Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Domain Administrator, See PrivacyGuardian.org / cunshuo zhang
The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / cunshuo zhang, China.
The disputed domain name <superpouvoirsleclerc.com> ("Domain Name") is registered with NameSilo, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 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 July 9, 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 July 9, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 31, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 20, 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.
The date of the Domain Name registration was confirmed by the Registrar to be February 27, 2019.
The trademark LECLERC serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant provided evidence of multiple trademark registrations for the mark LECLERC including, inter alia, European Registration No. 002700656 (registered on February 26, 2004) that predates the date of the Domain Name registration for a wide variety of goods and services.
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.
The Complainant is a French association, ACD Lee (Association Des Centres Distributuers E. Leclerc). LECLERC refers to the last name of the founder and promoter of the association – Mr. Edouard LECLERC. 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 trademarks 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 Domain Name incorporates in the identical way, as its distinguishing feature, the Complainant's registered trademark LECLERC. The mere addition of the French generic words "super pouvoirs" ("Superpowers" in English) does not lessen the inevitable confusion between the Domain Name and the Complainant's trademark LECLERC. Quite the contrary, the addition of the French generic terms "super pouvoirs" enhances the risk of confusion since they directly refer to the recurring promotional campaign "Les- Super Pouvoirs d'Achat" carried out by the Complainant. Indeed, in the course of its activity, the Complainant regularly organizes promotional campaigns within its LECLERC stores. The Complainant notably launched in October 2018 a promotional game entitle "Les Super-Pouvoirs d'Achat" (which can be translated as "the super purchasing power" in English). This campaign was launched once again in February 2019, just prior to the registration of the Domain Name by the Respondent.
Considering the above, the Internet users may falsely believe that the website, associated to the Domain Name, is operated by, linked to or at least endorsed by the Complainant. The Respondent has not been authorized by the Complainant to use the trademark LECLERC or register the Domain Name. Moreover, there is no business relationship existing between the Complainant and the Respondent.
The Complainant's representative provided copies of email discussions with the Respondent that support the Complainant's contention that the Domain Name was registered for the sole purpose to obtain unlawful material benefits from the Complainants trademarks, reputation and notoriety, and the Respondent having tried to sell the Domain Name to the Complainant. Indeed, further to the letter sent by the Complainant's representative seeking transfer of the Domain Name, the Respondent answered the following in Chinese, which can be translated as "[T]his domain name can be transferred to the trademark holder for free of charge, and I hope to get compensation. If your company is willing, you can negotiate further."
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark LECLERC in respect of a broad range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the terms "super pouvoirs" does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant's trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent's registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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;
(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 used in bad faith.
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for LECLERC.
The Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. Further, the Panel finds that the addition of the extra words that translate to "super powers" to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating "[t]he incorporation of a Complainant's well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant's registered trademark, under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
B. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant's trademark 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 trademark 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, together with the key words in their new advertising campaign was a deliberate attempt to trade on the Complainant's trademark and the Panel finds that this is evidence of the Respondent's opportunistic bad faith registration and use of the Domain Name.
That the website currently resolves to a parking page with PPC links does not prevent a finding of bad faith use. Further, that the Respondent, who 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 is evidence that the Respondent engages in a pattern of bad faith behaviour as a serial cyber squatter. See, e.g., Credit Karma, Inc. v. Nexperian Holding Limited / Zhang Cun Shuo, WIPO Case No. D2017-1820, and Lotus Group Limited v. Nexperian Holding Limited / Zhang Cun Shuo, WIPO Case No. D2018-0359.
Given the evidence of the Complainant's prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of and the Respondent's reply to the Complainant's request for voluntary transfer of the Domain Name, together with the other findings above, 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.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Ellen B Shankman