WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc – A.C.D. Lec. v. Domain Admin, Whoisprotection.cc / wuzhi hua
Case No. D2021-4269
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 Domain Admin, Whoisprotection.cc, Malaysia / wuzhi hua, China.
2. The Domain Name and Registrar
The disputed domain name <e-leclercphoto.com> is registered with Mat Bao Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 20, 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 December 20, 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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on January 19, 2022. 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. The term “Leclerc” refers to the last name of the founder and promoter of the association – Mr. Edouard Leclerc.
“E LECLERC” is one of the most renowned chain of supermarkets and hypermarkets stores in France. The Complainant has about 721 stores in France, located all over the country.
The Complainant is the owner of several trademark registrations consist of or contain the word E LECLERC, which have been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name, which was registered on August 3, 2021. Amongst others, the European Union trademark registration E LECLERC No. 002700664 registered on January 31, 2005 and French trademark registration E. LECLERC PHOTO No. 3444024 registered in August 1, 2006.
The Complainant is the owner also of the domain name <photo.leclerc> which was registered on November 8, 2016.
The Respondent is an individual in China.
This disputed domain name <e-leclercphoto.com> was registered on August 3, 2021 and it redirects to another domain name which is <sogou.com>, pointing to a Chinese Internet search engine.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is identical to the trademark E. LECLERC PHOTO or at least almost identical to the trademark E LECLERC.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. The addition of other terms in the domain name may not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark. (NG Biotech v. Whois Agent, Domain Protection Services, Inc. / Patrice SARDA, WIPO Case No. D2021-0177).
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name with legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the words “e-leclerc photo”, which are confusing similar and identical to the Complainant’s registered well-known trademarks E LECLERC and E.LECLERC PHOTO respectively. The only difference between the disputed domain name and the E.LECLERC PHOTO trademark is that the dot in the trademark is replaced by a hyphen.
Furthermore, the addition of the word “photo” to the trademark E LECLERC in the disputed domain name, which refers the services offered by the Complainant, does not prevent a finding of confusing similarity.
The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element see section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore concludes that the disputed domain name <e-leclercphoto.com> is confusingly similar to the Complainant’s trademark E LECLERC and identical to the trademark E LECLERC PHOTO.
The Panel finds the first element of the Policy has therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In this case, the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks.
The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other rights to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s trademarks.
Moreover, the Panel finds no evidence that the Respondent has used, or has undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering offer of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Finally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In its Complaint, the Complainant has provided evidence that the website associated with the disputed domain name is used to gain unfair benefit of the its trademarks.
The registration of the Complainant’s trademarks several years predate the registration of the disputed domain name. The disputed domain name is identical to one of the Complainant’s trademarks. Given the factors above, the Respondent knew or should have known the Complainant’s trademarks in mind when registering the disputed domain name (see WIPO Overview 3.0, section 3.2.2).
The Panel finds that the Respondent has registered the disputed domain name attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website, and of the services offering on the website.
The Complainant has demonstrated that the disputed domain name redirects to another domain name which is <sogou.com>, and that points to a Chinese Internet search engine. Redirection to an already existing website is evidence of bad faith use as described under paragraph 4(b)(iv) of the Policy. See, WIPO Overview 3.0, section 3.1.4.
Accordingly, this Panel finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
On this basis, the Panel finds that the Complainant has satisfied the third element of the 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 disputed domain name <e-leclercphoto.com> be transferred to the Complainant.
Date: February 1, 2022