WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Auchan Holding v. Domains By Proxy, LLC / NAME REDACTED
Case No. D2019-2045
1. The Parties
The Complainant is Auchan Holding, France, represented by Dreyfus & associés, France.
The Respondent is Domains By Proxy, LLC / NAME REDACTED1.
2. The Domain Name and Registrar
The disputed domain name <achats-auchan.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2019, 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 August 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 26, 2019, the Complainant requested the suspension of the proceedings. The proceedings were suspended on August 27, 2019. On August 29, 2019, the Complainant requested the reinstitution of the proceedings and filed an amended Complaint.
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 of the Complaint, and the proceedings commenced on August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on September 24, 2019. 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 historic French retailer, with over 350.000 employees and 4.000 points of sale. It operates supermarkets in 17 countries, in Europe, Asia and Africa, and is ranked 11th largest food retailing group in the world.
The Complainant claims the following trade mark rights as a basis for its case:
- International trade mark AUCHAN (word) No. 952847 of August 10, 2007, in classes 9, 35 and 38;
- International trade mark AUCHAN (and logo) No. 1333050 of September 1, 2016 in class35;
- International trade mark AUCHAN (word) No. 625533 of October 19, 1994, in classes 1 to 42.
The Complainant also owns domain names containing the element AUCHAN, such as <auchan.com> and <auchan.fr>.
The disputed domain name <achats-auchan.com> was registered on May 7, 2019 through a privacy service, identified as “Domains By Proxy, LLC”. Once the Complaint was filed, the Registrar disclosed the identity of the Respondent, an individual with an alleged address at Villeneuve-d'Ascq, France.
This individual is actually a former purchase manager of the Complainant, whose identity was usurpated.
The disputed domain name resolves to an error page. It was used however to create the following email addresses: “[...]@achats-auchan.com”, and “[...]@achats-auchan.com”. These email addresses were used to send messages to potential suppliers, as follows:
“Dear Mr / Mrs
In order to widen our partnerships and, thanks to the numerous orders from our distributors and our V.I.P clients, the AUCHAN HYPERMARCHE DIRECTORATE-GENERAL wishes to open a customer account at your home.
Please send us by email your availabilities (Varieties, Stocks and Prices).
NB: Payment at 15, or 30 days net invoice date as with all of our suppliers.
Do not hesitate to contact us for any further information.
Receive our respectful and sincere greetings.
*LA DIRECTION DES ACHATS*
5. Parties’ Contentions
The Complainant’s arguments in support of its Complaint can be summarized as follows:
First, it claims that the disputed domain name <achats-auchan.com> is identical to the Complainant’s trade mark AUCHAN, as it incorporates in its entirety the trade mark AUCHAN. It adds that “the addition of the term “achats” intersected by a hyphen, is insufficient to avoid any likelihood of confusion. In fact, the term “achats” is the French term for “purchases” and thus directly refers to the Complainant’s field of activities”.
Second, it indicates that the Respondent lacks rights or legitimate interests in the disputed domain name <achats-auchan.com>. The Respondent is not affiliated with the Complainant and has not been authorized to use its trade mark AUCHAN. Besides, the phishing scheme put in place by the Respondent shows that the latter is not making a bone fide, legitimate offering of goods and services under the disputed domain name.
Third, the Complainant claims that the disputed domain name was registered and used in bad faith. It highlights that its trade mark AUCHAN is well-known worldwide, that its rights predate the registration of the disputed domain name and that a very quick search would have revealed the existence of the Complainant’s numerous trade mark rights and its strong presence online. It also indicates that, by impersonating a former employee of the Complainant to set up a phishing scheme, the Respondent has acted in bad faith: “Respondent is engaged in a phishing scheme and clearly aims at stealing valuable information to obtain fraudulent payment from Complainant’s clients through the use of an email address”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant owns several trade mark rights over the sign AUCHAN. This trade mark is fully reproduced in the disputed domain name <achats-auchan.com>, and it is perfectly perceivable because it is separated from the other word “achats” by a hyphen. The addition of the word “achats” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The disputed domain name <achats-auchan.com> is therefore confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has clearly satisfied its burden of evidence here: it has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. On the contrary, the use by the Respondent of a phishing scheme demonstrates a lack of rights or legitimate interests.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Bad faith registration and use are unquestionable here, for a number of reasons:
First, the Respondent has registered the disputed domain name <achats-auchan.com> using a false identity and a false address. It has used the name of a former employee of the Complainant, a manager of the purchase department. It has also used a false address, as it corresponds to one of the establishments of the Complainant in its home city of Villeneuve-d'Ascq.
Second, the Respondent had the Complainant’s trade mark in mind when it registered the disputed domain name. Indeed, the disputed domain name <achats-auchan.com> not only reproduces the trade mark AUCHAN; it also contains the word “achats”, which means “purchases” in French and is therefore highly likely to be perceived by third parties as referring to the purchases department of the Complainant.
Third, the Respondent has operated a phishing scheme to the detriment of the Complainant and of the companies with which it established contacts. By using misleading email addresses, to impersonate the Complainant, the Respondent lured potential providers and attracted them for its commercial gain.
Therefore, the Panel also finds that the disputed domain name <achats-auchan.com> was registered and is being used by the Respondent in bad faith.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.
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 <achats-auchan.com> be transferred to the Complainant.
Date: October 4, 2019
1 “The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.”