Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v Tony Walker

WIPO Case No. D2024-4576

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Tony Walker

Case No. D2024-4576

1. The Parties

The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by

MIIP MADE IN IP, France.

The Respondent is Tony Walker, United States of America (“US”).

2. The Domain Names and Registrar

The disputed domain names <reglobikl.org> and <reglocobil.com> are registered with Dynadot Inc (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, amended Complaint on November 12, 2024.
2024. On November 7, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On November 8, 2024, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain names which differed from the named Respondent (Redacted For Privacy, Super Privacy Service
LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the

Complainant on November 8, 2024, providing the registrant and contact information disclosed by the

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 November 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 9, 2024.

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The Center appointed Iris Quadrio as the sole panelist in this matter on December 13, 2024. 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 one of the most renowned chain of supermarkets and hypermarkets stores in France. The Complainant operates over 750 stores across the country, with locations spanning the entire territory. The supermarket chain and its trademarks enjoy significant recognition and are well-known not only in

France but also in various other European countries.

The Complainant has established a specialized service under the name “REGLO MOBILE,” which corresponds to a mobile virtual network operator (MVNO) service launched in 2007. This service is available in over 600 stores throughout France.

The Complainant is the owner of the trademark REGLO MOBILE in France, including Reg. No. 3907318, for classes 35, 38, and 42, registered on March 22, 2012; and Reg. No. 4132429, for classes 35, 38, and 42, registered on November 7, 2014. Also, the Complainant is the owner of the trademark E LECLERC in many jurisdictions, including European Union Intellectual Property Office (EUIPO) Reg. No. 002700664 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.

Likewise, the Complainant asserts to have online presence in Internet through, its primary website
“reglomobile.fr”, registered on April 19, 2012.

The disputed domain name <reglocobil.com> was registered on September 14, 2024, while the disputed domain name <reglobikl.org> was registered earlier, on September 11, 2024. The disputed domain name <reglocobil.com> resolved to a website pretending to be a platform called “Reglo Mobile Wallet Recharge” reproducing the Complainant’s trademarks. The disputed domain name <reglobikl.org> resolved to a website displaying the Complainant’s trademarks, REGLO MOBILE and E LECLERC.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to its trademark REGLO
MOBILE, and to its associated domain names.

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain names, nor is the Respondent related in any way to the Complainant. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks REGLO MOBILE and E LECLERC or apply for registration of the disputed domain names.

More specifically, the Complainant alleged that the Respondent has not used and/or has no demonstrable intention to use the disputed domain names except to create a likelihood of confusion with the Complainant's trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain names only to generate confusion among consumers as to the origin of the website only for the purpose of gaining commercial profit.

Finally, the Complainant has requested the Panel to issue a decision ordering the transfer of the disputed domain names to the Complainant.

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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 disputed domain names, the Complainant must prove each of the following, namely that:

(i)        the disputed domain names are identical or confusingly similar with a trademark 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 names; and

(iii)      the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

. WIPO Overview 3.0, section 1.7. The typosquatting practice whereby the letter “m” is replaced by the letter “c” and the letter “e” is deleted in the disputed domain name <reglocobil.com>, while the syllable “mo” and the final “e” are deleted and replaced by the letter “k” in the disputed domain name <reglobikl.org> does not prevent this Panel to conclude that the disputed domain names are confusingly similar to the Complainant’s trademark under WIPO Overview 3.0, section 1.9.

The Panel finds the dominant portion of the mark is recognizable within the disputed domain names

The content of the websites associated with the disputed domain names confirms the confusing similarity as the Respondent seeks to target the Complainant’s trademark. WIPO Overview 3.0, section 1.15.

Moreover, the “.com” and “.org” generic Top-Level Domains (“gTLD”) are viewed as a standard registration requirement and are generally disregarded under the first element of the confusing similarity test, as set forth in section 1.11.1 of the WIPO Overview 3.0.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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

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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain names or to use the trademarks REGLO MOBILE and E LECLERC nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain names. Also, the Complainant has prior rights in the REGLO MOBILE and E LECLERC trademarks which clearly precede the Respondent’s registration of the disputed domain names.

Likewise, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names. In this regard, the Complainant has proven in Annex 7 to the Complaint, that at the time of its detection, the disputed domain name <reglocobil.com> was pointing to a fraudulent website pretending to be a platform called “Reglo Mobile Wallet Recharge” reproducing the Complainant’s trademarks. Additionally, the Complainant has demonstrated that the disputed domain name <reglobikl.org> resolved to a website displaying the Complainant’s trademarks, REGLO MOBILE and E LECLERC, while impersonating the Complainant’s official website, “reglomobile.fr”. Furthermore, a section of the websites associated with the disputed domain names was designed to collect users’ data, including sensitive banking information. These actions clearly aim to exploit the Complainant’s reputation by misleading Internet users into believing that the websites are an official platform of the Complainant. Hence, as established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.”

Furthermore, as evidenced in Annex 8 to the Complaint, the Complainant has demonstrated its efforts to secure the deactivation of the disputed domain names by sending formal notices to the Registrar and hosting providers of the fraudulent websites. Additionally, the Complainant attempted to contact the Respondent directly through the online form available on the Registrar’s website. However, no response was received through either channel.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In such connection, the Complainant has submitted evidence to support that the trademarks REGLO confusion among the Internet users and benefit from the Complainant’s reputation. Therefore, the Panel is satisfied that the Respondent must have been aware of the Complainant and the Complainant’s trademarks REGLO MOBILE and E LECLERC when it registered the disputed domain names.

MOBILE and E LECLERC are widely known and were registered and used many years before the
Respondent registered the disputed domain names. When registering the disputed domain names, the

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Likewise, based on the evidence provided by the Complainant by Annex 7 to the Complaint, the disputed domain names resolved to fraudulent websites that displayed the Complainant’s trademarks REGLO MOBILE and E LECLERC and imitated the Complainant’s official website at “ Clearly, the Respondent should have known the existence of the Complainant when registering the disputed domain names.

The Panel finds therefore that the Respondent’s use of the disputed domain names was intended to attract and mislead Internet users when searching for the Complainant’s website and to redirect them to a website from which the Respondent most probably derives commercial revenue by creating a likelihood of confusion with the Complainant’s trademark.

The Panel notes that the disputed domain names currently resolve to inactive websites. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademarks, the composition of the disputed domain names, and the use of the disputed domain names for impersonating the Complainant and finds that in the circumstances of this case although the disputed domain names resolve to inactive websites, it does not prevent a finding of bad faith under the Policy.

Even more, the Respondent has ignored the multiple attempts from the Complainant to try to resolve this matter amicably outside from this administrative proceeding.

The Panel finds that the Complainant has established the third element 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 disputed domain names <reglobikl.org> and <reglocobil.com> be transferred to the
Complainant.

/Iris Quadrio/ Iris Quadrio Sole Panelist Date: December 27, 2024