WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan and Immochan v. Ayers King
Case No. D2014-1599
1. The Parties
The Complainants are Groupe Auchan and Immochan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Ayers King of Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <aushoppingmall.com> ("the Domain Name") is registered with Guangzhou Ehost Tech. Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 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 September 26, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 26, 2014, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 the Respondent of the Complaint, and the proceedings commenced on October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on November 7, 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.
4. Factual Background
Immochan is a subsidiary of Groupe Auchan (separately and together referred to as "the Complainant"). Groupe Auchan is one of the world's leading group in the food retail industry. It began in France in 1967 and now operates in 16 countries in Europe and Asia including China. It has a workforce of more than 300,000 and generated a revenue of EUR 62.1 billion in 2013. Its subsidiary, Immochan has 35 years of experience in designing and managing shopping malls and is very well known in 12 countries globally. Its latest innovation is "www.aushopping.com", the first "one-stop shop" website. It has a price comparison tool which acts as a virtual shopping gallery which enables consumers to purchase the right product at the best price from 2 million listed items and hundreds of different brands.
The Complainant owns numerous trade mark registrations for AUSHOPPING around the world including China. The earliest International registration designating China for AUSHOPPING dates back to October 28, 2008. The Complainant also owns and operates the following domain names:
<aushopping.com> registered on May 9, 2000,
<aushopping.fr> registered on Feb 12, 2008 and
<aushopping.cn> registered on August 14, 2008.
The Domain Name was registered by the Respondent on March 20, 2014 through a privacy registration service. When the Complainant first became aware of the Domain Name, the website connected to the Domain Name ("the Website") was inactive. After the Complainant's representatives sent it a cease and desist letter on May 30, 2014 and a reminder on June 6, 2014, it was discovered on July 3, 2014 that the WhoIs details revealed the Respondent's details and that the Website had become active and was a Chinese online store selling cosmetic products. As of the date of the Complaint the Website was again inactive. The contact details of the Respondent on the WhoIs is incomplete and does not appear to be accurate.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the AUSHOPPING trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in section IV of the Complaint and in an email to the Center on September 26, 2014 that the language of the proceeding should be English. The Complainant contends amongst other things that:
1) The Complainant is located in France and has no knowledge of Chinese.
2) The costs of translation would be disproportional and unduly burdensome on the Complainant, which is something that has been recognized by UDRP panels in such circumstances.
3) The Domain Name is in Latin characters and the word "mall" within the Domain Name is an English word.
4) English is the primary language in international relations and is one of the working languages of the Center.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the mark AUSHOPPING through use and registration that predates the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name integrates the Complainant's registered trade mark AUSHOPPING with the descriptive word "mall" and the generic Top-Level Domain ("gTLD") ".com". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the descriptive term "mall" does not negate the confusing similarity encouraged by the Respondent's complete integration of the AUSHOPPING trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the AUSHOPPING trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the evidentiary burden shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that it has not authorised the Respondent to use the AUSHOPPING trade mark in the Domain Name or any other manner. The Respondent does not own any trade mark encompassing the Domain Name neither is he commonly known by the Domain Name. The offering of any goods or services in connection with the Domain Name therefore cannot be a bona fide offering. Further, there is no evidence of legitimate noncommercial or fair use.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the Domain Name has been both registered and used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Complainant's AUSHOPPING marks when it registered the Domain Name. The Domain Name incorporates the Complainant's trade mark in its entirety. "Aushopping" is a coined expression taking the first two letters of the Complainant's name together with the word "shopping". The Panel finds it unlikely that the Respondent created this name independently. In the Panel's view, the above is evidence that the registration of the Domain Name was in bad faith.
In relation to ascertaining whether the Domain Name is being used in bad faith, the fact that the Domain Name was not always connected to an active website does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. Panels have to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In any event, the Website was for a period of time an active website offering online shopping services very similar to that of the Complainant. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. Further, the Respondent failed to respond to the cease and desist letter from the Complainant's representatives. Such behavior is inconsistent with what one would expect from a good faith registrant accused of cybersquatting, (See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
The Respondent used a privacy protect service as well as failed to provide a proper contact address when he registered the Domain Name. The Respondent also failed to file a response. All these factors are further indicators of bad faith.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <aushoppingmall.com> be transferred to the Complainant.
Date: November 21, 2014