WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan v. Istaban Arya Co.
Case No. DIR2014-0011
1. The Parties
The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Istaban Arya Co. of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <auchan.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2014. On December 18, 2014, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On December 20, 2014, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 21, 2015.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2015. The Respondent submitted a late response in French on March 2, 2015.
The Center appointed Pablo Palazzi as the sole panelist in this matter on February 19, 2015. 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 following summary sets out the uncontested factual submissions made by the Complainant:
The Complainant is a world leading group in the food retail industry created by Gerard Mulliez in 1961 in Northern France. It opened its first supermarket in Ronq (France) in 1967 and opened the first commercial centre in Englos (France) in 1969.
On June 2014, the Complainant and its affiliated companies operated in 16 countries across Europe and Asia and employed 302,500 employees. In 2008 Groupe Auchan opened a store in Middle East. In the year 2009 negotiations started between the Complainant and the Respondent for an eventual partnership in the Islamic Republic of Iran. However, these negotiations did not materialize ultimately and no contract was concluded.
The Complainant has registered the AUCHAN trademark internationally including registrations for the Islamic Republic of Iran.
The Complainant operates numerous websites whose domain names incorporate the mark AUCHAN, such as <auchan.com> registered on April 1, 1996.
The disputed domain name was registered on August 16, 2014 and (currently) resolves to an inactive website.
5. Parties’ Contentions
The Complainant asserts that AUCHAN is a well-known trademark. The Complainant contends further that the disputed domain name is confusingly similar to the Complainant’s AUCHAN trademark. The disputed domain name comprises the Complainant’s AUCHAN trademark in its entirety.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name because:
- the Respondent is not affiliated with the Complainant;
- the Complainant has not authorized the Respondent to use its trademark in the domain name;
- the Respondent has no prior rights or legitimate interests in the disputed domain name;
- Although negotiations started between the Complainant and the Respondent in 2009 for an eventual partnership in the Islamic Republic of Iran, the Complainant never authorized nor requested the Respondent to register the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith and relies on the following:
- the Complainant has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the AUCHAN trademark including any license or authorization from the Complainant;
- it is inconceivable that the Respondent is not aware of the Complainant and its AUCHAN trademark given
the trademark’s worldwide reputation;
- the prior registrant of the disputed domain name clearly showed knowledge of the AUCHAN trademark and its activities by pretending that there was an agreement between the Respondent and the Complainant. The Complainant explains that the agreement never materialized and that the Respondent registered the disputed domain name out of fear that Complainant enter into an agreement with another company and has obviously registered the disputed domain name with the intent of pressuring the Complainant;
- A passive holding of the disputed domain name does not preclude a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
However, on March 2, 2015, the Center received an email communication on behalf of the Respondent’s representative in French language. The email stated [sic]:
“… Je suis le représentant légal du groupe ISTABAN ARYA en Europe.
Je viens vers vous car nous venons d’apprendre qu’une action contre ISTABAN ARYA a été entamée au sujet du domaine AUCHAN.IR auprès de votre service. […]
Concernant l'adresse internet AUCHAN.IR nous somme très étonnés de cette plainte car cette adresse internet n'est pas active. elle a simplement été enregistrer par le groupe ISTABAN et n'a aucune existence commerciale ou non commerciale sur le net. cette enregistrement ne porte atteinte à aucune règles iraniennes ou internationales. le seule fait d'enregistrement d'un domaine ne pourrait pas non plus porter atteinte aux règles liées au droit de la propriété intellectuelle […]”.
The Center sent a copy of the complaint and the notification of the complaint which were notified to the Respondent on January 23, 2015. The Center also informed Respondent that the specified due date for submission of a Response has passed and that the Administrative Panel was already appointed on February 19, 2015. The Center did not receive any further communication from the Respondent’s representative.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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 names has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to prove its rights to the AUCHAN trademark. The AUCHAN trademark has been registered by the Complainant in numerous jurisdictions, including the Islamic Republic of Iran, and has been used extensively on a worldwide basis. This has also been confirmed by several past Uniform Domain-Name Dispute-Resolution Policy (the “UDRP”) decisions (e.g. Groupe Auchan v. Bai Huiqin, WIPO Case No. D2009-0840).
The disputed domain name comprises Complainant’s AUCHAN trademark in its entirety and the country code Top Level Domain-Name (“ccTLD”) extension for the Islamic Republic of Iran (“.ir”).
For the purposes of determining the first element, the Panel finds that the disputed domain name is identical to the Complainant’s AUCHAN trademark as the ccTLD should not be taken into account.
Accordingly, the first element of the Policy is met.
B. Rights or Legitimate Interests
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made the burden of production shifts to the respondent to come forward with appropriate allegations (or evidence) demonstrating rights or legitimate interests in the domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant asserted that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent did not provide any evidence to the Panel confirming its rights or legitimate interests in the disputed domain name. Although negotiations occurred between the Complainant and the Respondent, the Complainant never authorized or licensed it to use the AUCHAN trademark, nor requested it to register any domain name incorporating said mark.
In the interchange of emails between the parties previous to the filing of the Complaint (Annex 4 to the Complaint), the Respondent answered to the Complainant’s cease and desist letter [sic]:
“I am acting as webmaster at IT department of the Iranian Company ‘Istaban Arya Co.’, under the management of Mr. […] Mirdamadi as CEO and Chairman of the Board. So, all rights of domain name <auchan.ir> reserved by ‘Istaban Arya Co.’ and I just did registration process. This domain was registered in relation to an agreement between ‘Istaban Arya Co.’ & ‘French Company Groupe AUCHAN’. Best regards. Mr. […] Faegh.”
No other communications ensued, despite several reminders from the Complainant’s representatives.
The Panel also notes a late email communication in French language was sent to the Center on March 2, 2015, in which the Respondent’s representative states that the Respondent registered the disputed domain name, but there is no commercial use of it.
Moreover, there is no evidence of any use or preparations to use the disputed domain name in connection with any bona fide offering of goods or services legitimately connected with the Complainant’s AUCHAN mark. In fact, it would be difficult to find a bona fide use after the existence of previous negotiations that were never materialized.
For the foregoing reasons, the Panel concludes that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered or Used in Bad Faith
The Panel finds bad faith registration due to the fact that the Respondent knew of the Complainant’s trademark. The Complainant states that in the year 2009 negotiations started between the Complainant and the Respondent for a possible partnership in the Islamic Republic of Iran. Despite these negotiations it did not materialize ultimately and no contract was concluded, the disputed domain name was registered on August 16, 2014. .The Respondent has not denied these assertions, and therefore the Panel finds that the Respondent knew about the Complainant’s trademark and registered the disputed domain name in bad faith.
With respect to bad faith use, in the present case, the Respondent has not apparently used the disputed domain name in the sense of setting up a website to which the disputed domain name resolves.
However, there is no conceivable explanation for the registration of the disputed domain name other than to improperly exploit the worldwide reputation of the Complainant. By positioning itself to exploit the disputed domain name and prevent the Complainant from obtaining the transfer to it of the disputed domain name, Respondent is using the registration of the disputed domain name in bad faith: c.f. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The specific circumstances of this case are:
(a) the AUCHAN trademark is well known throughout the world including in the Islamic Republic of Iran, where Respondent is located;
(b) the registration by the Respondent could not have been for any other purpose than to exploit the Complainant’s reputation for its own purposes, notwithstanding that it had and has no rights to use the AUCHAN mark;
(c) the Respondent has refused to respond to reasonable requests to transfer the name which incorporates the trade mark in its entirety;
(d) the Respondent is passively using the disputed domain name that is identical to the Complainant’s trademark.
Therefore, the Panel concludes that the disputed domain name was registered and is used in bad faith.
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.ir> be transferred to the Complainant.
Date: March 5, 2015