WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. Gan Yu

Case No. D2013-0188

1. The Parties

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

The Respondent is Gan Yu of Suzhou, Jiangsu, China.

2. The Domain Name and Registrar

The Disputed Domain Name <auchanmall.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2013. On January 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2013, 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 January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Respondent did not file a formal Response; however, the Respondent sent two email communications to the Center on January 29 and 30, 2013.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on March 7, 2013. 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 facts pertinent to the decision in this case are:

(i) The Complainant is a food retailer based in France and runs numerous Auchan hypermarkets in multiple countries, including China, where the Complainant’s first hypermarket dates back to 1999.

(ii) The Complainant is the owner of multiple trademark registrations for AUCHAN in relation to food products and retail services; inter alia, registrations in the European Community and International trademarks designating China. The Complainant also owns domain names that incorporate its AUCHAN trademark including <auchan.com>, <auchan.net>, <auchan.fr> and <auchan.com.cn> and conducts business on the Internet through the above-mentioned websites.

(iii) The Disputed Domain Name was registered on April 21, 2012.

(iv) On July 10, 2012, the Complainant's attorney sent a letter (a copy of which appears in Annex 9 to the Complaint), via email and registered letter, to the Respondent requesting that the Respondent immediately cease any future use of the Disputed Domain Name, and that the Respondent transfer the Disputed Domain Name to the Complainant. On July 20, 2012, the Complainant received by email a response from the Respondent, stating that “this is just a domain, without any commercial purpose” (a copy of which appears in Annex 9 to the Complaint).

(v)The Disputed Domain Name currently resolves to an inactive website indicating that the website is “under construction” with other contact information of the Respondent such as its email address, phone number and “QQ” number and also a link to a domain name <cnzz.com>.

(vi) The Disputed Domain Name, according to the information provided by in a copy of a printout of the website of <auchanmall.com> in Annex 10 to the Complaint, was apparently offered for sale at least on July 6, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.

The Complainant argues that the Disputed Domain Name is confusingly similar to its AUCHAN trademark because it incorporates the AUCHAN trademark in its entirety. The Complainant cites past UDRP decisions that regard its AUCHAN trademark as well-known and argues that the use of the term “mall” in the Disputed Domain Name does not distinguish the Disputed Domain Name from the Complainant’s AUCHAN trademark because “mall” is a generic term. The Complainant argues that, to the contrary, the use of the term “mall” gives an impression to Internet users that the content of the Disputed Domain Name is connected to the Complainant since the Complainant’s business premises are often located in malls.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Complainant has not provided the Respondent with any authorization or license to use its AUCHAN trademark. The Complainant argues that there is no indication that the Respondent has any prior rights or legitimate interests in the Disputed Domain Name or that the Respondent is commonly known by the name “Auchan”. Also, the Respondent has not provided any evidence of its use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Rather, the Complainant states that the Disputed Domain Name was for sale before the Respondent received the Complainant’s cease-and-desist letter.

(iii) The Disputed Domain Name was registered and is being used in bad faith

The Complainant states that given the fame of the AUCHAN trademark worldwide, it is implausible that the Respondent did not know of the Complainant’s trademark at the time it registered the Disputed Domain Name. This suggests that the Respondent acted with opportunistic bad faith in registering the Disputed Domain Name.

Second, inasmuch as the Disputed Domain Name was offered for sale explicitly at least on or before July 6, 2012 and since then has not resolved to an active website, the Respondent’s conduct amounts to use of the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not file a formal Response with the Center; however, the Respondent did send emails to the Center, with a copy to the Complainant on January 29 and 30, 2013.

On January 29, 2013 the Respondent sent an email communication in Chinese stating roughly: “<auchanmall.com> is my domain, this is just a domain name, [and] there is no commercial purpose”.

On January 30, 2013 the Respondent sent another email in Chinese stating that it has no commercial purpose in relation to the Disputed Domain Name. The Disputed Domain Name was registered for the purpose of developing a website regarding casual food. The Respondent asserts that the Disputed Domain Name was chosen because it is intended as a homophone in Chinese for the first three characters “阿U馋商城”. In other words, the “a” in “auchanmall” is said to correspond to the Chinese character “阿” pronounced “a”. The “chan” in “auchanmall” is said to correspond to the Chinese character “馋” pronounced “chan”. The last two Chinese characters “商城” mean “mall” in Chinese. The Respondent states that it has never infringed the AUCHAN trademark nor offered the Disputed Domain Name for sale to the Complainant or its competitors.

The Respondent did not provide any additional evidence to support the assertions made in its emails.

6. Preliminary Procedural Issues

A. 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 proceedings”.

The language of the Registration Agreement in relation to the Disputed Domain Name <auchanmall.com> is English. The Complaint was filed in English. The Respondent failed to submit any formal Response, but in an email sent to the Center (with a copy to the Complainant and the Registrar), the Respondent requested that Chinese be used as the Respondent is Chinese and its English ability is limited.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Panel notes the following facts:

(i) The language of the Registration Agreement for the Disputed Domain Name <auchanmall.com> is English;

(ii) The Respondent, while claiming that its English ability is limited, registered the Disputed Domain Name with a Registrar using a Registration Agreement in English, responded to correspondence that was sent in English, and has both responded to correspondence and posted information on the website to which the Disputed Domain Name resolves in English.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a formal Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the Disputed Domain Name, each of the following:

(i) The Disputed Domain Name is confusingly similar to a trademark 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

The Complainant has established that it is the owner of various AUCHAN trademarks that have been registered as European Community trademarks and International trademarks, designating China.

It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark and the addition of a non-distinctive element to the disputed domain name does not sufficiently differentiate the disputed domain name from the trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, also see the generally adopted panel views under paragraph 1.9 of WIPO Overview 2.0.).

In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark AUCHAN in its entirety and adds only the non-distinctive “mall” element. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following several 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, use by [the Respondent] 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) where [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) where [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.

In the present case, the Complainant has established that it is the owner of various AUCHAN trademarks, and that the Complainant has used the AUCHAN trademark on the Internet through its website “www.auchan.com.cn” from which it conducts its retail business within China. The Complainant states that the Respondent has not received any license to use the Complainant’s AUCHAN trademark in the Disputed Domain Name.

Furthermore, the Registrar revealed the owner of the Disputed Domain Name to be “Gan Yu” and there is no evidence in the record to suggest that the Respondent might be commonly known by the Disputed Domain Name. There is no evidence that the Respondent has any trademark rights in the Disputed Domain Name.

With regard to whether this case presents the circumstances provided for in Paragraph 4(c)(i) of the Policy, the Panel looks to the criteria set out by other decisions adopted under the Policy dealing with similar circumstances (Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932; Quotesmith.com, Inc. v. Neal J. Solomon, WIPO Case No. D2002-0523). If the Respondent was engaged in or preparing to engage in a bona fide offering of goods or services, it should be able to provided evidence to that effect. The term "demonstrable preparations to use" requires real preparations "that are calculated to result in deployment of an operational website addressed by that name".

The Panel finds that the Respondent has provided no evidence to satisfy the criteria of Paragraph 4(c)(i) of the Policy. In its January 30, 2013 email, the Respondent alleges that the Disputed Domain Name was registered and intended for developing a website to which the Disputed Domain Name resolves. Nevertheless, there is no evidence of “demonstrable preparations” and there is no evidence to establish that the intended website would involve a bona fide offering of goods or services. Thus, the Panel is unable to conclude that the Respondent is using, or preparing to use, the Disputed Domain Name in connection with a bona fide offering of goods or services as provided for in Paragraph 4(c)(i) of the Policy.

In the January 30, 2013 email, the Respondent asserts the reasons for the selection of the Disputed Domain Name and alleges that the registration of the Disputed Domain Name does not have any commercial purpose, but the Respondent provides no additional evidence to support its selection of this name or a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name as provided for in Paragraph 4(c)(iii) of the Policy. Neither does the Respondent provide any evidence that it is preparing to make a legitimate noncommercial or fair use of the Disputed Domain Name.

As a result, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, and the Respondent has provided no evidence to support a finding that it has rights or legitimate interests in the Disputed Domain Name. Thus, the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy explicitly states, in relevant part, that if the panel finds the following circumstances, it shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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.

In relation to the bad faith at the time of registration, the Panel notes that the Complainant has established that its AUCHAN trademark was registered as European Community trademarks and International trademarks designating China, and the AUCHAN trademark has been recognized in prior UDRP cases as well-known and appears to have been used in connection with the Complainant’s retail services. The Panel finds it difficult not to conclude that the Respondent was aware of the Complainant’s trademark rights at the time it registered the Disputed Domain Name <auchanmall.com> (April 21, 2012). The Panel also notes that the only term added to the Disputed Domain Name in addition to the Complainant’s trademark is “mall”, which will very likely be associated in the minds of Internet users with the stores at which the Complainant offers its goods and services. The Respondent’s choice to incorporate the identical AUCHAN element as the primary distinctive element of the Disputed Domain Name, and to add a descriptive term that is also likely to be associated with the Complainant’s goods and services, supports the Panel’s conclusion that the Disputed Domain Name was registered in bad faith.

In relation to use in bad faith, while the Disputed Domain Name currently resolves to an inactive website (under construction), the Panel notes the prevailing opinion of numerous WIPO panels that have held that passive holding of a domain name does not prevent a finding of bad faith use. The leading case in this regard is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which is also cited by the Complainant.

The Complainant has also provided evidence of the information in a copy of a printout of the website of <auchanmall.com> in Annex 10 to the Complaint indicating that the Disputed Domain Name was apparently offered for sale before the Complainant’s attorney sent a letter (a copy of which appears in Annex 9 to the Complaint) to the Respondent on July 10, 2012. Despite the Respondent’s contention that it never offered the Disputed Domain Name for sale to the Complainant or its competitors, the Panel finds Annex 10 to the Complaint to be strong evidence to suggest the Respondent’s bad faith, i.e. the Panel finds that the Respondent registered the Disputed Domain Name with the intention to sell it for an amount, most likely, in excess of the Respondent’s out-of-pocket costs. The Panel notes the Respondent’s assertions that the Disputed Domain Name was parked for free and the Respondent did not directly control the content of the website. The Panel, however, finds that the Respondent chose to use the Disputed Domain Name by parking it with this site, at which the offer to sell the Disputed Domain Name appeared. Consequently, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith.

Thus, in consideration of all the circumstances of the case, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith as provided in paragraph 4(b)(i) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <auchanmall.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: March 21, 2013