hyphen “-” between “e” and “leclerc” is merely used to serve as a technical connector as it is not possible to have a space in a domain name).

The second point that has to be considered is whether the Domain Names are identical or confusingly similar to the trade mark E LECLERC in which the Complainant has rights.

At the second level, both Domain Names incorporate the Complainant’s E LECLERC trade mark in its entirety with the mere addition of an hyphen “-” and the country name “france”. The characters appended to both Domain Names do not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Names.

Then there is the addition of the gTLDs “.com” and “.shop”. As is generally accepted, the addition of a gTLD is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Names are confusingly similar to the trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Names.

The Complainant has stated that it does not know the Respondent and that it has not licensed or otherwise authorised the Respondent to make any use of its trade mark E LECLERC. There is no indication that the Respondent is commonly known by either of the Domain Names.

The current absence of use of both Domain Names and the past use of the Domain Names to point to the Registrar’s parking page with PPC links targeting the Complainant’s sector cannot be considered bona fide, legitimate or fair.

Furthermore, the nature of the Domain Names, comprising the Complainant’s trade mark in its entirety in combination with additional terms, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Names were registered in bad faith.

The Domain Names reproduce the exact E LECLERC trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including (i) the renown of the Complainant’s E LECLERC trade mark, as substantiated by the Complainant and acknowledged by several previous UDRP panels, (ii) the fact that the Respondent appears to be based in France where the Complainant is headquartered and where its renown is higher than anywhere else, (iii) the fact that the Domain Names were registered relatively recently and many years after the registration of the trade mark E LECLERC, (iv) the targeted choice of term such as “france” (the country where the Complainant is headquartered and has its main operations) added to the trade mark E LECLERC in the Domain Names, (v) the chosen gTLD “.shop” for one of the Domain Names which corresponds to the Complainant’s area of business activity and (vi) the use of a false identity impersonating the Complainant to register the Domain Names.

Thus, the Panel finds that the Domain Names were registered in bad faith.

As for use of the Domain Names in bad faith, given the circumstances described in the Complaint, the evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Names, the Panel considers that the Domain Names are used in bad faith.

Both Domain Names appear to be passively held at the time of the Decision. Passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the renown of the Complainant’s E LECLERC trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default. Furthermore, the use of the Domain Names at the time the Complaint was filed to point to a website consisting of the Registrar’s parking page with PPC links targeting the Complainant’s sector clearly demonstrates the Respondent’s bad faith in using the Domain Names.

A further strong indication that the Domain Names are used in bad faith is the use of a false identity impersonating the Complainant (with an address corresponding to one of the Complainant’s supermarkets) to register the Domain Names. This circumstance, along with the DNS setup of the Domain Names (with active MX records) and the composition of the Domain Names, lead the Panel to consider that the Domain Names could be used to deceive Internet users. In these circumstances, the Domain Names constitute a potential threat hanging over the head of the Complainant especially in light of the fact that fraudulent use of domain names and emails are particularly prevalent in relation to online shopping.

The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Names are used in bad faith.

Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is a further indication of the Respondent’s bad faith.

Thus, the Panel finds that the Domain Names have been registered and are also 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 Domain Names <e-leclerc-france.com> and <e-leclerc-france.shop> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: September 3, 2021

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