WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Perfect Privacy, LLC / Milen Radumilo

Case No. D2019-2541

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 Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <leclec.com> (the “Domain Name”) is registered with Name Find Source LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 2019 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 October 24, 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 the Respondent of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on November 27, 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

The Complainant is a French association, Association des Centres Distributeurs E. Leclerc or A.C.D. Lec, whereby “E. Leclerc” or “Lec” refers to the last name of the founder of the association, being Mr. Edouard Leclerc. The Complainant operates a chain of supermarkets and hypermarkets in France and in various other European countries.

The Complainant owns a trade mark registration (word mark) for LECLERC in the European Union (“EU”). The Complainant’s trade mark was filed on May 17, 2002 and registered as an EU trade mark on February 26, 2004 (registration no. 002700656), for a wide variety of goods and services, that predates the date of the Domain Name registration, hereinafter referred to as the “Trade Mark”.

The Domain Name was registered on May 29, 2019.

The Panel also conducted an independent search to determine that the Domain Name is currently active, and appears to be a parking page that provides pay-per-click (“PPC”) links. This coincides with the evidence provided by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complaint alleges that Leclerc is one of the most renowned chain of supermarkets and hypermarkets stores in France. The Complainant’s chain of stores and the LECLERC trade marks are well known in France and also in several other European countries. The Complainant emphasizes that “Leclerc” has no meaning in French nor English and is therefore highly distinctive.

The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the 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 Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.

In this case, the Domain Name integrates the Trade Mark in its entirety except that for the last letter “r” of the Trade Mark is missing in the Domain Name. The difference in this one letter does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. A misspelling of a trade mark does not eliminate confusing similarity.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (gTLD), “.com” in this case, as it is viewed as a standard registration requirement.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not commonly known by the Domain Name or the Trade Mark. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, license or any right whatsoever to use the Trade Mark or any mark similar to the Trade Mark as part of the Domain Name. Nor is there any business relationship with the Complainant.

The Domain Name is neither used in connection with a bona fide offering of goods or services nor constitutes a legitimate noncommercial or fair use. The Domain Name initially resolved to a parking page containing hyperlinks referring to the Complainant’s field of activity and resolving to the websites of the Complainant’s direct competitors’ websites. This evidences that the Respondent sought to take unfair advantage from the well-known Trade Mark and business of Complainant by diverting customers from the Complainant’s official websites to the parked website under the Domain Name, where the Respondent benefited from the confusion and diversion by receiving PPC commission.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trade mark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark LECLERC and uses it for the purpose of misleading and diverting Internet traffic. The Panel is persuaded that the choice of the name of the supermarket chain as domain name and therefore integrating the Trade Mark in its entirety except that for the last letter “r” of the Trade Mark missing in the Domain Name is evidence of the Respondent’s opportunistic bad faith registration and use of the Domain Name.

That the website resolved to a parking page with competing PPC links further supports a finding of bad faith use.

The Respondent originally filed for registration under a ‘proxy’ registration, and when his identity was revealed, proved to have other UDRP decisions that have held him to have registered other domain names in bad faith. This constitutes evidence that the Respondent engages in a pattern of bad faith behavior as a serial cyber squatter. See, e.g., Carrefour v. Contact Privacy Inc. Customer 0153824515 / Milen Radumilo, WIPO Case No. D2019-2280; SODEXO v. Perfect Privacy, LLC, Network Solutions, LLC (USA) / Milen Radumilo, WIPO Case No. D2019-2100; WhatsApp Inc. v. Milen Radumilo, WIPO Case No. D2019-1643.

The Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Names <leclec.com> be transferred to the Complainant.

Richard C.K. van Oerle
Sole Panelist
Date: December 11, 2019