Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v Toolz Hush

WIPO Case No. D2025-0855

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Toolz Hush,
hushbar

Case No. D2025-0855

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 Toolz Hush, hushbar, United States of America.

2. The Domain Name and Registrar

The disputed domain name <galec-leclerc.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, contact details.

2025. On March 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification
in connection with the disputed domain name. On March 3, 2025, the Registrar transmitted by email to the
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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 5, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was March 25, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 26, 2025.

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The Center appointed Eva Fiammenghi as the sole panelist in this matter on March 28, 2025. 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 Association des Centres Distributeurs E. Leclerc – A.C.D. Lec, a French association representing the interests of the well-known supermarket and hypermarket chain E. Leclerc. Founded by Mr. Édouard Leclerc over 70 years ago, the Complainant today coordinates more than 750 stores across France and approximately 100 stores in other European countries, including Poland, Spain, Portugal, Belgium, the Netherlands (Kingdom of the), and Slovenia. The Complainant’s business generates a turnover of over EUR 60 billion annually and employs more than 140,000 people.

The Complainant operates a widely known retail brand under the trademark LECLERC, and is also affiliated with Société Coopérative Groupements d’Achats des Centres Leclerc (SC Galec), which manages commercial negotiations with suppliers and plays a central role in the Complainant’s organizational structure.

The Complaint is based on the following registered trademarks:

- European Union Trademark LECLERC Reg. No. 002700656, registered on February 26, 2004, for
goods and services in Classes 1 to 45.

- French Trademark LECLERC Reg. No. 1307790, registered since May 2, 1985, covering Classes 1 to
35 and 39.

The Complaiant’s affiliated company, SC Galec, also owns French Trademark GALEC Reg. No. 3644736, registered on September 18, 2009, covering Class 35.

The disputed domain name <galec-leclerc.org> was registered on February 25, 2025, by the Respondent. The disputed domain name was used in connection with fraudulent email communications impersonating SC Galec by requesting one of the business partners of the Complainant to use updated banking details for the payment of invoices.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name <galec-leclerc.org> identically reproduces the well-known and distinctive trademarks LECLERC and GALEC.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to use its trademarks, and the Respondent is neither commonly known by the domain name nor engaged in any bona fide offering of goods or services under it. On the contrary, the disputed domain name has been used for fraudulent purposes, including phishing attempts and impersonation of SC Galec, as evidenced by the sending of deceptive emails using the address “[...]@galec-leclerc.org”, which misled recipients into believing the emails originated from an official Leclerc entity.

The Complainant argues that the dispute domain name was registered and is being used in bad faith. The configuration of mail exchange (MX) servers for the domain indicates a deliberate intent to facilitate email-

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based fraud. The dispute domain name was registered anonymously, further suggesting an attempt to
conceal malicious intent. Additionally, the rapid intervention of the Registrar to suspend the disputed domain

name upon notice of abuse underscores the seriousness of the misuse.

Based on these contentions, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to 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 name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems

applicable.

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.

The disputed domain name <galec-leclerc.org> incorporates the Complainant’s trademark LECLERC and the trademark GALEC owned by the Complainant’s affiliated company in their entirety, separated only by a hyphen. According to established precedent, the inclusion of a trademark in its entirety is sufficient to

establish confusing similarity, and the addition of other terms/marks or connectors (such as a hyphen) does

not prevent a finding of confusing similarity.

Accordingly, the disputed domain name is confusingly similar to the trademarks for the purposes of the

Policy.

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

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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 (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.

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 name, such as those enumerated in the Policy or otherwise.

The Complainant and/or its affiliated company have/has not authorized the Respondent to use the trademarks LECLERC or GALEC in any way, and there is no evidence that the Respondent is commonly known by the disputed domain name.

The evidence submitted by the Complainant, including the configuration of MX records and the impersonation email sent from “[…]@galec-leclerc.org”, confirms that the disputed domain name has been used in furtherance of fraudulent activity, which can never confer rights or legitimate interests.

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 the present case, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith under paragraph 4(b)(iv) of the Policy.

The Respondent registered the dispute domain name that incorporates two distinctive and widely known trademarks of the Complainant and its affiliated company. The dispute domain name has been configured with MX records and has been used to send fraudulent emails requesting one of the business partners of the Complainant to use updated bank information for the payment of invoices while impersonating SC Galec, a central entity of the Complainant’s organization. These actions constitute phishing, a serious form of bad faith exploitation of a trademark.

Panels have held that the use of a domain name for illegal activity such as phishing and impersonation constitutes bad faith. The disputed domain name’s registration appears to have been made precisely with the intent to deceive and mislead.

Additionally, the dispute domain name is currently suspended, and its passive holding after the notification of abuse does not preclude a finding of bad faith.

The fact that the Respondent did not respond to the Complaint further supports this finding of bad faith.

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

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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 name <galec-leclerc.org> be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: April 11, 2025