WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited
Case No. D2014-1935
1. The Parties
The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & Associés, France.
The Respondent is Bui Tan Dat of Ho Chi Minh, Viet Nam / Domain ID Shield Service Co., Limited of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <auchanvietnam.com> is registered with OnlineNIC, Inc. (d/b/a China-Channel.com) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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 November 4, 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 November 6, 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 November 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2014. An email communication was received from the Respondent on November 11, 2014 by the Center. In response to the Respondent's email communication, the Complainant filed an additional submission on November 17, 2014. No formal Response was received from the Respondent by the Response due date.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 18, 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
The following summary sets out the uncontested factual submissions made by the Complainant:
The Complainant was founded in 1961 in Northern France and is an international retail group and multinational corporation with its core business in hypermarkets, supermarkets, real estate, banking and e-commerce.
The Complainant and its affiliated companies are present in 16 countries across Europe and Asia with amongst others, 839 fully-consolidated hypermarkets, 818 fully consolidated supermarkets, 362 shopping-centres, and 15.2 million customers for its E-commerce, E-Drive and other activities. As at June 30, 2014, it has approximately 302,500 employees and revenue (inclusive of taxes) of more than EUR 60 billion.
In July 2013, the Complainant announced its plans to invest USD 500 million to expand its operations in Viet Nam over the next 10 years. This news was amongst others, first published on the website of the Ministry of Planning and Investment in Viet Nam and thereafter at various local websites such as "www.thanhniennews.com" on July 4, 2013, "www.vietnamsupplychain.com" on July 25, 2013, "www.retailanalysis.igd.com" on June 11, 2014, and "www.freshplaza.com" on June 17, 2014.
The Complainant has registered the AUCHAN trademark internationally. In Viet Nam, the AUCHAN trademark is registered locally under the registration number 21782 for classes 3, 9, 11, 25, 29, 32 and 42 since August 8, 1996.
The Complainant operates numerous websites whose domain names incorporate the mark AUCHAN, such as <auchan.com> registered on April 1, 1996, <auchan.com.vn> registered on November 3, 2008 and <auchan.vn> registered on August 21, 2008.
The disputed domain name was registered on August 11, 2014.
5. Parties' Contentions
The Complainant asserts that AUCHAN is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant's AUCHAN trademark for the following reasons:
(a) the disputed domain name comprises the Complainant's AUCHAN trademark as its dominant feature.
(b) the addition of the generic Top-Level Domain ("gTLD") "com" is inconsequential when determining similarities between domain names and trademarks.
(c) the adjunction of the geographical term "vietnam" does not detract from the overall impression formed by the public that the disputed domain name is owned by or related to the Complainant. In fact, the adjunction is likely to cause Internet users to believe that they have arrived at a website related to the Complainant for its operations in Viet Nam.
The Complainant further contends that the Respondent does not have any rights or legitimate interest to the disputed domain name because:
(a) the Respondent has not adduced any evidence to indicate the Respondent's rights to the disputed domain name.
(b) the Respondent cannot be using AUCHAN as a descriptive word as AUCHAN has no meaning in the Vietnamese language and is also not a transliteration of a Vietnamese term.
(c) the Respondent has not responded to any cease-and-desist letter issued by the Complainant.
(d) the Respondent is not in any way related to the Complainant's business, is not one of its agents and does not carry out any activity or has any business with the Complainant. The Complainant has not licensed or authorised the Respondent in any way including to register or to use the disputed domain name.
(e) the Respondent must have been aware of the Complainant's rights to the AUCHAN trademark in view of the similarity of the disputed domain name to the AUCHAN trademark.
(f) the disputed domain name is inactive and is not used in connection with a bona fide offering of goods or services.
(g) the Respondent has no intention of actively using the disputed domain name as the disputed domain name is listed for sale at Sedo.com, LLC, a domain marketplace, for the price of USD 2,500.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith and relies on the following:
(a) the Complainant has not found any evidence to suggest that the Respondent has any rights or legitimate interests to the AUCHAN trademark including any license or authorization from the Complainant.
(b) it is inconceivable that the Respondent is not aware of the Complainant and its AUCHAN trademark given the trademark's worldwide reputation, including in Viet Nam, the home country of the Respondent. If indeed the Respondent is not aware of the AUCHAN trademark, a simple online search of the keyword "Auchan" via Google or any other search engine would have revealed to the Respondent the existence of the Complainant and its AUCHAN trademark.
(c) the disputed domain name was registered (on August 11, 2014) after the Complainant announced its business plans to expand to Viet Nam. It is likely that such registration by the Respondent was a calculated move to prevent the Complainant from reflecting its trademark in the disputed domain name.
(d) the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website.
(e) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but is instead seeking to ride and usurp the Complainant's reputation and goodwill in the AUCHAN trademark. The disputed domain name will cause confusion and divert Internet users away from the Complainant's official websites.
(f) the disputed domain name is listed for sale at Sedo.com, LLC, a domain marketplace, at a price in excess of the out of pocket expenses of the Respondent in registering the disputed domain name.
The Respondent did not formally respond to the Complainant's contentions beyond an email containing the following response:
Identical or Confusingly Similar
The Respondent submits that the disputed domain name is coined from a combination of the Vietnamese words "Âu Chán", "Âu Lo" and "Chán Nản" which means "anxiety" and "tedious" and is not related to the Complainant's AUCHAN trademark.
Rights or Legitimate Interests
The Respondent submits that the disputed domain name was registered for an online community website and that it has rights to the disputed domain name as the registrant of the disputed domain name.
Registered and Used in Bad Faith
The Respondent submits that it is not responsible for the sale listing of the disputed domain name on Sedo.com, LLC. The listing was made by the previous registrant of the disputed domain name.1
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the AUCHAN trademark. The AUCHAN trademark has been registered by the Complainant in numerous jurisdictions and has been used extensively on a worldwide basis. This has also been confirmed by several UDRP decisions (seeGroupe AUCHAN v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No. D2009-1746, and Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840).
The disputed domain name comprises of the Complainant's AUCHAN trademark in its entirety with adjunction of the geographical term "Vietnam". The Panel has considered the Respondent's explanation that the disputed domain name is a combination of the Vietnamese words "Âu Chán", "Âu Lo" and "Chán Nản" for a community website.
Notwithstanding this explanation, for the purposes of determining the first limb, the Panel finds that the disputed domain name is confusingly similar to the Complainant's AUCHAN trademark as the geographical adjunction does not detract from the overall impression formed by the use of the main element of the disputed domain name, namely the AUCHAN trademark. Moreover, a comparison between the AUCHAN trademark and the disputed domain name would lead one to conclude that the disputed domain name is being used to signify localized operations of the AUCHAN trademark owner.
Accordingly, the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant's assertions have not been properly rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name beyond the Respondent's contention that its rights or legitimate interests is derived from its position as the registrant of the disputed domain name and that is was registered as an online community website. No evidence was put forward by the Respondent to substantiate this contention.
The Panel finds that the Complainant has adduced sufficient evidence that the disputed domain name is being used by the Respondent solely for commercial gain as:
(i) there is no evidence that the Respondent is commonly known by the disputed domain name; and
(ii) there is no evidence that the Respondent has any connection with any trademark corresponding to the disputed domain name.
Whilst the Respondent contends that the disputed domain name is being used for an online community website, the evidence provided by the Complainant indicates otherwise. There is nothing to show that the disputed domain name is being used for the benefit of a community, for commercial gain or otherwise. The Respondent failed to explain the objectives and target group of this purported community in order to provide any form of legitimacy to this community or to vindicate its rights or legitimate interests to the disputed domain name.
In the circumstances, the Panel cannot find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name or to the disputed domain name itself. Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant's rights to the AUCHAN trademark when it registered the disputed domain name.
The factors that were taken into account to arrive at this conclusion include:
(a) the date of registration of the disputed domain name which was on August 11, 2014. This is long after the Complainant had registered the AUCHAN trademark in Viet Nam in 1996, the Complainant's announcement in July 2013 of its intention to invest and expand operations to Viet Nam and announcement in June 2014 on the signing of the joint venture deal to carry out its intentions to conduct business in Viet Nam.
(b) the notoriety of the trademark through widespread and long use of the AUCHAN trademark by the Complainant at an international level well before the disputed domain name was registered by the Respondent.
(c) the disputed domain name is inactive, not connected to any bona fide offering of goods or services, and is listed for sale at Sedo.com, LLC.
The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and is using the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent's documented out-of-pocket costs and/or to disrupt the Complainant's business.
As such, the Panel finds that bad faith has been demonstrated under the Policy.
Accordingly, the third element of the Policy is met.
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 <auchanvietnam.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: January 4, 2015
1 The Complainant filed a supplemental filing on November 17, 2014 in response to the Respondent's contentions. However, the Panel has decided not to consider the Complainant's supplemental filing.