WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Auchan Holding SA v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted
Case No. D2021-0986
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 / Name Redacted, France.
2. The Domain Name and Registrar
The disputed domain name <auchan-hypermarche.net> 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 17, 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 William Lobelson 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
Auchan Holding SA is a global leader in food retail and operates originally in France but also on an international scale. It is ranked 11th largest food retailer and 35th largest employer in the world today.
The Complainant owns numerous AUCHAN trademark registrations across various jurisdictions, and in particular:
- International trademark AUCHAN No. 284616, registered since June 5, 1964, duly renewed, that covers goods in classes 03, 09, 11, 25, 29 and 32;
- International trademark AUCHAN No. 332854, registered since January 24, 1967, duly renewed, that covers services in classes 35 to 42;
- International trademark AUCHAN No. 625533, registered since October 19, 1994, duly renewed, that covers goods in classes 01 to 34 and services in classes 35 to 42;
- International trademark AUCHAN No. 1011777, registered since February 19, 2009, duly renewed, that covers goods in classes 01 to 34 and services in classes 35 to 45;
- French trademark AUCHAN No. 1381268, registered since November 24, 1986, duly renewed, that covers goods in classes 01 to 34 and services in classes 35 to 45;
- European Union trademark AUCHAN No. 00283101, registered since August 19, 2005, duly renewed, that covers goods in classes 01 to 34 and services in classes 35 to 42;
- European Union trademark AUCHAN No. 004510707, registered since January 19, 2007, duly renewed, that covers services in classes 35 and 38.
Auchan Holding SA also owns over 600 domain names featuring the AUCHAN trademark, and namely:
- <auchan.fr>, registered on February 11, 1997;
- <auchan-hypermarches.com>, registered on October 13, 2005;
- <auchan-hypermarche.fr>, registered on January 20, 2020.
The disputed domain name was registered on January 7, 2021 by the Respondent.
At the time when the Complaint was filed, the disputed domain name was resolving to a blank page that lacks content, but it was previously redirecting to a website featuring links to third-party websites, some of which directly competed with the Complainant’s business. The Complainant noted the presence of multiple pay-per-click links posted at the Respondent’s previous website.
The Complainant also found that the disputed domain name has been used to send phishing emails to its customers, seeking to confuse them into entering supply partnerships with the Respondent.
Furthermore, the Complainant sent numerous cease and desist letters to the Respondent (January 29, 2021; February 5, 2021; February 12, 2021) without receiving a response.
The Respondent’s details, disclosed by the Registrar pursuant to the introduction of the Complaint, reveal that he resides in France and more specifically, in the Nord department, just as the Complainant.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks and domain names formed with the word AUCHAN; that the Respondent does not have any rights or legitimate interests therein; finally, that the Respondent registered and uses the disputed domain name in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Complainant is the owner of numerous AUCHAN formative and word trademarks, all registered inter alia and used in relation with supermarket services. It also owns a number of domain names where its trademark AUCHAN is associated with French synonyms of “supermarket” such as “supermarché” or “hypermarché”.
The disputed domain name <auchan-hypermarche.net> reproduces the Complainant’s trademark AUCHAN in its entirety.
The disputed domain name contains also the term “hypermarche” (French for “supermarket”).
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the dictionary French word “hypermarche” would not prevent a finding of confusing similarity under the first element; See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The addition of the generic Top-Level Domain (“gTLD”) “.net” does not either prevent a finding of confusing similarity.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent’s defenses under UDRP, paragraph 4(c) include the following:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services;
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent 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 misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Complainant further contends that the Respondent is not known under the disputed domain name, does not own any rights in the name “AUCHAN HYPERMARCHE” and does not make any bona fide use, neither commercial nor noncommercial, of the same, being emphasized that the disputed domain name does not resolve towards an active web page with substantive content.
The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has substantiated the fact that its trademark AUCHAN, which has been registered and used in France and internationally for years, now benefits from a high level of public awareness.
Further, the disputed domain name was registered using a privacy service filed anonymously, but when the identity of the Respondent was disclosed by the Registrar, it was confirmed that this individual was based in France, and that a place of residence in the Northern part of France (where precisely the Complainant’s headquarters are located).
Besides, the Panel observes that the Respondent made the choice of associating to the trademark AUCHAN with the dictionary French word “hypermarche” (French for supermarket), which directly refers to the field of activity of the Complainant.
The fact that the Respondent is apparently based in France and added the word “hypermarche” to the trademark AUCHAN cannot be a coincidence.
The Complainant also points that the name used by the Respondent in the WhoIs records is the one of its employees: such use of falsified WhoIs details is further evidence of the Respondent’s bad faith registration.
For this Panel, the above is a clear indication that the Respondent necessarily had the Complainant’s trademark in mind when he registered the disputed domain name.
The Complainant has also substantiated that the disputed domain name was used to resolve to a pay-per-click page, where sponsored links were being parked. All those links direct to third parties web pages relating to services in the field of retail and supermarkets.
The Complainant runs a business in that very field, and its numerous trademarks are registered in relation with such services.
The Respondent was therefore making use of the Complainant’s mark in relation with services that are identical to those in respect of which the said mark is used and protected.
Besides, it has been decided in earlier UDRP decisions that a respondent that uses a domain name with automatically generated pay-per-click links cannot disclaim responsibility and such content would be sufficient to conclude to a finding of bad faith, as reported in WIPO Overview 3.0, section 3.5 and, e.g., in a previous case:
Credit Industriel et Commercial S.A. v. IT Administrator, WIPO Case No. D2013-0707: “In addition to the above, the use given to the website, as a parking page which offers links to websites related to finance, banking, credit and insurance services, of the Complaints’ direct competitors is sufficient evidence to conclude that the Respondent was in all likelihood well aware of the Complainant’s trade mark and wanted to refer to the Complainant by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Therefore, in accordance with paragraph 4 (b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name in dispute has been registered and used in bad faith.”
Finally, the Complainant has established that an email server has been configured on the disputed domain name, and that the Respondent did use the same to send phishing emails, from an address “[…]@auchan-hypermarche.net”, featuring the Complainant’s VAT and commercial registration numbers, as well as its address, where the Respondent sought to fool the Complainant’s customers into believing it sought to establish supply partnerships with them, presumably for its own benefit. The Respondent’s efforts to masquerade as the Complainant constitutes fraud that this Panel regards as bad faith registration and use of the disputed domain name.
See WIPO Overview 3.0 at section 3.1.4 “the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. See also B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc / Peneloppe Giguere, WIPO Case No. D2020-2727 (WIPO, December 14, 2020) (“the Respondent appears to have used the disputed domain name in an effort […] to send phishing emails to the Complainant’s suppliers. Given that use of a domain name for per se illegal activity such as phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”).
The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain name and that he is using the domain name in bad faith.
Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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-hypermarche.net> be transferred to the Complainant.
Date: June 8, 2021