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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Holding SA v. WhoisGuard Protected / WhoisGuard, Inc. / Daniel Morgan

Case No. D2021-0797

1. The Parties

The Complainant is Auchan Holding SA, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected / WhoisGuard, Inc., Panama / Daniel Morgan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <auchan.surf> (“the Domain Name”) is registered with NameCheap, Inc., (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 2021, the Registrar transmitted by email to the Center its verification response March 17, 2021 disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2021 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 March 29, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2021.

The Center appointed Dawn Osborne as the sole panelist in this matter on May 13, 2021. 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 the owner of the mark AUCHAN registered, inter alia, as International Registration No. 284616 for retail services since 1964.

The Domain Name registered in 2020 has been used for a site purporting to be an official site of the Complainant using the Complainant’s mark, a similar red and blue trade dress to the Complainant’s official web site and its bird logo to falsely offer a gift card for the Complainant’s store in exchange for personal information for suspected phishing purposes.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the mark AUCHAN registered, inter alia, as International Registration no 284616 for retail services since 1964.

The Domain Name registered in 2020 is identical to the Complainant’s mark adding only the generic Top-Level Domain (“gTLD”) “.surf”.

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it, and is not authorised by the Complainant.

The Domain Name has been used for a site purporting to be an official site of the Complainant using the Complainant’s mark, a similar red and blue trade dress to the Complainant’s official web site and its bird logo to falsely offer a gift card for the Complainant’s web site in exchange for personal information for suspected phishing purposes which cannot be a bona fide offering of goods or services or legitimate noncommercial or fair use. Such fraudulent and deceptive conduct is registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name consists of the Complainant’s AUCHAN mark (which is registered as an international registration for retail services services since 1964) and the gTLD “.surf”.

The gTLD “.surf” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark. A gTLD is a necessary part of a domain name and “.surf” does not form part of any trade mark involved in this proceeding.

Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.

As such, the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has not authorised the use of its mark by the Respondent.

The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.

Using the Domain Name containing the Complainant’s AUCHAN mark with a reputation for retail services for a site falsely purporting to be an official site of the Complainant using the Complainant’s mark, its bird logo and similar trade dress to offer a bogus gift card for the Complainant’s store in exchange for personal information for suspected phishing purposes is deceptive and confusing and is, therefore, not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.

As such, the Panel finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

The evidence outlined above that the Respondent is falsely suggesting he is connected and/or authorised by the Complainant in order to gather personal information for phishing purposes is evidence that the Responded has acted in opposition to the Complainant’s commercial interests and has unduly disrupted the business of the Complainant.

The use of the Complainant’s mark, bird logo and similar trade dress to that of the Complainant on the site attached to the Domain Name demonstrates that the Respondent had actual knowledge of the Complainant its rights, business and services. In the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is confusing and deceptive in that visitors to the Respondent’s site might reasonably believe it is connected to or approved by the Complainant when there is no connection due to deceptive use of the Complainant’s mark, bird logo and similar trade dress. Accordingly, the Panel holds additionally that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that web site or services offered on it.

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).

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 Domain Name, <auchan.surf>, be transferred to the Complainant.

Dawn Osborne
Sole Panelist
Date: May 17, 2021

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