WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. Zhenghui

Case No. D2011-2123

1. The Parties

Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.

Respondent is Zhenghui of Hangzhou, China.

2. The Domain Names and Registrar

The disputed domain names <auchanshop.com> and <auchanstore.com> (the “Domain Names”) are registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2011. On December 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 6, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 6, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceedings. On the same day, Complainant confirmed its request that English be the language of the proceedings. Respondent did not comment on the language of proceedings by the specified 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 Respondent of the Complaint in both Chinese and English, and the proceedings commenced on December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2012.

The Center appointed Yijun Tian as the sole panelist in this matter on January 24, 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

A. Complainant

Complainant, Groupe Auchan of Croix, is a company incorporated in France. It is a world leading group in the food retail industry, and is now running 1163 hypermarkets and supermarkets in 12 countries, employing 186,000 persons, and achieving a revenue before tax of EUR 36.7 billion in 2007. Complainant’s hypermarkets are now 1335 all over the world, and specially, 42 in China. The first of them opened in Shanghai in 1999 (Annex 8 to the Complaint), and Complainant employs 84,000 persons in China (Annex 8 to the Complaint).

Complainant is the registered owner of numerous trademarks consisting or including the word “Auchan” (AUCHAN Marks) throughout the world since 1964, including China (since 2006) (see Annex 10 to the Complaint). The international trademark AUCHAN (registered since 1964) was registered long before the registration of the Domain Names (2010). Complainant has also registered numerous top-level and country code domain names incorporating the AUCHAN Marks, such as <auchan.fr> (since 1997), <auchan.biz> (since 2001), and <auchan.com.cn> (since 2000) (Annex 9 to the Complaint).

B. Respondent

Respondent, Zhenghui of Hangzhou, China, registered the Domain Names <auchanstore.com> on July 24, 2010, and <auchanshop.com> on July 25, 2010, which are long after Complainant operated web sites at the domain names which contain the AUCHAN Marks (i.e. <auchan.com.cn> was registered on March 21, 2000, Annex 9 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

Complainant owns numerous registrations for the AUCHAN Marks across the world. “Auchan” is also part of Complainant’s registered name, Groupe Auchan.

The two Domain Names <auchanshop.com> and <auchanstore.com> incorporate Complainant’s mark in its entirety with the mere adjunction of the terms of “store” and “shop”.

It has been held in numerous UDRP decisions that the addition of the gTLD indication does not prevent likelihood of confusion.

Several UDRP decisions have held those generic or descriptive terms do not prevent the confusion or identity between the domain names and complainant’s trademark.

The addition of the world “store” or “shop” is not sufficient to mark the Domain Names <auchanshop.com> and <auchanstore.com> significantly different from Complainant’s trademark.

(b) Respondent has no rights or legitimate interests in respect of the Domain Names;

Respondent is not affiliated with Complainant in any way.

The registration of numerous AUCHAN Marks long preceded the registration of the Domain Names (Annex 10 of the Complaint).

Respondent has no rights or legitimate interests in the Domain Names, and has not made significant use of the Domain Names.

The Domain Names are so identical to the famous AUCHAN Marks that Respondent cannot reasonably pretend that it has registered the Domain Names with propose of developing a legitimate activity.

1) Regarding the registration in bad faith:

It is obvious that Respondent knew or should have known about Complainant’s trademark and supermarkets at the time it registered the Domain Names <auchanshop.com> and <auchanstore.com>.

Complainant is well-know internationally and has established business activities throughout the world including China (Annex 8 to the Complaint).

Complainant has successfully initiated numerous UDRP proceedings. Most of these UDRP decisions underline the notoriety of the AUCHAN Marks, and the fact that AUCHAN Marks is well-known in many countries, including in China.

The registration of the Domain Names including Complainant’s trademark suggest the bad faith of Respondent.

2) Regarding the use in bad faith:

Both Domain Names are passively held by Respondent since they simply direct towards an inactive page saying that they are for sale.

Passive holding does not preclude a finding of bad faith.

The facts of this case do not allow for many plausible actual or contemplated active use of the Domain Names by Respondent in good faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreements for the Domain Names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant drafted the Complaint in English. The English language is the language most widely used in international relations and that is one of the working languages of the Center.

(b) The Domain Names consist of Latin character which suggests that Respondent understands other languages than Chinese. The Domain Names include the words “store” and “shop” which are English words designating a establishment where merchandise is sold. It thus can be assumed that Respondent is conversant and proficient in the English language.

(d) The use of Chinese in this case would impose a burden on Complainant which must be deemed significant in view of the low cost of these proceedings.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) further states: “in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company incorporated in France, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the Domain Names include English word such as “store” or “shop” (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047; see also Swarovski Aktiengesellschaft v. Hao Chen, WIPO Case No. D2011-1223).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the Domain Names <auchanshop.com> and <auchanstore.com> are registered in Latin characters and particularly in English language, rather than Chinese script; (b) The fluent English has been displayed on Respondent’s websites (e.g. displaying sale offer in both Chinese and English “If you would like to purchase this domain, please click here to make an offer”.); (c) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (d) the Center informed Respondent in both the Chinese and English languages that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the Domain Names should be transferred:

(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the AUCHAN Marks acquired through registration. The AUCHAN Marks have been registered worldwide (since 1964) including China (since 2006; Annex 10 to the Complaint) and it has a widespread reputation in food retail industry.

The Domain Names <auchanshop.com> and <auchanstore.com> comprise the AUCHAN Marks in its entirety. The Domain Name <auchanshop.com> only differs from the AUCHAN Marks by the addition of the English word “shop”. The Domain Name <auchanstore.com> only differs from the AUCHAN Mark by the addition of the English word “store”. The Panel finds that these do not eliminate the confusing similarity between Complainant’s registered AUCHAN Marks and the Domain Names.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Claim No. 0500065).

Mere addition of the descriptive term “shop” or “store” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. One of common meanings of the term “shop” or “store” is an establishment where merchandise is sold, usually on a retail basis. Consumers who visit <auchanshop.com> and <auchanstore.com> are likely to be confused and may falsely believe that <auchanshop.com> and <auchanstore.com> are operated by Complainant for selling Auchan-branded products. Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the Domain Names and the AUCHAN Marks in which Complainant has rights. (See Swarovski Aktiengesellschaft v. Hao Chen, WIPO Case No. D2011-1223)

The Panel therefore holds that Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the Domain Names:

(i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the Domain Names; or

(iii) legitimate non-commercial or fair use of the Domain Names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the AUCHAN Marks throughout the world (Annex 10 to the Complaint). Complainant has also registered numerous top-level and country code domain names incorporating the AUCHAN marks, such as <auchan.fr> (since 1997), <auchan.biz> (since 2001), and <auchan.com.cn> (since 2000) (see Annex 9 to the Complaint). According to the information provided by the Complainant, Complainant’s hypermarkets are now 1335 all over the world and specially, 42 in China. The first of them opened in Shanghai in 1999 (Annex 8 to the Complaint), and Complainant employs 84,000 persons in China (Annex 8 to the Complaint).

Moreover, according to Complainant, Respondent is not authorized dealers of Auchan-branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the Domain Names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the Domain Names:

(a) There has been no evidence adduced to show that Respondent is using the Domain Names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the Domain Names or reasons to justify the choice of the word “Auchan” in their business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the AUCHAN Marks or to apply for or use any domain names incorporating the AUCHAN Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the Domain Names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the Domain Names. The two Domain Names were registered on July 24 and 25, 2010 respectively, which are long after Complainant operated websites at the domain names which contain the AUCHAN Marks (e.g. <auchan.com> was registered in 1996; <auchan.com.cn> was registered in 2000). The Domain Names are identical or confusingly similar to Complainant’s AUCHAN Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the Domain Names.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or

(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the Domain Names in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the AUCHAN Marks with regard to its products. Complainant has registered its AUCHAN Marks throughout the world, including China. Based on the information provided by Complainant, Complainant is a world leading group in the food retail industry, and is now running 1163 hypermarkets and supermarkets in 12 countries. Complainant’s hypermarkets are now 1335 all over the world, and specially, 42 in China, and Complainant employs 84,000 persons in China. (Annex 8 to the Complaint)

It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names (in 2010).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith. (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).”

Thus, the Panel concludes that the Domain Names were registered in bad faith with the intent to create an impression of an association with Complainant’s AUCHAN Marks.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using confusingly similar Domain Names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.

Respondent currently uses the Domain Names as landing pages stating that the Domain Name is for sale and provide “click here” link for potential buyers interested in purchasing the Domain Name to make an offer.

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the AUCHAN Marks, the Panel finds that the public is likely to be confused into thinking that the Domain Names <auchanshop.com> and <auchanstore.com> have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the Domain Names are resolved. In other words, Respondent has through the use of a confusingly similar Domain Names created a likelihood of confusion with the AUCHAN Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepages of the Domain Names, potential partners and end users are led to believe that the Domain Names are either of Complainant or of the official authorized partners of Complainant, which they are not. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the Domain Names were used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use Domain Names, which are confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Domain Names and the conduct of Respondent as far as the websites to which the Domain Names resolve are indicative of registration and use of the Domain Names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

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 Names <auchanshop.com> and <auchanstore.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: February 7, 2012