The Complainant is Association des Centres Distributeurs E. Leclerc – ACD Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Privacy Service FBO Registrant, United States of America / Christophe Hougary, France.
The disputed domain name <hypermarches-e-leclerc.com> is registered with Domain.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 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 December 7, 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 on December 9, 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2021.
The Center appointed Christophe Caron as the sole panelist in this matter on January 22, 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.
The Complainant is Association des Centres Distributeurs E. LECLERC (A.C.D. Lec). “E Leclerc” refers to the last name of the founder of the French chain of supermarkets and hypermarkets stores E. Leclerc.
The Complainant owns several trademarks E LECLERC such as the European Union Trademark Registration E LECLERC No. 002700664 filed on May 17, 2002 and registered on January 31, 2005.
In addition, this Complainant operates, among other, domain names reflecting its trademarks in order to promote its products and services, such as <e-leclerc.com>.
The disputed domain name <hypermarches-e-leclerc.com> was registered on August 27, 2020 and resolved to an error page, it is currently inactive.
The Complainant make the following contentions.
Identical or Confusingly Similar
The Complainant first argues that it owns several trademarks E LECLERC registered prior to the disputed domain name. It adds that the Complainant is one of the most renowned chain of supermarkets and hypermarkets stores in France. According to the Complainant, E LECLERC trademarks are well known in France and the disputed domain name is strongly confusingly similar to the Complainant’s trademarks E LECLERC.
The Complainant considers that it should be stressed that the denomination “E Leclerc” has no meaning in French or in English and is highly distinctive. The addition of the French generic term “hypermarchés” (meaning “hypermarket” or “supermarket” in English) within the disputed domain name does not lessen the inevitable confusion between the disputed domain name and the Complainant’s trademark E LECLERC.
Furthermore, the Complainant adds that in a similar case involving the E LECLERC trademark, the Panel already recognized the similarity between the trademark E LECLERC and the domain name<hypermarche-e-leclerc.com>.
For the above-mentioned reasons, the Complainant considers that the disputed domain name is confusingly similar to its trademarks and therefore the condition of Paragraph 4(a)(i) is fulfilled.
Rights or Legitimate Interests
According to the Complainant, the Respondent has no link of any nature with the Complainant, and does not seem to have legitimate interests or rights in the registration and in the use of the disputed domain name. The Respondent does not make any use of a business name including the name “E Leclerc” and he has no rights, including trademark rights, on the sign E LECLERC. Moreover, the Complainant states that the disputed domain name resolves to an error page where it is indicated: “Forbidden You don’t have permission to access / on this server” that cannot be considered as a real and substantial offer of goods or services or a legitimate non-commercial or fair use.
For the above-cited reasons, the Complainant considers that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
Registration and Use in Bad Faith
- Registration in bad faith
The Complainant states that its “E Leclerc” hypermarket network is well known in France and in several other European countries. It adds that the term “E Leclerc” is immediately associated, at least in the mind of French consumers, with the Complainant’s brand E LECLERC. The Complainant states that the reputation of its trademarks E LECLERC has been recognized in several decisions issued by UDRP panels. According to the Complainant, it seems unlikely and implausible that the Respondent was unaware of the activities of the Complainant and of the existence of its trademarks E LECLERC at the time the registration of the disputed domain name was made. The reservation of the disputed domain name cannot be a coincidence.
- Use in bad faith
The Complainant claims that the Respondent’s use of the disputed domain name constitutes bad faith use because: (i) the Respondent has no rights or legitimate interests in respect of the disputed domain name; (ii) there is no legitimate or fair use of the disputed domain name; (iii) the disputed domain name disturbs the Complainant’s business and (iv) the Complainant attempted to enter in contact with the Respondent in order to find an amicable settlement in this matter without success.
As such, the Complainant considers that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to trademarks registered by the Complainant.
The Complainant is the owner of the European Union trademark E LECLERC No. 002700664 filed on May 17, 2002.
The trademark E LECLERC is entirely reproduced in the disputed domain name.
The addition of the gTLD “.com” and the term “hypermarches” (meaning “hypermarket” or “supermarket” in English) in the disputed domain name do not prevent a finding of confusing similarity with the trademark of the Complainant.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
This Panel is satisfied that the Respondent does not appear to have been commonly known by the disputed domain name, he is not a licensee or an agent of the Complainant, nor in any way is authorized to use the Complainants’ trademark.
Furthermore, the Respondent cannot claim to have been using the term “E Leclerc”, without being aware of the Complainants’ rights.
Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain name in bad faith.
Regarding the reputation of the E LECLERC trademark, the Respondent could not have ignored it at the time of the registration. The Panel therefore considers that the disputed domain name has been registered in bad faith.
The Panel notes that the disputed domain name is directing to an error page where it is indicated: “Forbidden You don’t have permission to access / on this server”. Passive holding of a domain name can be an evidence of bad faith use.
Furthermore, it appears that mail servers have been configured to operate with the disputed domain name. It means that the Respondent could have the intention to use emails address with “@hypermarches-e-leclerc.com” suffix for commercial emailing, spamming or phishing purpose.
For all these reasons, it appears to this Panel that the disputed domain name has been registered and is being used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out.
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 <hypermarches-e-leclerc.com> be transferred to the Complainant.
Christophe Caron
Sole Panelist
Date: February 1, 2021