WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. Anirban Mitra
Case No. D2012-0412
1. The Parties
The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Anirban Mitra of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <auchanindia.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 1, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March, 1, 2012, 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 March 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2012.
The Center appointed Erica Aoki as the sole panelist in this matter on March 30, 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 a world leading group in the food retail industry created by Gerard Mulliez in 1961, in Northern France.
The Complainant is one of the world’s leading food retailer group running 616 hypermarkets in 12 countries (Annex 5). The Complainant employs approximately 229,000 employees all over the world and is present in 12 countries and regions and achieved revenue before tax of EUR 34.2 billion in 2011 only in its hypermarket business. It has also diversified its activities to real estate and banking.
The disputed domain name <auchanindia.com> was registered on July 16, 2011. As at the date of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant is the owner of the trademark AUCHAN filed and registered in several countries across the world and notably in India (Annex 12 and 13 to the Complaint), where the Respondent appears to be located.
The Complainant contends that the Complainant and its trademark AUCHAN enjoy a worldwide reputation and thus the Respondent must have known the Complainant’s and its mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In this Panel’s view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical or at least confusingly similar to the Complainant’s trademark AUCHAN. The disputed domain name reproduces the Complainant’s trademark in its totality which previous panels have considered to be well-known. Groupe Auchan v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No. D2009-1746.
The Panel notes that according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for AUCHAN goes far beyond food retail industry.
Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights under paragraph 4(a)(i) of the Policy. The Panel finds that there is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s marks in full.
B. Rights or Legitimate Interests
The Panel finds the following on the record in these Policy proceedings:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent must have known the Complainant’s right in AUCHAN is presumed since it is a well-known trademark;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in this Panel’s view, there is nothing on the record to suggest that the Respondent has any rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith under paragraph 4(b) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’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 Respondent’s website or of a product or service offered on the Respondent’s website.
The Complainant’s trademark is a well-known trademark. In this Panel’s view, there is no doubt that the Respondent must have been aware of the Complainant’s rights at the time the disputed domain name was registered, due to the notoriety of the Complainant’s trademark.
Based on the fact that the disputed domain name has resolved to a pay-per-click site in the past, and later became inactivated, the Panel agrees with the Complainant’s contention and finds that the Respondent registered the disputed domain name to generate profits by directing Internet users to a website providing click through revenue through the creation of initial interest of confusion with the Complainant’s trademark. Dun & Bradstreet Corporation v. Private Whois Service, WIPO Case No. D2010-1805. While the disputed domain name currently does not resolve to any active website, the Panel further notes that it is established that the passive holding of the website does not prevent a finding of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <auchanindia.com> be transferred to the Complainant.
Dated: April 18, 2012