WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. Net Admin
Case No. D2011-2030
1. The Parties
The Complainant is Groupe Auchan, Croix, France, represented by Dreyfus & associés, France.
The Respondent is Net Admin, Baltimore, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <auchansexual.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2011. On November 17, 2011, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name(s). On November 17, 2011, GoDaddy.com, 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 November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2011.
The Center appointed David Levin Q.C. as the sole panelist in this matter on January 25, 2012. 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 an international food retailer, which commenced business in 1961. It opened its first commercial centre in 1969 and now operates over 1325 hypermarkets and supermarkets employing in excess of 250,000 people.
The Complainant is the owner of various trademarks consisting of or including within a device the name AUCHAN. These marks are registered across the world. International trademarks featuring the word AUCHAN were first registered from 1964. It is also the registered owner of various domain names, including <auchan.com> (from April 1996), <auchan.fr> (from February 1997, <auchan.net> (from January 1999) and <groupauchan.com> (from December 2001).
When the registration of the disputed domain name was discovered by the Complainant it sent a
“cease-and-desist” letter via registered mail and email to the Respondent. The unsigned response received was to the effect that the domain name was “deactivated and no longer resolved”. It further maintained, in an email dated February 10, 2011, that “the company no longer does business and the account is locked. The domain (sic) would not be renewed and will expire.” However, when on February 23, 2011 and again on March 8, 2011 lawyers acting for the Complainant requested the transfer of the domain name to it, they received no satisfaction, merely a repetition of the earlier response, that the account or domain “is already gone”, that it could not access the locked account and that “[t]his company is dissolved”.
According to the WhoIs search result produced by the Complainant for the disputed domain name
<auchansexual.info> was first registered on December 27, 2010.
5. Parties’ Contentions
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:
(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;
(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the Respondent registered and uses the domain name in bad faith.
The Complainant maintains that on the evidence produced it has established each of the three elements required.
6. Discussion and Findings
The Respondent has not disputed any of the allegations made against it by the Complainant. Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. There are no exceptional circumstances here disclosed.
A. Identical or Confusingly Similar to a trademark or service mark in which the Complainant has rights, contrary to the Policy, Paragraph 4(a)(i) and the Rules, Paragraphs 3(b)(viii), (b)(ix)(1)
The Panel in considering the issue of the similarity of the disputed domain name to the marks of the Complainant ignores the suffix “.info”. The existence of such a suffix is a requirement of any gTLD registration and as such is not to be taken into consideration when evaluating such similarity or distinctiveness: Accor SA v jacoop.org, WIPO Case No. D2007-1257; Telstra Corp Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003.
The addition of the word “sexual” to the world-famous mark AUCHAN does nothing to differentiate the disputed domain name from the activities of the Complainant. In like circumstances, previous Panels have concluded that the addition of numerous generic words to well known marks, such as (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409) or (PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696) fail to create a domain name which is not confusingly similar to the mark of the complainant.
Indeed, the commencement of the disputed domain name with the well-known mark of the Complainant might be said to suggest that the site is somehow connected with or authorised by the Complainant, and therefore add to any confusion.
The Panel concludes that the disputed domain name is confusingly similar to the trademarks owned by the Complainant.
B. Rights or Legitimate Interests as referred to in the Policy, Paragraph 4(a)(ii) and the Rules, Paragraph 3(b)(ix)(2)
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
The AUCHAN mark is world-renown. Any search of the Internet by the Respondent would have revealed the extensive commercial activities of the Complainant, worldwide. The Panel is prepared to infer, in the absence of any response from the Respondent, that it is this very fact which caused the Respondent to create and register the disputed domain name.
The Respondent is not and never has been in any commercial relationship with the Complainant and has never been authorised to use the Complainant’s trademark. There is no evidence of any use or preparation to use the disputed domain name in connection with any bona fide offering of goods or services legitimately connected with the Complainant’s AUCHAN mark.
C. Registered and Used in Bad Faith contrary to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3)
The Panel finds bad faith registration and use, notwithstanding that it cannot be directly established that the circumstances described in Policy paragraph 4(b)(i), (ii), (iii) or (iv) exist.
The subparagraphs of paragraph 4(b) of the Policy describe situations evidencing registration and use in bad faith. However paragraph 4(b) is not limited to the situations described in the subparagraphs and the Panel is not required to demand proof of one of those described scenarios.
The Panel is in no doubt that given the reputation of the Complainant worldwide and the complete absence of any connection between the parties or any claimed entitlement to exploit the Complainant’s mark, the registration by the Respondent was undertaken in bad faith.
In the present case the Respondent has not apparently used the disputed domain name in the sense of setting up a website to which the disputed domain name resolves.
However, in circumstances where
(a) the AUCHAN mark is so well known;
(b) registration by the Respondent could not have been for any other purpose than to exploit the Complainant’s reputation for its own purposes, notwithstanding that it had and has no rights to use the AUCHAN mark;
(c) the Respondent refuses to respond to reasonable requests to transfer the name which incorporates as its commencing syllables that mark; and
(d) it is in a position to commercially exploit a domain name at any time which, if used, may damage the reputation of the Complainant and cause it irretrievable loss;
the Panel concludes that the Respondent is using the disputed name in bad faith even though such use is not the commonly found use of establishing a website available to Internet users who enter the disputed domain name as a web address.
There is no conceivable explanation for the registration of the disputed domain name other than to improperly exploit the worldwide reputation of the Complainant. By positioning itself to exploit the disputed domain name and prevent the Complainant from obtaining the transfer to it of the name it is using the registration of the disputed domain name in bad faith: c.f. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
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 <auchansexual.info> be transferred to the Complainant.
David Levin Q.C.
Dated: January 31, 2012