The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Registrant : Broadcast Technology of Kiev, Ukraine.
The disputed domain name <fundauchan.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On March 12, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2009.
The Center appointed Dr. Luca Barbero as the sole panelist in this matter on April 21, 2009. 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 Complainant is Groupe AUCHAN, a French company incorporated which was established in 1961 in Northern France and is a world leading group in the food retail industry. The Complainant opened the first hypermarket in Roncq (France) in 1967 and the first commercial centre in Englos (France) in 1969. In 1981, the Complainant began its international expansion, opening hypermarkets in various countries, inter alia, in Central and Eastern Europe. The Complainant also expanded to the Ukraine, where the Respondent is based, following a partnership agreement dated on March 2007 with the Furshet retail group, and opened since 2008 two hypermarkets in this country. The Complainant has also diversified its activities to real estate and banking business through its subsidiaries Immochan and Banque Accord.
The Complainant is the owner of several trademarks registration consisting in the mark AUCHAN such as the International Trademark Registration AUCHAN No. 580995, registered on January 29, 1992, renewed, and covering goods in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29 and 30; International Trademark Registration AUCHAN No. 939832, registered on February 27, 2007, and covering goods in classes 1 to 45 and the International Trademark Registration AUCHAN No. 952847, registered on August 10, 2007, and covering goods in classes 9, 35 and 38.
The Complainant is also the owner of international AUCHAN trademarks in the Ukraine, including, inter alia, the International Trademark Registration AUCHAN No. 625533, registered on October 19, 1994, renewed, and covering goods in classes 1 to 42 and the International Trademark Registration AUCHAN MOBILE No. 955912, registered on January 17, 2008, and covering goods in classes 9, 16, 35, 36, 37, 38, 41 and 42.
The Complainant is furthermore the registrant of a number of domain names consisting in or including the mark AUCHAN such as <auchan.com>, registered on April 1, 1996, <auchan.fr >, registered on February 11, 1997, <auchan.net>, registered on January 4, 1999, <auchan.co.uk >, registered on December 18, 2003 and <auchan.ua>.
The Respondent registered the Domain Name <fundauchan.com> on June 24, 2008.
The Complainant points out that Groupe Auchan is a leading group in the food retail industry and that it owns numerous AUCHAN trademarks protected throughout the world.
The Complainant contends that Domain Name <fundauchan.com> is confusingly similar to trademarks and domain names in which the Complainant has rights.
The Complainant highlights that the Domain Name reproduces in its entirety the Complainant's well-known trademark with the sole addition of the term “fund” and the gTLD indication “.com”; the addition of the said prefix before the trademark AUCHAN is insufficient to distinguish the Domain Name from the Complainant's trademark.
The Complainant also states that the addition of the term “fund” increases the likelihood of confusion since Complainant and its affiliates, in particular Banque Accord, are offering financial services such as saving accounts, credits, loans, credit cards.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the registration of numerous AUCHAN trademarks long preceded the registration of the Domain Name, that the Respondent is not known under the name AUCHAN or any similar term and that it is not affiliated with the Complainant in any way nor authorized to use or register its AUCHAN trademark, or to apply for any domain name incorporating said mark.
The Complainant also points out that the Respondent never replied to the Complainant's cease-and-desist letter and reminders claiming any prior rights or legitimate interests in the Domain Name.
The Complainant informs the Panel that the Domain Name was registered via a privacy shield company and the Respondent's contact details were only further provided to the Complainant, appearing moreover erroneous since the cease-and-desist letter sent by the Complainant was returned with the address “unknown”.
The Complainant also states that the Respondent has not made significant use of the Domain Name, since the Domain Name does not resolve to any web page.
The Complainant concludes, as to the issue of the rights or legitimate interest, that the Respondent has no rights or legitimate interests in respect of the Domain Name.
With reference to the circumstances evidencing bad faith at the time of the registration of the Domain Name, the Complainant underlines that the Groupe Auchan is a well-known group on an international scale and that it also opened a hypermarket in the Ukraine by the end of March 2008, therefore making it certain that the Respondent knew of the Complainant when he registered the Domain Name on June 24, 2008.
As circumstances evidencing bad faith in the use of the Domain Name, the Complainant underlines that AUCHAN trademarks are well-known also in Ukraine where Respondent is domiciled and that the Domain Name has never been used in relation to active websites and is therefore being “passively held” by the Respondent.
The Complainant emphasizes that the Respondent did not reply to the Complainant's cease-and-desist letter despite its numerous reminders via email and that the use of Moniker privacy service made by the Respondent, in view of the circumstances of the case, is an element that holds against him, because the Respondent failed to provide sufficient contact information to the Registrar.
According to the Complainant, the addition of the term “fund” in the Domain Name while the Complainant and its affiliate are actually offering financial services is an element evidencing Respondent's bad faith.
The Complainant also highlights that the Respondent has already been involved in another UDRP proceeding where its bad faith was acknowledged.
The Respondent did not reply to the Complainant's contentions and is in default.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the 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 a service 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 Complainant has provided evidence of ownership of a number of trademark registrations for AUCHAN.
It is well-established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia,Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Roche Products Inc. v. Ahsley Moonan, WIPO Case No. D2008-0917 (addition of the word “free” to the trademark VALIUM).
The Panel also concurs with the views expressed in Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565, with reference to the domain name <auchansoftware.com>, where the Panel found that “the mere addition of the generic word “software” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name, as “software” is a common term which designates products the Complainant sells through its online supermarket. It is well- established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words”.
Therefore, the mere addition of the words “fund” as prefix to the trademark AUCHAN does not exclude confusing similarity between the Domain Name and the Complainant's trademark.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating inter alia in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
It has been repeatedly stated that when a respondent does not avail himself of his right to respond to complainant, in the appropriate circumstances, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
There is no indication before the Panel that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Name.
Moreover, the Panel finds that the Respondent, whose true identity was obscured by the privacy service, has not shown that it is commonly known by the Domain Name as stated in Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.
The Panel also notes that the Domain Name is passively held. In view of the Respondent's default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the Panel found that “Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute ‘legitimate non-commercial or fair use' ”. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (noting that respondent was a passive holder of the domain name <crateandbarrel.org>, in that “the domain name does not resolve to a site” and ruling that, “[g]iven that the domain name has been registered since mid-March 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make, any legitimate use of the domain name”); Netcentives, Inc. v. B.W. Brody Company, WIPO Case No. D2000-0672 (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the domain name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant's mark).
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of the use of the trademark since 1961, the amount of advertising and sales of Complainant's products worldwide and the fact that the Complainant also expanded to Ukraine, the Respondent was likely well-aware of the Complainant's trademarks.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as decided in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 177 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has extensive world wide recognition, would have been known to the Respondent at the time of registration of the domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
As stated inter alia in GoDaddy.com, Inc. v. Domainsnext.com, WIPO Case No. D2009-0073, “the examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found”.
Therefore, with reference to the issue of the use of the Domain Name by Respondent, the Panel finds that in this case the “passive holding” evidences bad faith. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In Nike, Inc. v. Crystal International, WIPO Case No. D2002-0352, it was held that non-use as such does not determine bad faith. “But the non-use for a long time of the domain name while the trade mark RIVER BELLE has been widely publicized globally and constantly featured throughout the Internet since 1997 is certainly evidence of bad faith” Stanworth Development Limited v. Dotster, Inc., WIPO Case No. D2008-0367. See also Banco Santander Central Hispano S.A. v. Taiwan Motorbikes Netherland BV Panamá, WIPO Case No. D2002-0192 where it was held “The non use for six months by the Respondent could be considered an element of bad faith, but it has to be preceded by the bad faith registration as that is presently required by the Policy”.
The Panel shares therefore the view of LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling, WIPO Case No. D2008-0226, in which the Panel stated that the lack of active use of the domain name does not as such prevent a finding of bad faith and that a panel must examine such circumstances as complainant having a well-known trademark, no response to the complaint, concealment of identity and the likelihood of conceiving a good faith use of the domain name.
In the case at hand, the Respondent has registered the Domain Name since June 24, 2008 but has not used it for the time being, was already involved in another case of abusive domain name registration, has concealed its identity by using a privacy shield at the time of registration, did not file a Response to the Complaint and the Complainant's trademark is widely-known.
The Panel also considers the incomplete information originally provided by the Respondent to the Registrar as an additional circumstance evidencing the bad faith of the Respondent concurring with the views expressed inter alia in Sud-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376, in which the Panel found bad faith use and registration where Complainant “was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar's registry” (see also Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352).
See along these lines Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 in which the Panel held that “Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.
In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be considered as a further circumstance evidencing bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787. Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting”.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fundauchan.com> be transferred to the Complainant.
Dated: May 5, 2009