The Complainant is Groupe AUCHAN of Croix, France, represented by Dreyfus & associés, France.
The Respondent is beijingyidutiandikejifazhanyouxiangongsi of Beijing, the People's Republic of China.
The Disputed Domain Name <aushancctv.com> is registered with Xin Net Technology Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2009. On December 21, 2009, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On December 24, 2009, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 28, 2009, the Center transmitted by an email to the parties in Chinese and English regarding the language of proceedings. On December 29, 2009, the Complainant confirmed that it had nothing to add to its request for English being the language of proceedings provided in the Complaint. The Respondent did not comment on the language of proceedings by the due date. 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 January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on February 1, 2010. 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 a world leading food retail group. It opened its first hypermarket in Roncq (France) in 1967 and is now running 1,244 hypermarkets around the world in 13 countries including Spain, Italy, Luxembourg, Poland, Hungary, etc.
The Complainant employs 210,000 persons and achieved revenue before tax of 36.7 billion euros in 2007. It has also diversified its activities to real estate and banking.
The Complainant has invested heavily in China. The Complainant opened its first hypermarket in China in 1999. It now operates 32 hypermarkets and employs nearly 55,000 people in China.
The Complainant's hypermarkets operate under the trademark AUCHAN and also a bird device in association with the word mark AUCHAN in red and green colors (the “AUCHAN Logo”) (collectively the “AUCHAN Trademarks”).
The Complainant has registered the AUCHAN Trademarks in, inter alia, the following trademark registrations:
Jurisdiction TM No. Filing Date
WIPO 939,832 February 27, 2007
WIPO 952,847 August 10, 2007
China 1001,146 March 28, 1997
China 971,232 March 28, 2007
The Complainant and its affiliates also own the domain names <auchan.com>, <auchan.fr>, <auchan.net> and <auchan.com.cn>.
The Disputed Domain Name was registered by the Respondent on May 4, 2008.
There is very little information about the Respondent beyond that included in the Complaint as the Response has chosen not to file a Response. The Complaint indicates that the Complainant became aware of the Disputed Domain Name on May 4, 2008 and the Disputed Domain Name directs visitors to a website for selling security equipment including cameras. The top left corner of the homepage of that website depicts a logo comprising the word Aushan also with a bird in red and green colors (the “AUSHAN Logo”). A representation of the AUCHAN Logo and a representation of the AUSHAN Logo are shown below:
The Complainant contents that:
(a) The Disputed Domain Name is confusingly similar to the AUCHAN Trademarks. The difference between the letter “c” in the AUCHAN Trademarks and the letter “s” in the Disputed Domain Name does not sufficiently distinguish the Disputed Domain Name from the AUCHAN Trademarks. Further, the suffix “cctv” increases the likelihood of confusion between the Disputed Domain Name and the AUCHAN Trademarks and is not sufficient to distinguish the Disputed Domain Name from the AUCHAN Trademarks;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not known under the name AUCHAN and not affiliated with the Complainant. The Respondent is not authorized by the Complainant to use the Disputed Domain Name. The Respondent's use of the AUSHAN Logo which infringes the Complainant's AUCHAN Logo demonstrates that the Respondent has not registered the Disputed Domain Name for a legitimate activity; and
(c) The Respondent registered and used the Disputed Domain Name in bad faith. The AUCHAN Trademarks are well-known which the Respondent should be aware of. The use of the AUSHAN Logo on the Respondent's website indicates that the Respondent has prior knowledge of the AUCHAN Trademarks. The Respondent chose the Disputed Domain Name with the purpose of benefiting unduly from the Complainant's reputation and to disrupt the Complainant's business, intentionally attracting Internet users to the Respondent's website for the purpose of commercial gain.
The Respondent did not reply to the Complainant's contentions.
In view of the Registration Agreement being in the Chinese language, the default language of the proceedings should be Chinese in accordance with paragraph 11(a) of the Rules. The Complainant has requested that the Panel determine the language of the proceedings should be English instead for the following reasons:
1. English is the most widely used language in internationally and is one of the working languages of the Center;
2. The Respondent is conversant and proficient in the English language. The Disputed Domain Name consists of latin characters which suggest that the Respondent understands languages other than Chinese. Further, the suffix “cctv” in the Disputed Domain Name corresponds to an English abbreviation for closed circuit television. “CCTV” is also an abbreviation for Chinese Central Television which broadcasts in English;
3. The registration agreement of the Registrar was published in both Chinese and English. Even if the Disputed Domain Name is the object of a Chinese registration agreement, English is not precluded as a language of procedure (Lacoste Alligator S.A. v. Wang Liming, WIPO Case No. D2009-0559).
4. The Complainant is located in France and has no knowledge of Chinese. In order to proceed in Chinese, Complainant would have had to retain specialized translation services at cost very likely to be higher than the overall cost of these proceedings. The use of Chinese would impose a significant burden on Complainant.
Having regard to the objective of ensuring fairness to the parties and to maintain cost-effective and expeditious proceedings (see, Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Casio Keisanki Kabushiki Kaisha dba Casio Computer Co, Ltd v. Taizhou Kaixuan Entertainment Co, Ltd, WIPO Case No. D2005-0870; Solvay SA v Hyun-Jun Shin, WIPO Case No. D2006-0593), this Panel agrees that English should be adopted as the language of the proceedings. In coming to this decision, this Panel is mindful that the Respondent is in default of Response and that all of the Center's communications have been transmitted to the parties in both English and Chinese. Since the Respondent does not wish to participate in the proceedings, it serves no purpose to impose unnecessary and unfair language burdens on the Complainant.
This Panel now proceeds to consider the 3 limbs of paragraph 4(a) of the Policy.
The Complainant owns rights in the AUCHAN Trademarks by virtue of their trademark registrations. In view of the undisputed evidence and the decisions of prior panels pertaining to the AUCHAN Trademarks, this Panel also accepts that the AUCHAN Trademarks are well-known.
Ignoring the gTLD portion in accordance with established practice, the Disputed Domain Name differs from the AUCHAN Trademarks in two aspects:
- The letter “c” in “auchan” is replaced with the letter “s” in “aushan”
- The Disputed Domain Name incorporates the additional suffix “cctv”.
The replacement of the letter “c” with a letter “s” is a minor visual change to the appearance of the word “auchan”. In addition, it is noted that the letters “ch” in “auchan” may be pronounced in French as if it were “sh”. The phonetic difference between “auchan” and “aushan” is also insignificant. This Panel is of the view that the words “auchan” and “aushan” are confusingly similar.
The letters “cctv” is a generic acronym associated with the type of goods offered for sale and advertised on the Respondent's website. A domain name merely incorporating a trademark with the addition of a non-distinctive prefix or suffix is generally not distinguishable from the trademark (e.g., Edmunds.com, Inc. v. keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427; PM-International AG v. Man Utd Club, WIPO Case No. D2008-1432; Alstom v. Value-Domain Com, WIPO Case No. D2009-1249). There being no special circumstances in the facts requiring exceptional treatment, this Panel accepts that the Disputed Domain Name is confusingly similar to the AUCHAN Trademarks.
The Respondent has shown disinterest in protecting its domain name registration despite the Complaint and raises a serious question whether the Respondent could have any rights or legitimate interests in the Disputed Domain Name. The Complainant's submission that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name has not been denied. The evidence available does not suggest that the situation is otherwise.
In the light of the above, this Panel holds that a prima facie case has been made out in relation to the second limb of paragraph 4(a) of the Policy, which the Respondent has not rebutted. The Complainant has established this element of the Policy.
Paragraph 4(b)(iv) of the Policy identifies an example of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence shows that the Respondent's website under the Disputed Domain Name incorporates the AUSHAN Logo which has the same bird device, layout and colours as the AUCHAN Logo. The visual impact is such that the AUSHAN Logo is very similar to the AUCHAN Logo.
Based on the evidence submitted, the Panel accepts that the AUCHAN Trademarks are well-known, including in China. The Complainant seems to be a frequent target of third parties who seek to ride on the AUCHAN Trademarks (eg, Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Groupe Auchan v. Registrant : Broadcast Techonology] WIPO Case D2009-0313). Unfortunately, such is the price of notoriety.
In adopting the AUSHAN Logo, the Respondent must have known of the AUCHAN Trademarks. The similarities between the AUSHAN Logo and the AUCHAN Logo are too strong to be mere coincidence. Without any reasonable explanation from the Respondent of his adoption of the AUSHAN Logo on the Respondent's website, this Panel is drawn to the only conclusion possible in the circumstances - that the Respondent is intentionally attempting to attract Internet users to the website for commercial gain in the manner described in paragraph 4(b)(iv).
Regardless of whether the AUSHAN Logo could infringe any intellectual property rights in the AUCHAN Trademarks, this Panel considers the use of the AUSHAN Logo on the Respondent's website to be highly suspicious and is clearly directed at commercial gain. A casual visitor to the Respondent's website would easily mistake it as being one associated with the Complainant's AUCHAN Trademarks.
This Panel holds that bad faith registration and use have been established on the facts.
For all 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, <aushancctv.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: February 19, 2010