WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. Parapharmacie Marche, Xavier Marche

Case No. D2014-0925

1. The Parties

The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.

The Respondent is Parapharmacie Marche, Xavier Marche of Cannes, France.

2. The Domain Names and Registrar

The disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net> are registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2014. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2014.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on August 1, 2014. 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

According to the documentary evidence and contentions submitted, the Complainant is a French corporation in the food retail industry.

The Complainant owns several trademark registrations composed of the term "Auchan" across the world, notably in France.

The Complainant owns, in particular, the following French trademarks:

- No. 3484631 AUCHAN, registered on February 27, 2007, in classes 9, 35 and 38;

- No. 36300779 AUCHAN, figurative trademark (a bird device in association with the word "Auchan" in red and green colors), registered on February 18, 2009, in classes 1 to 45.

The Complainant also owns and communicates on the Internet through various websites in order to present and to propose to the Internet users its services and products.

The Complainant owns in particular the following domain names:

- <auchan.com>, registered on April 1, 1996, and duly renewed;

- <auchan.fr>, registered on February 11, 1997, and duly renewed.

The disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net> were both registered on May 2, 2013.

According to the documentary evidence and contentions submitted, initially, the disputed domain names resolved to a website related to pharmaceutical online sales with commercial links. Now, the disputed domain names both resolve to inactive websites.

The Respondent registered the disputed domain names by using a privacy shield service named WhoisGuard, Inc.

On October 21, 2013, the Complainant sent a cease-and-desist letter via an e-mail to the privacy shield service on the basis of its trademark rights. The cease-and-desist letter requested the privacy shield service to provide the identity and contact details of the registrant, to cease the use of the disputed domain names and to transfer it.

The privacy shield service replied on December 8, 2013 by informing the Complainant that it simply provides anonymous privacy protection services to domain names registrant and revealing the identity of the Respondent.

On December 18, 2013, the Complainant sent a cease-and-desist letter via a registered letter and an e-mail to the Respondent on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to cease the use of the disputed domain names and to transfer it.

The Respondent replied on December 23, 2013 by asserting it would accept to transfer the disputed domain names in a short time.

Despite several reminders, the Respondent did not transfer the disputed domain names.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. Indeed, the Complainant states that the disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net> reproduce entirely the AUCHAN trademarks combined with the French generic and descriptive term "pharmacie" meaning "pharmacy" in English and the generic Top-Level Domain ("gTLD") suffix ".net" or ".com". According to the Complainant, Internet users are likely to believe that the disputed domain names will either lead them to a website endorsed by the owner of the trademarks or that it is somehow connected to it. The Complainant adds that the addition of generic and descriptive terms or gTLD suffix does not prevent the likelihood of confusion between the Complainant's trademarks and the disputed domain names in the minds of Internet users.

The Complainant adds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant mentions that the Respondent is neither commonly known by the name "Auchan", nor in any way affiliated with it, nor authorized or licensed to use the AUCHAN trademarks, or to seek registration of any domain names incorporating the said trademark. According to the Complainant, the fact that the Respondent registered the disputed domain names by using a privacy shield to hide its identity and that it revealed, during a telephone call with the Complainant, its intention of transferring it in exchange of financial compensation, demonstrates that the Respondent has no rights or legitimate interests in respect to the disputed domain names. Finally, considering the fact that the disputed domain names directed Internet users to a website supposedly used as a parking page, the Complainant infers that the Respondent cannot be making a legitimate noncommercial or a fair use of the disputed domain names.

Furthermore, the Complainant contends that the Respondent registered the disputed domain names in bad faith. Indeed, the Complainant states that given the worldwide reputation of the AUCHAN trademark, it is impossible that the Respondent was not aware of the Complainant's rights on this trademark while registering the disputed domain names. The Complainant argues that it attempted to find an amicable settlement with the Respondent, but without success. In fact, the Complainant asserts that it has contacted the Respondent by phone and that during the call the Respondent revealed its intention of transferring the disputed domain names in exchange of financial compensation. The Complainant also recalls it is the registrant's duty to verify that the registration of a domain name would not infringe the rights of any third party before registering said domain names. The Complainant adds that even if the Respondent was not aware of the existence of the AUCHAN trademark or of the possibility of searching trademarks online before registering the disputed domain names, a simple search via Google or any other search engine using the keyword "Auchan" would have revealed to the Respondent the existence of the Complainant and its trademark. Moreover, according to the Complainant, the fact that the Respondent registered the disputed domain names through a privacy shield to hide its identity and prevent the Complainant from contacting it indicates registration in bad faith.

The Complainant finally contends that the Respondent used the disputed domain names in bad faith. The Complainant alleges that the absence of any license or permission from the Complainant to use such widely known trademark prevents the Respondent to claim an actual or contemplated bona fide or legitimate use of the disputed domain names. Considering the fact that the disputed domain names directed towards a website which appeared to be used as a parking page, it is likely for the Complainant that the disputed domain names were used to divert Internet users and to direct them to a webpage providing revenues through click to the Respondent. Taking into account the fact that the disputed domain names are currently inactive, the Complainant contends it is likely that the Respondent also registered the disputed domain names to prevent it from reflecting its trademark in the disputed domain names and receive a financial compensation in exchange of the transfer of the disputed domain names. As for the Complainant, this is a classic case of passive holding.

The Complainant therefore requests the Panel that the disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:

(i) the disputed domain names are 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 names; and

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

A. Identical or Confusingly Similar

The Panel observes that the Complainant has provided evidence that it has rights in the AUCHAN trademarks, and that the Complainant's trademarks are still in force.

In this case, the disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net> are composed of the distinctive element "Auchan", which is the exact reproduction of the AUCHAN protected trademark, to which was added the generic and descriptive term "pharmacie" (meaning "pharmacy" in English).

The Panel concurs with the opinion of several prior UDRP panel which have held that, when a domain name wholly incorporates a complainant's registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy (see e.g., Hoffmann-La Roche Inc., Roche Products Limited v.Vladimir Ulyanov, WIPO Case No. D2011-1470, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059).

Moreover, the Panel also concurs with several UDRP panel which held that the addition of generic terms does not dispel any likelihood of confusion (see e.g., DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097; Merck Sharp & Dohme Corp. v. lobalCom, Henry Bloom, WIPO Case No. D2011-0700).

As a consequence, regarding the disputed domain names <pharmacieauchan.com> and <pharmacieauchan.net>, the Panel finds that the addition of the descriptive word "pharmacie" to the trademark AUCHAN is not sufficient to exclude the confusing similarity. In the same way, the Panel finds that the addition of the gTLD suffix ".com" and ".net" is not sufficient to exclude the confusing similarity with the registered trademark AUCHAN.

In view of the above, the Panel considers that the Complainant has proved that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy outlines circumstances (paragraph 4(c)), if found by the panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to prior UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

In the absence of response of the Respondent, the Panel accepts as true the Complainant's allegations that the Respondent has no authorization or license to use the Complainant's trademarks into the disputed domain names, that there is no business relationship existing between the Complainant and the Respondent, that the Respondent's name is not composed of the name "Auchan" and that it is not itself commonly known under the disputed domain names.

The Panel also considers that, as the disputed domain names redirect to websites that are now inactive, there is no bona fide offering of goods and services by the Respondent.

In view of the above, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Policy outlines circumstances (paragraph 4(b)) which, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the respondent's website or location.

The Complainant contends that it has contacted the Respondent by phone and that during the call, the Respondent revealed its intention to transfer the disputed domain names in exchange of financial compensation. Based on this affirmation, which is not contested by the Respondent, it appears to the Panel that the Respondent has intentionally registered these disputed domain names for the purpose of selling them which is, according to the Policy, a circumstance of registration in bad faith as per paragraph 4(b)(i).

Furthermore, bad faith may be found where the Respondent knew or should have known of the Complainant's trademark rights and, nevertheless registered a domain name in which it had no right or legitimate interests. Thus, numerous UDRP panels have made a finding of bad faith where a complainant's trademark was shown to be well-known or in wide use at the time of registration of the domain name (see LEGO Juris A/S v. store24hou; WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

As already established in prior UDRP decisions, the AUCHAN trademark is well-known internationally (see e.g. Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; Groupe Auchan v. PrivacyProtect.org / "Privat Person", Rishat Dunaev, WIPO Case No. D2012-0977; Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565; Auchan v. Hostdatviet, WIPO Case No. D2006-1096; Auchan v. Oushang Chaoshi, WIPO Case No. D2005-0407; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001). Taking into account the reputation of the Complainant and its trademarks, the Panel finds that in all likelihood the Respondent was aware of the Complainant's trademark at the time the disputed domain names were registered.

Moreover, in a similar case, a previous UDRP panel has considered that the registration of domain names associating a well-known trademark of the retail industry with the term "pharmacy" may characterized bad faith as the registrant worked in the pharmaceutical industry and could not have ignored the recent evolution in the regulation of online drugs' sale (see Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Fabrice Guigonnat, WIPO Case No. D2013-1676, <Leclerc-pharma.com>, <mapharmacieleclerc.com> and <mapharmaleclerc.com>). The UDRP panel considered that the registration of such domain names aimed at confusing Internet users who could think that the complainant had decided to sell pharmaceutical products, whereas it was legally not entitled to. In the present case submitted to the Panel, the Respondent appears to be a healthcare retail shop, and according to the documentary evidence submitted, the Respondent was aware of the recent evolutions of the regulations applying to on-line drugs' sale (the Complainant provided screen shots showing that the disputed domain names previously directed to websites providing information with regards to these regulatory evolutions). According to the Panel, it is likely that the Respondent could not have ignored this situation when it registered the disputed domain names, which constitutes an additional circumstance of registration in bad faith for this Panel.

Moreover, the Panel concurs with UDRP decisions which considered that a deliberate concealment of identity and contact information may be a further indication of registration on bad faith (see Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729; TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725). In this case, the Respondent registered the disputed domain names through a privacy shield service, and the Panel considers it is likely to be in order to hide its identity and prevent the Complainant from contacting it.

Therefore, for all the above mentioned reasons, the Panel concludes that the Respondent registered the disputed domain names in bad faith.

With regard to a use in bad faith, the websites at the disputed domain names are now both inactive, which was confirmed by the Respondent during the Complainant's phone call.

However, even though the disputed domain names resolve to inactive websites, it has long been held in UDRP decisions that the passive holding of a domain name that incorporates a trademark without obvious use for an Internet purpose, does not, as such, prevent to infer a use in bad faith of the disputed domain names by a respondent (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Westdev Limited v. Private Data, WIPO Case No. D2007-1903).

In this case, the Complainant submitted copies of screen shots showing that the disputed domain names previously directed towards websites relating information on the new regulation of online sales of drugs, and including commercial links. The Panel therefore concurs with previous UDRP decisions which considered that the use of a well-known trademark to attract Internet users to a website for commercial gains constituted a use in bad faith (see F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; L'Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231 and Alstom v. FM Laughna, WIPO Case No. D2007-1736).

Moreover, the Respondent has provided no evidence of any actual or any contemplated good faith use by it of the disputed domain names.

Therefore, all aforementioned circumstances confirm to the Panel that the disputed domain names are used in bad faith.

Thus, in view of the above, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.

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 <pharmacieauchan.com> and <pharmacieauchan.net> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: August 12, 2014