The Complainant is Association des Centres Distributeurs E. Leclerc – A.C.D. Lec, France (“Complainant”), represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / yop poyo, United Kingdom (“Respondent”).
The disputed domain name <hypermarche-e-leclerc.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 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 Complainant on August 14, 2020, 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 August 14, 2020.
The Center verified that the Complaint together with the amended Complaint (hereinafter “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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 10, 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.
Complainant is an association of retailers who operate under the E LECLERC trademark in the supermarket and hypermarket arena. Complainant operates 721 stores in France and 100 other stores in other countries in Europe, such as Poland, Spain, Portugal, Andorra, and Slovenia. Complainant has more than 20 per cent of the market share on all products and is the leader of large-scale distribution in France. In 2019 Complainant’s turnover was EUR 48.20 billion in France alone. Complainant employs approximately 133,000 people. Complaint, Annex 5.
Complainant owns several trademarks for E LECLERC, including one European Union Trademark No. 002700664, for which an application was filed on May 17, 2002, and which was registered on January 31, 2005. Complaint, Annex 4. Numerous prior domain name decisions have recognized the fame of Complainant’s marks. Complaint, Annex 7.
Respondent registered the disputed domain name on March 4, 2020, using a privacy service. Complaint Annex 1. Respondent has been using the disputed domain name to resolve to a parking page containing hyperlinks to the websites of Complainant and of Complainant’s competitors. Complaint, Annex 6. A MX (mail exchanger) lookup revealed that mail servers have been configured to operate with the disputed domain name, so that Respondent may be engaged in a phishing scheme aiming to deceive Internet users and make them believe that they are dealing with the Complainant. Complaint, Annex 8. Upon discovering the above, Complainant sent Respondent two cease and desist letters. Complaint, Annex 9. Complainant received no response to these letters.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s E LECLERC mark. Complainant contends that Respondent has no rights or legitimate interests in respect to the disputed domain name. Finally, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name, <hypermarche-e-leclerc.com>, consists of three parts separated by two hyphens. The first part consists of the word “hypermarche”, which is the French word for a large retail outlet that sells both general household goods as well as groceries, usually on the outskirts of the city and having a large, paved parking lot. This is descriptive of a significant portion of Complainant’s business operations conducted under its E LECLERC trademark. This is separated from the second part of the disputed domain name by a hyphen. The second part of the disputed domain name consists of the letter “e”, standing by itself. This is separated from the third part of the disputed domain name by a hyphen. The “e” stands alone and is not followed by a dot or period. The “e” in Complainant’s famous trademark also stands by itself without punctuation. The third and final part of the disputed domain name attached to the generic Top-Level Domain (“gTLD”) “.com”, consists of the name Leclerc, which is also the second and final part of Complainant’s famous E LECLERC trademark. Complainant’s E LECLERC trademark is clearly recognizable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s famous trademark, which was registered more than fifteen years before the registration of the disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent has used the disputed domain name to resolve to a web site that is commonly referred to as a “parking site”, one which contains links not only to Complainant’s web site, but also to those web sites of Complainant’s direct competitors. When a user who is led to believe that he is going to a web site operated by Complainant clicks on a link and is taken to the web site of one of Complainant’s direct competitors, Respondent realizes automatic income from those competitors. This operation is called pay-per-click. Accordingly, the Panel has no difficulty in finding that the disputed domain name has been registered and used in bad faith.
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, <hypermarche-e-leclerc.com>, be transferred to Complainant.
M. Scott Donahey
Date: September 12, 2020
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