WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ELO v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted

Case No. D2021-1346

1. The Parties

The Complainant is ELO, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Name Redacted.¹

2. The Domain Names and Registrar

The disputed domain names <auchanpromo.com> and <auchanpromos.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 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 May 5, 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 May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. On May 16, 2021, a third party contacted the Center regarding the claimed unauthorized use of its contact details in relation to the disputed domain name in the present proceedings. The Respondent did not submit any formal response. The Center informed the Parties that it will proceed to Panel appointment on May 27, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 3, 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 in this proceeding, ELO, previously known as Auchan Holding SA, is the owner of the AUCHAN trademark. The Complainant is a multinational retail group headquartered in Croix, France. Founded in 1960 by Gérard Mulliez, the company has grown exponentially throughout its history and is now one of the largest food retailers in the world, operating in 17 countries across Europe, Africa, and Asia. Additionally, with 354,851 employees worldwide, the Complainant is also one of the largest employers in the world. As of December 2019, its consolidated revenue, excluding taxes, was EUR 33,370 million.

The Complainant owns the AUCHAN mark, which enjoys thorough protection through many registrations worldwide.

The Complainant is, inter alia, the owner of:

- International trademark registration number 284616 for the AUCHAN mark, registered on June 5, 1964;
- International trademark registration number 332854 for the AUCHAN mark, registered on January 24, 1967;
- International trademark registration number 1011777 for the AUCHAN device mark, registered on February 19, 2009;
- European Union Trade Mark registration number 000283101 for the AUCHAN device mark, registered on August 19, 2005.

Moreover, the Complainant is also the owner of over 600 domain name registrations corresponding to and/or containing the AUCHAN mark.

The Complainant has a large Internet presence and shares information about its products, services and news on its website at its <auchan.fr> domain name, registered on February 11, 1997.

The disputed domain names were registered on October 8, 2020.

The disputed domain names are currently used to promote food and drinks recipes in a personal blog style.

The Complainant’s trademark registrations predate the registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant claims that in creating the disputed domain names, the Respondent has added the terms “promos” and “promo” to the Complainant’s AUCHAN trademark, thereby making the disputed domain names confusingly similar to the Complainant’s trademark.

The fact that such terms are closely linked and associated with the Complainant’s brand and trademark only serves to support the confusing similarity between the disputed domain names and the Complainant’s trademark. Moreover the use of the terms “promos” and/or “promo” – which are short forms for the word “promotion” and are commonly used in French, especially in marketing messages – is confusing for consumers, misleading them into believing the promotions are related to the Complainant.

The Complainant thus concludes that the disputed domain names are confusingly similar to the AUCHAN trademark. To this end, the Complainant quotes several UDRP decisions in which it is established that confusing similarity is generally recognized when well-known trademarks are paired with different kinds of prefixes and suffixes.

The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain names. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the AUCHAN trademark.

Moreover, the Complainant asserts that AUCHAN is a world-famous trademark, and consequently the Respondent was aware of the rights the Complainant has in the AUCHAN trademark at the time of the registration.

The Complainant also claims that the Respondent is using the disputed domain names to redirect to food blogs, and affirms that, as determined by past panels, the use of a disputed domain name to redirect Internet users to content unrelated to a complainant, even if the respondent does not derive commercial benefit from such use, does not automatically render the use of the disputed domain name legitimate.

The Complainant also affirms that the Respondent employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use.

The Complainant also claims that the Respondent never replied to the Complainant’s cease and desist letter and that this is a further element to be considered in finding for bad faith registration and use of the disputed domain names.

The Complainant thus concludes that the Respondent tried to benefit from the Complainant’s world famous trademark, and that the disputed domain names have been registered and are being used in bad faith.

B. Respondent

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

In fact on May 16, 2021, in response to the communication informing the parties of the present proceeding sent by the Center via courier, a third party sent an email to the Center claiming that he is not involved in this case and that he does not own any domain name, thus implying that this is likely a case of identity theft.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the AUCHAN trademark.

The disputed domain names contain the Complainant’s AUCHAN trademark with the addition of the terms “promo” and “promos” respectively, and the generic Top-Level Domain (“gTLD”) “.com”.

The addition in the disputed domain names of these terms is obviously not sufficient to prevent confusing similarity with the renowned AUCHAN trademark.

Pursuant to section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Therefore, the Panel finds the disputed domain names to be confusingly similar to the AUCHAN trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain names.

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

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the AUCHAN mark when it registered the disputed domain names.

In fact, the Complainant’s AUCHAN trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods and services. It has been registered and used for many decades and is a renowned trademark worldwide, especially in the food sector, where the Respondent appears to be active. Hence, the registration of the disputed domain names does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain names.

In addition, the Respondent’s use of the disputed domain names to promote food and drinks recipes in personal blogs, unrelated to the Complainant and its goods and services, suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“‘VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Inference of bad faith can also be found in the failure to respond to the cease and desist letter sent by the representative of the Complainant.

Another factor supporting the conclusion of bad faith registration and use of the disputed domain names is given by the fact that the Respondent deliberately chose to conceal its identity not only by means of a privacy protection service, but apparently also by providing incorrect, if not false, details regarding its identity and contact references, to the company providing the privacy protection service. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements discussed here, amounts to a further inference of bad faith registration and use.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy

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, <auchanpromo.com> and <auchanpromos.com>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: June 17, 2021

¹ The Respondent appears to have used the name 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.