WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Contact Privacy Inc. Customer 0159460605 / Laurent Lachant, E. Leclerc Precommandes

Case No. D2020-2556

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 Contact Privacy Inc. Customer 0159460605, Canada / Laurent Lachant, E.Leclerc Precommandes, France.

2. The Domain Name and Registrar

The disputed domain name <e-leclercprecommande.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, 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 October 5, 2020 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 October 5, 2020.

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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on November 2, 2020. 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 the French association “Association des Centres Distributeurs E. Leclerc – A.C.D Lec.”, one of the most renowned chain of supermarkets stores in France.

The Complainant owns several trademarks composed of the term “e leclerc”, among which:

- European Union Trademark E LECLERC No. 002700664, filed on May 17, 2002 and registered on January 31, 2005,

- European Union figurative Trademark E.LECLERC and logo No. 011440807, filed on December 5, 2012 and registered on May 27, 2013.

The disputed domain name is <e-leclercprecommande.com> registered on September 27, 2020.

At the time the Complaint was filed, the disputed domain name was resolving to a website similar to the Complainant’s website offering to Internet users to pre-order game consoles and pay a deposit to do so. At the time of this decision, the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

1) The Complainant first alleges that the disputed domain name <e-leclercprecommande.com> is confusingly similar to its earlier trademarks E LECLERC, to the point of creating confusion.

The disputed domain names incorporate the Complainant’s earlier trademark E LECLERC in its entirety within the disputed domain name.

The addition of the French word “precommande” (French word for “pre-order”) in the disputed domain name does not reduce the confusing similarity between the disputed domain name and the Complainant’s earlier trademark E LECLERC.

On the contrary, it increases the likelihood of confusion creating an impression of affiliation amongst the disputed domain name and the Complainant as the term “precommande” refers to a service provided by the Complainant to its clients.

2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The disputed domain name was registered anonymously.

- The Respondent has not been authorized by the Complainant to use the term “e leclerc” or register the disputed domain name.

- The disputed domain name is neither used in connection with a bona fide offering of goods of services nor constitute a legitimate noncommercial fair use.

3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

- Registered in bad faith

The Complainant alleges that the trademark E LECLERC is well known in France and in several other countries of Europe.

The Complainant alleges that the Respondent was well aware of the existence of the Complainant as well as of its activities when he registered the disputed domain name.

The disputed domain name was registered anonymously. Further to the disclosure of the Respondent’s name and details, the Complainant confirmed its bad faith claim against the Respondent.

- Use in bad faith:

The disputed domain name was used to operate a website offering Internet users to pre-order game consoles and pay a deposit to do so.

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.

B. Respondent

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 Panel is satisfied that the Complainant owns exclusive trademark rights in E LECLERC, which predate the registration of the disputed domain name <e-leclercprecommande.com>.

The Panel finds that the disputed domain name is confusingly similar to the registered trademark E LECLERC, owned by the Complainant.

Indeed, the disputed domain name incorporates the entirety of the Complainant’s E LECLERC trademark with the mere addition of the French dictionary word “precommande” (“preorder” in French language) which does not prevent a finding of confusing similarity.

See in similar circumstances the previous UDRP decision Richemont International SA v. scott chopskie / a+ programming consultants, WIPO Case No. D2014-0689 concerning the domain name <piaget-orders.com>.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

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

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case D2003-0455.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its E LECLERC trademark.

It results from the circumstances that the Respondent does not own any right on the trademark E LECLERC or is commonly known by the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

Since E LECLERC is a well-known trademark, and the fact that the Respondent appears to be located in France where the Complainant is running its main activities, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name <e-leclercprecommande.com>.

Moreover, the Complainant submitted printouts showing that a website impersonating the Complainant was operated and email servers have been configured under 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.

It appears therefore that the Respondent, by making reference to the E LECLERC trademark, is trying to create a likelihood of confusion in order to attract Internet users and confuse them. Such misleading behaviour amounts to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy and is manifestly considered to be evidence of bad faith, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.

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.

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 <e-leclercprecommande.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: November 16, 2020