Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D Lec of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
Respondent is Mohamed Bellahbib of Arnouville les Gonesses, France.
The disputed domain name <leclerchalal.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2011. On February 4, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 4, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2011.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 8, 2011. 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.
According to Tucows Inc.’s WhoIs database, the disputed domain name <leclerchalal.com> was registered on April 19, 2010. It appears to have been resolving to a website under construction since its registration.
Complainant is notably the owner of the following trademark registrations:
French trademark LECLERC No. 1307790, registered on May 2, 1985 and designating goods and services in classes 1-35 and 39;
Community trademark LECLERC No. 002700656, registered on May 17, 2002 and designating goods and services in classes 1-45;
International trademark LECLERC No. 511972, registered on January 27, 1987 and designating goods and services in classes 1-36, 39 and 42.
Respondent is Mohamed Bellahbib, located in Arnouville les Gonesses, France.
First, Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trademarks LECLERC. Complainant further argues that the addition or insertion of the generic term “halal”, which designates food seen as permissible according to Islamic law, does not prevent a finding of confusing similarity.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent has not been commonly known by the disputed domain name and that it has not been authorized by Complainant to use the name Leclerchalal. Complainant adds that Respondent is not making any serious or business-related use of the disputed domain or of the related website, which has been under construction since its registration.
Third, Complainant contends that the disputed domain name was registered and used in bad faith due to the reputation of the trademark LECLERC. Among other things, Complainant claims that Respondent could not have ignored the trademark LECLERC when it registered the domain name. Indeed, the LECLERC supermarket/hypermarket network is widely-known in France among French consumers. Moreover, through the years, Complainant has created many sections dedicated to specific fields of activity (tourism, photography, IT …) such as E. Leclerc Voyages, E. Leclerc Drive, E. Leclerc Mobile where, each time, the name “Leclerc” is associated to a generic term informing the consumer as to the nature of the product or service offered under the brand. Furthermore, Complainant asserts that Respondent is not only preventing Complainant from further user the domain name, but that it is also intentionally attempting to attract Internet users by creating a likelihood of confusion with Complainant’s trademarks and other domain names such as <leclerc-voyages.com> and <leclercmobile.com>. Such conduct amounts to use in bad faith.
Respondent did not reply to Complainant’s contentions.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain name.
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that Complainant has established its registered trademark rights in LECLERC as evidenced by the trademark registrations submitted with the Complaint.
The Panel accepts that the disputed domain name is confusingly similar to Complainant’s LECLERC trademark. The disputed domain name incorporates the mark LECLERC in full, which provides the dominant element of the disputed domain name. Moreover, previous UDRP decisions have often held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark (Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com, WIPO Case No. D2009-1249).
The disputed domain name further incorporates the common generic term “halal”. In light of previous UDRP decisions, the Panel considers that the mere addition of common term such as “halal” does not alleviate the confusing similarity (Allianz SE v. Antonio Porchia, supra and Alstom v. Value-Domain Com, supra). Indeed, the Panel is of the view that, generally, confusing similarity may not be avoided where a domain name reproduces the entire mark of a third party with the mere addition of a generic term, especially when said mark has a certain reputation with consumers. It is regrettable, however, that Complainant did not mention in its complaint specific UDRP decisions where panels had recognized the reputation of the LECLERC trademark.
Moreover, confusion is all the more likely to occur since the term “halal”, added to the LECLERC trademark, describes a characteristic of the products sold by Complainant. Indeed, printouts of Complainant’s website show that several E. Leclerc supermarkets/hypermarkets present and sell halal products.
Furthermore, the adjunction of “.com”, due to the current technical requirements of the domain name system should not be taken into account when evaluating the identity or similarity between the disputed domain name and Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt, WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828).
Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
The second element under paragraph 4(a)(ii) of the Policy requires Complainant to establish that Respondent lacks rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 trademark or service mark at issue.”
Several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden shifts to the respondent to demonstrate its rights or legitimate interest in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., supra).
The Panel believes from the record that there is no relationship between Respondent and Complainant, and that Respondent is neither a licensee of Complainant nor has it otherwise obtained an authorization to use Complainant’s trademarks.
Moreover, there is no evidence from the record that Respondent is making any legitimate noncommercial or fair use of the disputed domain name, which currently resolves to a website under construction.
Thus, the Panel finds that in the present case, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Panel’s opinion is further corroborated by the lack of a Response by Respondent in these proceedings as well as the Panel’s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that Respondent has registered or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that it is unlikely that Respondent was unaware of Complainant’s trademarks when it registered the disputed domain name. Firstly, the Leclerc supermarket/hypermarket network is well known in France, where Respondent resides. Indeed, there appears to be 520 Leclerc supermarkets/hypermarkets, 410 of which are located in France.
Secondly, a simple search of the term “leclerc” with a search engine further shows the trademark’s degree of exposure to the public and, accordingly, to Respondent. Moreover, a trademark search would have revealed the existence of Complainant’s prior trademark rights over the term LECLERC, Respondent’s failure may be considered as a further indication of its bad faith (LANCÔME PARFUMS ET BEAUTÉ & CIE, L’ORÉAL v. 10 Selling,WIPO Case No. D2008-0226).
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith.
As previously indicated, Respondent was likely aware of the existence of Complainant’s trademark LECLERC. In light of this knowledge, Respondent used the domain name <leclerchalal.com> to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website.
Moreover, in the Panel’s opinion the combination of Complainant’s trademark LECLERC and the generic term “halal” tends to indicate bad faith on the part of Respondent. Indeed, since Complainant has created many sections dedicated to specific fields of activity such as tourism, photography, IT etc with matching websites, consumers are likely to believe that ”www.leclerchalal.com” is one of Complainant’s official websites, dedicated to halal products.
Furthermore, Respondent’s failure to reply to Complainant’s cease-and-desist letter supports an inference of bad faith (Guccio Gucci S.p.A. v. Domain Administrato – Domain Administrator, WIPO Case No. D2010-1589). Moreover, Respondent’s failure to reply to the Complaint and take any part in these proceedings may also suggest bad faith on its part (KNAUF Insulation Holding GmbH, KNAUF Insulation SPRL v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1218).
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <leclerchalal.com> be transferred to the Complainant.
Dated: March 22, 2011
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