WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. Yang Yi
Case No. D2014-2094
1. The Parties
The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Yang Yi of Suzhou, Jiangsu Province, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <auchan.xyz> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2014. On November 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2014, the Registrar 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 2, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 3, 2014, the Complainant confirmed its request that English be the language of the proceeding. On December 4, 2014, the Respondent requested Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The final Response was filed with the Center on December 19, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on January 6, 2015. 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, started in 1961 in the north of France. It operates across 16 countries including in Europe and Asia. Its core businesses lie in the running of hypermarkets and supermarkets, and in real estate, banking and e-commerce. The Complainant has a global workforce of 302,500 employees performing more than 150 different jobs. In 2014, the Complainant was ranked the world's 11th largest food retailer and second largest in France. It operates in China under two hypermarket banners: Auchan and RT Mart (Ruentex Group). There are 60 Auchan hypermarkets and 267 RT Mart hypermarkets in China with an employee count of about 115,030.
The disputed domain name was registered on August 22, 2014.
The Complainant and its affiliates own and operate the domain names <auchan.com> registered on April 1, 1996, <auchan.fr> registered on February 11, 1997, and <auchan.com.cn> registered on March 21, 2000.
The Complainant asserts its AUCHAN trade mark enjoys a worldwide reputation; it owns numerous trade mark registrations for AUCHAN including in China. Those cited by the Complainant include:
(i) International trade mark registration for AUCHAN + logo (No. 898156 designating China), dated of April 18, 2006 that covers goods and services in Classes 1 to 45;
(ii) International trade mark registration for AUCHAN + logo (No. 1011777), dated of February 19, 2009 that covers goods and services in Classes 1 to 45;
(iii) International trade mark registration for AUCHAN & Chinese characters (No. 1130961), dated of December 13, 2011 that covers goods and services in Classes 1 to 45;
(iv) French trade mark registration for AUCHAN (No. 1381268), dated of November 24, 1986 that covers goods and services in Classes 1 to 45.
The disputed domain name resolves to an inactive page. The Complainant discovered from its investigations that the Respondent has registered around 2,685 domain names and that it has been named as a respondent in Tetra Laval Holdings & Finance S.A v. Yang Yi, WIPO Case No. D2014-1963 involving the <tetrapak.xyz> domain name.
On September 16, 2014, the Complainant sent a cease and desist letter by registered postal mail, fax and by email to the Respondent, requesting that the Respondent transfer the disputed domain name to the Complainant. The Complainant did not receive any reply despite several reminders sent by the Complainant.
5. Parties' Contentions
(i) The disputed domain name is confusingly similar to the Complainant's trade mark AUCHAN. The disputed domain name reproduces the Complainant's trade mark in its entirety. The trade mark AUCHAN is one which previous UDRP panels have considered to be well known. The extension ".xyz" is not to be taken into consideration when examining the identity or similarity between the Complainant's trade mark and the disputed domain name as it is well established that the generic Top-Level domain (gTLD) is insufficient to avoid a finding of confusing similarity.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. This is demonstrated by the following facts: the Respondent is not commonly known by the name "Auchan"; he is not in any way affiliated with the Complainant; he is not authorized or licensed to use the AUCHAN trade mark, or to seek registration of any domain name incorporating the said mark; the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; the Respondent has no prior rights or legitimate interests in the disputed domain name as the registration of the AUCHAN trade mark long preceded the registration of the disputed domain name. Further, the disputed domain name is so similar to the Complainant's well-known AUCHAN trade mark that the Respondent cannot have been intending to develop a legitimate activity through the disputed domain name. If the Respondent had a right or legitimate interest in connection with the disputed domain name, he would have vigorously defended his rights by quickly replying to the Complainant's cease and desist letter. Reverse WhoIs searches revealed that the Respondent has registered domain names reproducing other well-known trade marks such as those involving the MAYBELLINE, CARREFOUR, AREVA, MICHELIN and NOVARTIS trade marks. The Respondent therefore seems to have engaged in a cybersquatting pattern of conduct.
(iii) The disputed domain name was registered and is being used in bad faith.
It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name since AUCHAN is a well-known trade mark even in China, the home country of the Respondent. In light of the reputation of the Complainant's AUCHAN trade mark, the Respondent's reproduction of the trade mark in its entirety in the disputed domain name shows that the Respondent was aware of the existence of the Complainant's trade mark. Moreover, supposing that the Respondent was not aware of the possibility of searching trade marks online before registering a domain name, a simple search via Google or any other search engine using the keyword "auchan" would have shown up results which relate to the Complainant and its products. Further, the Respondent neither tried to defend his rights or justify the registration of the disputed domain name in response to the Complainant's cease and desist letter. Additionally, from the Respondent's pattern of conduct in registering other domain names incorporating famous trade marks, it can be assumed that he had perfect knowledge of the Complainant's trade marks at the time of registration.
The Respondent does not use the disputed domain name at present as it is currently inactive. Nevertheless, this state of inactivity does not mean that the disputed domain name is used in good faith. Passive holding of a domain name does not preclude a finding of bad faith.
The Respondent sent two responses by email to the Center, in the Chinese language as well as in the English language. The portion of the Responses in English were claimed by the Respondent to have been translated using the Baidu online translation facility. The second Response was largely a repetition of the first response but incorporated an additional statement relating to how the Respondent derived the disputed domain name.
The Respondent claims he does not know the English language. He states that his registration of the disputed domain name was without bad intention. His business on the Internet is part of his work and his registration of several hundred domain names is not significant when considering that the number of registrations of ".xyz" domain names has already reached 1.5 million. The Respondent argues that trade marks and domain names are not the same type of intellectual property and are unrelated. He has not used the disputed domain name and thus there is no indication of a relationship with the Complainant and its trade marks or brand names. Domain names, trade names and trade marks can co-exist across different countries and anyone can be free to use a combination of letters or characters in domain name registrations. He claims that the disputed domain name was derived from words which mean "Love and Zen" ("ai yu chan" in Hanyupinyin, which is the phonetic equivalent for these words in Chinese), and that "ai yu chan" was combined to form "auchan". The Respondent submits that it had been more than nine months since the registration of ".xyz" domain names became available and the Complainant had ample time to register the disputed domain name <auchan.xyz>, and questions why it did not do so. He points out that whoever registers first, gets the domain name.
6. Discussion and Findings
A. Language of the Proceeding
The Complaint was filed in English but the language of the registration agreement is Chinese.
Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel".
Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see 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 Complainant requested that English be the language of the proceeding for the following reasons:
(i) The Complainant is located in France and has no knowledge of Chinese. To proceed in Chinese, the Complainant would have to retain the services of a translator which would pose a cost that will be higher than the overall cost of the administrative proceeding. This places a high financial burden on the Complainant. It would also cause undue delay.
(ii) The disputed domain name contains Latin characters which suggests that the Respondent has knowledge of languages other than Chinese.
(iii) English is the primary language for "international relations".
The Respondent requested that Chinese be the language of the proceeding.
The Panel has duly considered the circumstances of this case and the relevant policy considerations in arriving at its decision that English shall be the language of the proceeding. It notes that the disputed domain name and the other domain names cited by the Complainant incorporating well-known brands comprise Latin characters. This shows a familiarity with brands that are not of Chinese origin and a level of comfort with the English language. The Respondent has been given a fair opportunity to present its case and has responded by way of its two mentioned emails. The Panel has read the Chinese text of what was submitted by the Respondent. It is quite evident from the Respondent's response that he understands the nature of the claims being asserted by the Complainant and has chosen to state his position on the matter. The Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.
B. Identical or Confusingly Similar
The Complainant has rights to the trade mark AUCHAN and this trade mark in its exact form has been incorporated in the disputed domain name. The Panel is also persuaded that the AUCHAN mark is a well-known mark in China. (See Groupe Auchan v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No. D2009-1746; Groupe Auchan v. c/o whoisproxy.com. Ltd. / Domain Admin, WIPO Case No. D2014-1156; Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840.)
The Panel therefore concludes that the requirement of paragraph 4(a)(i) of the Policy has been satisfied in this case.
C. Rights or Legitimate Interests
The Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has provided a response but the Panel is not persuaded thereby that the Respondent has rights or legitimate interests in respect of the disputed domain name. There is nothing inherently illegitimate with the business of domaining and the Respondent is indeed correct that domain name registrations essentially operate on a first-come, first-served basis. However, the fact that there are checks put in place by ICANN to prevent abuses, for instance, with sunrise provisions and the Trademark Clearing House facility, shows that there are other policy considerations which come into play, and these are meant to prevent abuses by cybersquatters and the hijacking of trade marks in domain names.
The disputed domain name does not involve a generic term or one which is not a trade mark but rather, one which is well-known. The Panel is not persuaded by the Respondent's explanation of how he derived the name "auchan", in light of a number of factors, namely (i) the Respondent's pattern of registering domain names incorporating well-known marks; (ii) his failure to respond to the Complainant's cease and desist letters; and (iii) his failure to deny having ever heard of or come across the Complainant or its AUCHAN trade mark. The Policy is intended to deal with trade marks which have been misappropriated in domain names by cybersquatters which exploit the first-come, first-served nature of the domain name registration system to register the names of, inter alia, trade marks with which they have no relationship or connection. The Respondent's statement that there is no relationship between trade marks and domain names is therefore flawed and not a basis which supports his registration of the disputed domain name. Further, there is no obligation on a trademark proprietor to register its trade mark in a domain name. The Respondent's argument that the Complainant had ample time and should have registered the disputed domain name is therefore also flawed.
The Policy provides at paragraph 4(c) a sample of circumstances which the Respondent could show to demonstrate his rights or legitimate interests in respect of the disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" .
None of the above circumstances have been shown by the Respondent to exist in this case, and the Respondent has not established any other basis for a right or legitimate interest in the disputed domain name.
The Panel is therefore persuaded that the requirement of paragraph 4(a)(ii) of the Policy has been satisfied in this case.
D. Registered and Used in Bad Faith
The Respondent has admitted to holding several hundred domain names. The Complainant has found evidence of the Respondent being associated with 2,685 domain names including several which comprise the names of well-known trade marks. The Panel agrees that the AUCHAN mark is a well-known mark and in the circumstances of this case, believes that the Respondent must have been aware of the Complainant and of its trade mark. Previous UDRP panels have made a finding of bad faith where the complainant's mark is well known (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; SembCorp Industries Limited v. Hu Xuan Xin, WIPO Case No. D2001-1092; Nike Inc. v. B.B. de Boer, WIPO Case No. D2000-1397). The Panel agrees that the passive holding of the disputed domain name does not negate the Panel's finding of bad faith registration and use. (See the consensus view of previous UDRP panelists expressed in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
In the circumstances, the Panel is persuaded that the requirement of paragraph 4(a)(iii) of the Policy has been satisfied in this case.
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 <auchan.xyz> be transferred to the Complainant.
Date: January 18, 2015