WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. C/o whoisproxy.com Ltd. / Domain Admin
Case No. D2014-1156
1. The Parties
The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is C/o whoisproxy.com Ltd. of Auckland, New Zealand / Domain Admin of Walnut, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mailauchan.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2014. On July 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 11, 2014.
The Center verified that the Complaint together with the amended 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 July 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 4, 2014.
The Center appointed Simon Minahan as the sole panelist in this matter on August 8, 2014. 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.
On August 26, 2014 the Center advised the parties that the Panel's decision would be delivered on August 27, 2014, having been delayed because of technical difficulties experienced by the Panel. The Panel thanks the parties for their patience.
4. Factual Background
The Panel finds the following general factual matters established for the purposes of this decision:
The Complainant is a group in the food retail industry which commenced trading in 1961 in France and now operates in 15 countries in Europe as well as Asia. Its core businesses are operating hypermarkets, supermarkets, real estate trading, banking and e-commerce. It has a workforce of 302,500 employees performing more than 150 different jobs and generated more than Euro 60 billion in revenue including taxes for 2013.
The Complainant uses the word "auchan" as a trade mark and holds numerous registrations in Europe and around the world for that word or incorporating it including, for example International trademark AUCHAN n°952847, dated of August 10, 2007 and covering services in classes 9, 35, 38 and International trademark AUCHAN n°625533 dated of October 19, 1994 covering services and products in classes 1 to 42.
The Complainant also conducts its business on-line and holds and uses numerous domain names incorporating the term "auchan" in this regard including, for example, <groupe-auchan.com>, <auchan.com.cn> and <auchan.fr>.
The registration of the various AUCHAN trademarks preceded the registration of the disputed domain name in November 2013.
The Complainant's AUCHAN trade mark has been found to be well known by previous UDRP panels:
- Groupe AUCHAN v.beijingyidutiandikejifazhanyouxiangongs, WIPO Case No. D2009-1746;
- Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840;
- Groupe Auchan v. Arab4Des Co, Karim Mohamed, WIPO Case No. D2012-0978; and
- Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188.
The Respondent appears to be an entity which offers a commercial, identity-masking service for domain name registrants. It has not responded to the Complainant's requests to reveal the identity of the registrant nor has there been any response to the Complainant's demands that the use of the disputed domain name cease and that it be transferred to the Complainant.
The Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use its trademark, or to seek registration of any domain name incorporating the said trademark.
The website at the disputed domain name presently resolves to a "parking page" displaying commercial links, some of which are related to retail services of Complainant and its competitors and garners pay-per-click revenues.
5. Parties' Contentions
The Complainant contends that:
1. the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark, citing:
Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and
RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059.
2. the disputed domain name comprises entirely the trademark and company name "auchan" with the generic and descriptive term "mail" pre-fixed which leads Internet users to believe that this domain name will lead them to a website commercializing numerous products of Complainant or that the domain name is dedicated to Complainant's mail server.
3. the addition of generic terms to the well-known trademark does not prevent the risk of confusion between a Complainant's trademark and the disputed domain name, citing: Compagnie Générale des Etablissements Michelin and Michelin Recherche etTechnique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047.
4. the presence of a generic Top-Level Domain (gTLD) such as ".com" is irrelevant to considerations of the similarity of a domain name to a trade mark as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity citing, e.g.: L'Oréal v Tina Smith, WIPO Case No. D2013-0820.
5. it is practically inconceivable that the Respondent could have registered the disputed domain name in ignorance of the Complainant's trade marks and domain names.
6. in the absence of any license or permission from the Complainant to use its widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed by the Respondent, citing: Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com DomainPrivacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.
7. the lack of explanation or demonstration by the Respondent of legitimate interest in the or the disputed domain name and the actual circumstances of the use being made of the disputed domain name.
8. the registration of a domain name incorporating a well-known trade mark such as AUCHAN and the manner of its "parked" use is evidence of bad faith registration and use: LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; and Caixa D´Estalvis IPensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's well known AUCHAN trade mark. In doing so it accepts Complainant's contentions 1, 2, 3 and 4 listed above under section 5 (which were not rebutted by the Respondent) and respectfully adopts and follows the reasoning in the cited URDP panel decisions.
B. Rights or Legitimate Interests
In circumstances where, as here, the Complainant refutes any licence to use its trade marks and there is an absence of any explanation or claim of any rights or legitimate interests by the Respondent and the apparent use is plainly commercial, the Panel is satisfied to find that the Respondent has no rights or legitimate interests in the disputed domain name. In doing so, this Panel accepts the Complainant's contentions numbered 5, 6 and 7 listed above (which were not rebutted by the Respondent) and the again adopts the reasoning in the cited UDRP panel decisions.
C. Registered and Used in Bad Faith
The Panel accepts that the evidence establishes that the Respondent could not and did not register the disputed domain name in ignorance of the Complainant's AUCHAN trade mark and infers that it was registered in bad faith the Panel finds that its subsequent use is also in bad faith as the website at the disputed domain name resolves to a "parking page" displaying commercial links. The Panel finds that the disputed domain name was registered and is being used in bad faith. In doing so the Panel accepts the Complainant's contentions numbered 5 and 8 listed above (which were not rebutted by the Respondent) and relies on the reasoning in the cited UDRP decisions.
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 <mailauchan.com> be transferred to the Complainant.
Date: August 27, 2014