WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Holding v. Wang XiaoWen

Case No. D2017-1320

1. The Parties

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

The Respondent is Wang XiaoWen of Suqian, Jiangsu, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <auchangroup.com> is registered with EJEE Group Holdings Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2017, 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. On July 13, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on July 14, 2017, and provided supporting arguments on July 17, 2017.

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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. The Respondent did not submit any substantive response by the specified due date.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 16, 2017. 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 retailer that operates hypermarkets in many countries, including China. It owns multiple trademark registrations for AUCHAN, including International trademark number 898156, registered from April 18, 2006, designating multiple jurisdictions including China; International trademark number 1011777 registered from February 19, 2009, designating multiple jurisdictions including China; and French trademark number 1381268 registered from November 24, 1986. Each of these registrations specifies goods and services in classes 1 to 45 and remains in effect. The Complainant also operates official websites at “www.auchan.com” (domain name registered in 1996) and “www.groupe-auchan.com” (domain name registered in 2001) where it provides information about itself and its products.

The Respondent is located in China. The sender information in its email address is “MyNames” and its username is “Chinabrands”. According to a reverse WhoIs database search provided by the Complainant, the Respondent’s contact email address is associated with over 6000 domain names, including <adidasgroup.com.cn>.

The disputed domain name was registered on February 27, 2009. It resolves to a website in English that displays the following message: “Boost your online business & global expansion. Auchangroup.com is powerful Internet brand. Make your offer here.” The website then specifies four escrow services that can be used to transact the purchase of the disputed domain name, supplies contact details, and concludes with some messages promoting the disputed domain name.

On May 2, 2017, the Complainant’s legal representative sent a cease-and-desist email in English regarding the similar domain name <auchanholding.com.cn>. On May 15, 2017, a reply was received from the Respondent’s email address stating as follows: “I cloud transfer it if you cloud pay 6,000 USD for it. And we have auchangroup.com which you might also interested.” That communication led to the current proceeding.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s AUCHAN trademark. It reproduces that trademark in its entirety. The inclusion of the word “group” is likely to cause further confusion because it refers to the companies owned and controlled by the Complainant and, in any event, the addition of generic terms does not dispel any likelihood of confusion.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating its trademarks. The Respondent is not commonly known by the name “Auchan”. The disputed domain name resolves to a page where it is offered for sale.

The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is well known throughout the world, including China. The disputed domain name is only passively held but there is other evidence of bad faith. The Respondent holds more than 6,000 domain names, most of which replicate international trademarks. The Respondent offered to sell another domain name for USD 6,000, and the disputed domain name, without offering any reasons why he registered them.

B. Respondent

The Respondent did not submit any substantive Response to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant does not understand Chinese and translation of the Complaint would create an undue burden whereas the Respondent understands English because it replied to the cease-and-desist email in English.

The Respondent requests that Chinese be the language of the proceeding because it does not understand English.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is in English, and correspondence between the Parties prior to this proceeding was also in English, from which it can be inferred that the Respondent understands that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Delay

The Complainant did not initiate this proceeding until eight years after the disputed domain name was registered but it did file the Complaint soon after its attention was drawn to the disputed domain name by the Respondent, which appears to be when the Complainant first became aware of it. In any event, the Panel sees no limitation period in the Policy. Previous UDRP panels have noted that the remedies under the Policy are injunctive rather than compensatory in nature, and that the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057. Therefore, the Panel will proceed to examine the Complaint.

6.3. Analysis and Findings

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(i) the disputed domain name is 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 name; and

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

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the AUCHAN trademark.

The disputed domain name wholly incorporates the Complainant’s AUCHAN trademark as its initial and dominant element. The additional element “group” is a dictionary word that does not serve to reduce the confusing similarity of the disputed domain name to the trademark.

The only other additional element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of comparison under the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] 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 or services; or

(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 misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s AUCHAN trademark. The Complainant submits that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark or to seek registration of any domain name incorporating its trademark.

The disputed domain name resolves to a website that merely offers the disputed domain name for sale. That is not a bona fide offering of goods or services that generates rights or legitimate interests in the disputed domain name within the meaning of the first circumstance of paragraph 4(c) of the Policy.

According to the Registrar’s WhoIs database, the Respondent’s name is “Wang XiaoWen”, not “auchangroup”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

The disputed domain name resolves to a website that operates for commercial gain. That is not a legitimate noncommercial or fair use for the purposes of the third circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not file a Response.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first circumstance is as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 respondent’s] documented out-of-pocket costs directly related to the domain name.”

With respect to registration, the Panel observes that the disputed domain name wholly incorporates the Complainant’s AUCHAN trademark as its initial and dominant element with only a dictionary word and a gTLD suffix. The Respondent registered the disputed domain name in 2009, years after the Complainant registered its AUCHAN trademark, including in China where the Respondent is located, at a time when the Complainant had already opened 114 hypermarkets in that country. The disputed domain name is the English translation of “Groupe Auchan” which is the Complainant’s corporate group name and combined with a gTLD suffix in its official website domain <groupe-auchan.com>. The website to which the disputed domain name resolves states that “Auchangroup.com is powerful Internet brand” which, in these circumstances, confirms an awareness of the Complainant or its website, or both. This all gives the Panel reason to find that the Respondent deliberately targeted the Complainant’s trademark and registered the disputed domain name incorporating the trademark in bad faith.

With respect to use, the Panel notes that the disputed domain name resolves to an active website that does nothing but offer the disputed domain name for sale. The website touts the disputed domain name as a “powerful Internet brand” and a “premium” domain name to “boost your online business and global expansion” and solicits offers. The Respondent offered to sell a near identical name to the Complainant in the “.cn” country code Top-Level Domain for USD 6,000, at which time it offered to sell the disputed domain name as well. Although the Respondent did not specify a price for the disputed domain name, the contents of its website and the context of its offer clearly give rise to the inference that it is expecting valuable consideration in excess of its documented out-of-pocket expenses. The Panel finds that the Complainant has discharged its burden of demonstrating that these circumstances constitute bad faith use within the terms of paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <auchangroup.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 21, 2017