WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Holding SA v. WhoisGuard Protected, WhoisGuard, Inc. / Privacy service provided by Withheld for Privacy ehf / Professeur Sam Lami

Case No. D2021-0985

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 / Privacy service provided by Withheld for Privacy ehf, Iceland / Professeur Sam Lami, Belgium.

2. The Domain Name and Registrar

The disputed domain name <auchan-shop.com> 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 31, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2021, 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 April 12, 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 April 15, 2021.

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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021.

The Center appointed Adam Samuel as the sole panelist in this matter on May 26, 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 a multinational retailer group. It provides information about its products and services through its domain name <auchan.fr> which was registered on February 11, 1997. The Complainant owns a number of French, International and European Union trademarks for the name AUCHAN, including International Trademark registration number 284616, registered on March 9, 1964.

The disputed domain name was registered on May 23, 2020. On April 19, 2021, it resolved to a parking page offering a variety of food-related services some of which compete directly with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant’s name and trademark AUCHAN does not have a generic meaning. The company was named after the “Hauts Champs” neighbourhood in Roubaix where the Complainant opened its first shop in 1961. In creating the disputed domain name, the Respondent added the generic, descriptive term “shop” to the Complainant’s AUCHAN trademark. The fact that the added term is closely associated with the Complainant’s brand only underscores the confusing similarity between the disputed domain name and the Complainant’s trademark. The addition of the hyphen does nothing to distinguish the disputed domain name from the Complainant’s AUCHAN trademarks.

The Respondent is not sponsored by or affiliated with the Complainant in any way. Nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any way. The Respondent is not commonly known by the disputed domain name. The Respondent’s name does not resemble the disputed domain name.

The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites. The disputed domain name was registered significantly after the Complainant applied to register its AUCHAN trademarks. When registering the disputed domain name, the Respondent knew or should have known of the existence of Complainant’s trademarks. Searches across a number of Internet search engines for “auchan shop” returns multiple links referring to the Complainant. The addition of the hyphen and the descriptive word “shop” shows that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services. The Respondent’s use of a privacy service to hide his identity and failure to respond to the Complainant’s attempts to resolve this dispute outside this proceeding are further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark, a hyphen, the word “shop” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant’s name is a made-up one based on the pronunciation of a neighbourhood where the Complainant first opened a shop. The addition of a generic word like “shop” to a trademark with or without hyphen does not prevent the confusing similarity that exists between the disputed domain name and the Complainant’s trademark.

Section 1.8 of the WIPO Overview 3.0 says:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

This is particularly the case here where the generic word describes an important activity of the Complainant.

For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “auchan” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent does not appear to have used the disputed domain name for any purpose other than hosting a parking page. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s trademark AUCHAN is a word without any ordinary meaning. This is combined in the disputed domain name with the reference to “shop”, a major activity of the Complainant. From these two points, the Panel concludes that the Respondent knew of the Complainant’s business when it registered the disputed domain name. The Respondent appears to have done this to disrupt the Complainant’s business by attracting to his own website Internet users seeking the Complainant’s website.

For these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith: UDRP, paragraph 4(b)(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 disputed domain name, <auchan-shop.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: May 27, 2021