WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Whois Agent, Whois Privacy Protection Service, Inc. / Name Redacted

Case No. D2019-1007

1. The Parties

Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.

Respondent is Whois Agent, Whois Privacy Protection Service, Inc., United States of America (“United States”) / Name Redacted¹ .

2. The Domain Name and Registrar

The disputed domain name <groupes-leclerc.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2019. On May 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2019, 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 Complainant on May 3, 2019 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 May 7, 2019.

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 May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2019.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 8, 2019. 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

Complainant is Association des Centres Distributeurs E. Leclerc – A.C.D Lec, one of the most renowned chain of supermarkets stores in France.

Complainant owns several trademarks LECLERC, including the European Union Trade Mark Registration LECLERC No. 002700656, registered on February 26, 2004 in classes 1 to 45, duly renewed.

Complainant currently operates its activities with several domain names, including <e-leclerc.com> and <mouvement.leclerc>.

Respondent owns the disputed domain name <groupes-leclerc.com>, which was registered on April 9, 2019.

The disputed domain name sent a fraudulent email from the associated email address […]@groupes-leclerc.com on April 12, 2019.

Moreover, the disputed domain name resolves to an error page.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name <groupes-leclerc.com> is confusingly similar to its LECLERC trademark. Indeed, Complainant states that the disputed domain name reproduces identically the distinctive LECLERC trademark. Furthermore, Complainant states that the term “groupes”, which means “groups” in English, strengthens the impression of affiliation between the disputed domain name and Complainant.

Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that the domain name was registered anonymously, thus showing Respondent has no rights or legitimate interests. Complainant further asserts that Complainant has granted no license nor authorization to Respondent to use or register the disputed domain name.

Complainant claims that the disputed domain name was registered and is used in bad faith. First, Complainant argues that the disputed domain name was registered in bad faith. Complainant’s trademarks LECLERC are well known in France and in several other European countries and that it is difficult to imagine that Respondent could have ignored said trademarks LECLERC at the time it applied for the disputed domain name. Moreover, the disputed domain name is used to send fraudulent emails in order to misuse the identity of a Complainant’s employee. Complainant argues that all these circumstances support the idea that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

Second, Complainant also argues that the disputed domain name was used in bad faith. Complainant contends that Respondent creates a confusion with its activities, therefore there is no legitimate or fair use of the disputed domain name. Complainant further asserts that the disputed domain name is being used for fraudulent purposes. Indeed, fraudulent emails are sent from the associated email address […]@groupes.com in order to misuse the identity of Complainant’s suppliers. In addition, the website associated to the disputed domain name directs to an error page. Respondent therefore attempts to disturb Complainant’s business. Finally, Complainant took several measures to stop the disorders caused by Respondent, namely the sending of fraudulent emails.

B. Respondent

Respondent did not reply to Complainant’s contentions and is therefore in default.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.

Complainant has shown rights over the European Union Trade Mark LECLERC No. 002700656, registered on February 26, 2004 in classes 1 to 45, duly renewed.

The Panel notes that the trademark LECLERC is entirely reproduced in the disputed domain name. Furthermore, the generic Top-Level Domain (“gTLD”) is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.com” should not be taken into account when comparing the disputed domain name with the claimed trademarks as it is only a technical and necessary part of the disputed domain name with no distinguishing feature nor legal significance (See Figaro Classifieds v. Bernard Elkeslassy, WIPO Case No. D2016-2234).

The mere adjunction of the French term “groupes”, which means “groups” in English, does not prevent a finding of confusing similarity between the disputed domain name <groupes-leclerc.com> and Complainant’s trademarks.

Therefore, the Panel finds that the disputed domain name <groupes-leclerc.com> is confusingly similar to Complainant’s trademarks.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.

Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

Complainant claims that it has granted no license or authorization to Respondent to make any use, or apply for registration of the disputed domain name. Thus, Complainant contends that Respondent is not related in any way to Complainant’s business.

The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interests in the disputed domain name.

Moreover, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions (seePomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493: “nonresponse is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

In addition, the disputed domain name is not only failing to resolve to an active website but is also used to send fraudulent emails. As a matter of fact, the fraudulent emails have been sent from the email address […]@groupes-leclerc.com, misusing the identity of one of Complainant’s employees. Respondent intended to make a fake order request.

The Panel notes that the domain name being unused and fraudulent emails being sent, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and cannot claim a bona fide offering of goods or services.

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.

First, Complaint argues that its trademark LECLERC is well known both in France and in several European countries. The reputation of the mark LECLERC has been recognized by UDRP panels in various decisions (see Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc, WIPO Case No. D2018-1185; Association of E. Leclerc Distributor Centers - ACD Lec v. Guziewicz Ryszard, WIPO Case No. D2018-0482 and Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Wang Lian Feng, WIPO Case No. D2018-0659).

The Panel therefore finds that Respondent could not have ignored the trademark LECLERC at the time it registered the disputed domain name <groupes-leclerc.com>.

In addition, the disputed domain name has been registered in the name of one of LECLERC’s employees, who did not proceed with the registration. Therefore, the disputed domain name has been registered by impersonating a Complainant’s employee.

The Panel thus finds that the disputed domain name has been registered in bad faith.

Second, the disputed domain name is being used to impersonate a Complainant’s employee, in order to make fake purchase orders with Complainant’s suppliers. Complainant claims that the disputed domain name currently resolves to an error page. Previous UDRP panels have frequently found thatthe use of a domain name for purpose other than to host a website may constitute bad faith. Such purposes include sending email, phishing and identity theft. See WIPO Overview 3.0, section 3.4.

Previous UDRP panels have held that respondents acted with opportunistic bad faith in cases in which the disputed domain name appears confusingly similar to complainant’s well-known trademarks (Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi, WIPO Case No. D2013-0020; Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta, WIPO Case No. D2016-0096). Furthermore, the Panel notes that reproducing the well-known trademarks such as LECLERC in a domain name in order to attract Internet users to an inactive website cannot be regarded as use in good faith.

The Panel therefore finds that the circumstances of this case strongly suggest that Respondent has both registered and used the disputed domain name in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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 <groupes-leclerc.com> be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: July 22, 2019

¹ On the basis of the case file presented to the Panel, it seems that the Respondent has used the name of a third party when registering the disputed domain name. In light of a potential identity theft, the Panel, therefore, has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520.