WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Retail International SA v. Fabrice Bouras, Atac Simply Market

Case No. D2017-1037

1. The Parties

The Complainant is Auchan Retail International SA of Croix, France, represented by Dreyfus & associés, France.

The Respondent is Fabrice Bouras of Paris, France and “Atac Simply Market” of Croix, France.

2. The Domain Names and Registrars

The disputed domain name <atac-simplymarket.com> is registered with GoDaddy.com, LLC.

The disputed domain name <simplymarket-atac.com> is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2017. On May 29, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 30, 2017, GoDaddy.com, LLC transmitted by email to the Center its verification response for the disputed domain name <atac-simplymarket.com> confirming that the Respondent is listed as the registrant and providing the contact details. On May 31, 2017, 1&1 Internet SE transmitted by email to the Center its verification response for the disputed domain name <simplymarket-atac.com> confirming that the Respondent is listed as the registrant and providing the contact details and noting that the language of the registration agreement was French.

On June 12, 2017, the Center sent a communication to the Parties in English and French, inviting the Complainant to either submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or to submit the Complaint translated into French, or to submit a request for English to be the language of the administrative proceedings. The Respondent was also invited to submit comments on the language of the proceedings. On June 13, 2017, the Complainant submitted an amended Complaint with a request for English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.

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 and 4, the Center formally notified the Respondent, in English and French, of the Complaint, and the proceedings commenced on June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2017.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on July 27, 2017. 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.

The Complainant is famous all over France. On December 31, 2015, the Complainant has counted 144 hypermarkets and 445 convenience stores.

ATAC is a brand of predominantly food stores operating supermarkets. In 2009, the transformation of most ATAC supermarkets in France to SIMPLY MARKET began. It is also developing in Spain, Italy, Poland and the Russian Federation.

The disputed domain names <simplymarket-atac.com> and <atac-simplymarket.com> were respectively registered on September 15, 2016 and on February 28, 2017.

The domain name <simplymarket-atac.com> is not used, whereas the domain name <atac-simplymarket.com> was used in relation to email addresses to send emails to the Complainant’s suppliers to order and buy food products in the name of the Complainant.

The Complainant owns SIMPLY MARKET and ATAC trademarks:

(i) French trademark SIMPLY MARKET No 3927165, registered on June 14, 2012;

(ii) European Union trade mark SIMPLY MARKET No 8621583, registered on July 5, 2010;

(iii) French trademark ATAC No 4171258, registered on April 7, 2015;

(iv) French trademark ATAC No 95599665, registered on December 4, 1995.

The Complainant operates the domain name <simplymarket.fr> registered on January 27, 2006 and <supermarches-atac.fr> registered on July 2, 2015.

The Complainant sent a cease-and-desist letter to the respective technical service providers. Only the disputed domain name <simplymarket-atac.com> was then blocked.

The fraudulent use of the email addresses associated with the disputed domain name <atac-simplymarket.com> started soon after.

5. Parties’ Contentions

A. Complainant

The disputed domain names are composed with the respective SIMPLY MARKET and ATAC trademarks and are confusingly similar to these trademarks which are widely known in France.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names <simplymarket-atac.com> and <atac-simplymarket.com>.

The Respondent is not related in any way to the Complainant and is not known by the disputed domain names. No license or authorization has been granted to the Respondent to make any use or apply for registration of the disputed domain names.

The Complainant states that the disputed domain names have been registered and used in bad faith.

The fact that the disputed domain names are composed with the SIMPLY MARKET and ATAC trademarks shows that there is no way in which these domain names would have been registered and then used in good faith.

Regarding the disputed domain name <simplymarket-atac.com> the Complainant states that non-use should be considered as bad faith use because of the widely-known character of the SIMPLY MARKET and ATAC trademarks.

The Complainant relies on prior UDRP decisions that according to which “passive holding does not preclude a finding of bad faith”.

Regarding the disputed domain name <atac-simplymarket.com> the Complainant states that this domain name was used fraudulently, as email addresses, as here above explained. Using a fake name and address to register a domain name in order to hide one’s personal identity is another proof of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Consolidation

The Complainant relies on paragraph 10(e) of the Rules on the General Powers of the Panel to ask the Panel to consolidate the domain name disputes on the respective disputed domain names <simplymarket-atac.com> and <atac-simplymarket.com>.

Paragraph 10(e) of the Rules provides that:

“(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”

The Complainant explains that the goal of this provision is to avoid unnecessary duplication of time, effort and expenses.

The disputed domain name <atac-simplymarket.com> is registered mentioning the name of the Complainant and one of its addresses. The Complainant states, therefore, that the registrant cannot be identified.

The only available data on which it can be relied is the email address of the registrant.

The registrant of the disputed domain name <simplymarket-atac.com> has the same email address. “gmail” addresses are provided on an individual basis, which means that only one person can be liable for the use of the same email address.

The Panel notes the commonalities between the disputed domain names, in particular that they are simple variations of one another, reversing the elements “atac” and “simplymarket”. This, together with the fact that the registrant email for the disputed domain names is the same, leads the Panel to conclude that the disputed domain names are in fact subject to common control. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.11.2.

Therefore the consolidation is equitable to all Parties.

Consolidating the Respondent is procedurally efficient from the perspective of judicial economy.

Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the Respondents under paragraph 10(e) of the Rules is consistent with the Policy and Rules, and is appropriate in light of the principles articulated in prior UDRP decisions.

6.2. Language of the Proceeding

In this case, according to the information provided by the concerned Registrar, the Registration Agreement for the disputed domain name <simplymarket-atac.com> is in French whereas the Registration Agreement of the disputed domain name <atac-simplymarket.com> is in English.

According to paragraph 11(a) of the Rules, “unless 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.”

Pursuant to paragraph 11(a) of the Rules, the Panel has the authority to determine that a proceeding may be held in a language that differs from the language of the disputed domain name’s registration agreement.

The Complainant requested that English be the language of the proceeding. for the following reasons:

- The Registration Agreement of the disputed domain name <atac-simplymarket.com> is in English;

- The Respondent sent fraudulent emails in English; and

- The postal address of the registrant of the disputed domain name <atac-simplymarket.com> is fake so it is impossible to locate its country of residence.

The Respondent did not react on the issue of the language of the proceeding. The Panel notes that the Respondent has been notified of the proceeding in English and French and has not responded to the Complainant or otherwise commented on the language of the proceeding. Translation of the Complaint into French would only delay the proceeding and increase the Complainant’s costs.

Therefore, in accordance with paragraph 11(a) of the Rules, the Panel decides that English shall be the language of the proceeding.

A. Identical or Confusingly Similar

The Complainant has clearly established its registered rights in the ATAC and SIMPLY MARKET trademarks.

The disputed domain names <simplymarket-atac.com> and <atac-simplymarket.com> are composed of the ATAC and SIMPLY MATKET trademarks.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. The condition of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain names for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent did not respond to the Complaint. Consequently it did not provide any evidence and there appear to be no circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain names.

The Respondent has not been licensed or authorized to use the SIMPLY MARKET and/or ATAC trademarks or to register the disputed domain names.

The Respondent did not make a legitimate, noncommercial or fair use of the disputed domain names, nor a bona fide offering of goods and services. On the contrary, the Respondent used false data to register the disputed domain name <atac-simplymarket.com> and used it fraudulently.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant has demonstrated that the SIMPLY MARKET and ATAC trademark are widely known.

The Respondent, who is apparently domiciled in France, could not ignore the Complainant’s rights in the SIMPLY MARKET and ATAC trademarks when it registered the disputed domain names.

The Panel finds that the disputed domain names were registered in bad faith with the Complainant in mind, to make a commercial gain and disrupt the Complainant’s activity.

The Respondent is not using the disputed domain names to resolve to a website.

It registered the disputed domain name <atac-simplymarket.com> under the name of the Complainant.

It sent emails using the disputed domain name <atac-simplymarket.com> and pretending to be working for the Complainant to obtain goods from the Complainant’s suppliers.

This is evidence that, when registering and using the disputed domain name <atac-simplymarket.com>, the Respondent aimed at creating a likelihood of confusion with the Complainant’s trademarks in order to mislead Internet users, and especially the Complainant’s suppliers, for commercial gain or for any purpose that cannot be legitimate, given the widely-known character of the SIMPLY MARKET and ATAC trademarks.

Concerning the disputed domain name <simplymarket-atac.com>, it has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is used in bad faith further to the requirement of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the criteria set out in TelstraCorporation Limited v. Nuclear Marshmallows, supra on passive holding are met:

(i) the Complainant’s trademark has a strong reputation and is widely known;

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names;

(iii) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and

(iv) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.

In light of these particular circumstances, the Panel is of the opinion that the Respondent’s passive holding of the disputed domain name <simplymarket-atac.com> satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.

Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

7. Decision

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 names, <atac-simplymarket.com> and <simplymarket-atac.com> be transferred to the Complainant.

Marie-Emmanuelle HAAS
Sole Panelist
Date: August 10, 2017