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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. xmxzl

Case No. DCC2006-0004

 

1. The Parties

The Complainant is Groupe Auchan, Croix, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is xmxzl, xmxzl xmxzl, XM, Fujian, of China.

 

2. The Domain Name and Registrar

The disputed domain name <auchan.cc> is registered with WebNIC.cc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2006. On October 10, 2006, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On October 13, 2006, WebNIC.cc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2006.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 13, 2006. 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 worldwide retail group, established in France, in 1961 by Gйrard Mulliez. In 1981, Auchan started its worldwide expansion. In 1999, Auchan opened its first store in China and in Taiwan, Province of China. It has also diversified its activities to propose services such as real estate and banking. Presently, it employs more than 165 000 persons, in 12 countries all over the world.

The Complainant’s trademark “AUCHAN” is a registered trademark in many countries and is legally protected in these countries.

The Respondent registered the disputed domain name <auchan.cc> on March 10, 2006, with WebNIC.cc. Before the commencement of the present administrative proceedings, the Complainant sent a letter to the Respondent requesting for an amicable transfer of the disputed domain name <auchan.cc> based on its trademark rights. The Respondent responded to the Complainant’s letter with a request for an offer from the Complainant to secure the transfer of the domain name. The Complainant proposed the payment of USD 50 to the Respondent. The Respondent did not respond to the Complainant’s offer.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant asserts that it is the registered owner of numerous AUCHAN trademarks throughout the world, including China. Consequently, the Complainant asserts that it has rights in the trademark AUCHAN. Furthermore, AUCHAN is also protected as a trade name. The Complainant contends that the disputed domain name <auchan.cc> reproduces in the entirety the Complainant’s trademark AUCHAN and the mere addition of the ccTLD “.cc” is not a distinguishing feature. Consequently, the Complainant contends that the domain name <auchan.cc> is confusingly similar to the AUCHAN trademark registered and owned by the Complainant and a consumer may think that this domain directly refers to the Complainant’ services.

The Respondent has no rights or legitimate interests in respect of the domain name

The Complainant asserts that the Respondent is not affiliated with the Complainant in any way and the Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The Respondent has never used the term “AUCHAN” in any way before or after the Complainant started their business. The Respondent is also not known under the name AUCHAN or any similar term and AUCHAN is not the family name of the Respondent. The Complainant contends that the conduct of the Respondent is parasitical in nature and the Respondent does not use the domain name in a legitimate way as the domain name points to a Commercial Center Website “www.hy-mall.com” which is the website of the Complainant’s competitor in China.

The domain name was registered and is being used in bad faith

The Complainant contends that the name “AUCHAN” does not have any meaning in Chinese or in English. Thus, the Respondent had no reason to choose this domain name other than to profit from the reputation of the Complainant. Auchan is also not the family name of the Respondent. According to the Whois database, the Respondent’s contact address is in China where the Complainant is particularly well-known. The Complainant asserts that it is obvious that the Respondent knew or must have known the trademark AUCHAN at the time he registered the domain name and that it is quite difficult to sustain the argument that the Respondent was not aware of the existence of the Complainant since the Complainant’s AUCHAN trademarks are particularly known in China. The only difference between the Complainant’s trademarks and the domain name <auchan.cc> is the ccTLD.cc. Thus, the Complainant contends that it is clear that the Respondent had the Complainant in mind while registering the domain name in dispute. Besides, the domain name <auchan.cc> directs Internet users to the website “www.hy-mall.com” which is a Commercial Center website. This behaviour further confirms that the Respondent is aware of Complainant’s activity. In fact, since the domain name in dispute is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend he was intending to develop a legitimate activity and the Complainant cites relevant UDRP decisions to support his argument. See, Lagardere SCA v. Omer Karahan; WIPO Case No. DTV2005-0004, Compagnie Gйnйrale des Etablissements Michelin – Michelin et Cie contre Eurostatic Ltd ; WIPO Case No. DFR2005-0013, LES ECHOS contre KLTE Ltd; WIPO Case No. DFR2005-0012, La Franзaise des Jeux v. Mary Lin Telemarket Asia; WIPO Case No. D2005-0734 and F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case D2005-1351. Thus, the Complainant contends that the domain name <auchan.cc> has been registered in bad faith.

The Complainant also contends that there is evidence which supports the finding that the Respondent did also use the domain name in bad faith. The Complainant points out that it has been established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that it is very use by someone with no connection with the product suggests opportunistic bad faith”. See Sanofi-Aventis v. Nevis Domains LLC., WIPO Case No. D2006-0303. The Respondent directs the domain name to the website of the Commercial Center Hy Mall in China (“www.hy-mall.com”) which is one of the Complainant’s competitors. An affidavit drown by a Bailiff was adduced in support of the Complainant’s contention that the Respondent is using the disputed domain name in bad faith. Furthermore, the domain name <auchan.cc> was offered to be sold and the Respondent did not accept the Complainant’s offer to reimburse the registration fees. The Complainant contends that these facts show that the Respondent is using the domain name <auchan.cc> with the intention of profiting by reselling this domain name to its rightful owner for a considerable price. Consequently, this constitutes evidence of both registration and use in bad faith under paragraph 4(b) (ii) of the Policy.

B. Respondent

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

 

6. Discussion and Findings

6.1 Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was submitted in the English language and accordingly, the Center notified the Complainant on the deficiency of the Complaint on March 29, 2006. In response to the Center’s notification, the Complainant has submitted the Amendment Writ to the Complaint requesting English to be the Language of Proceedings on March 31, 2006.

The Complainant submitted the following arguments on the issue of the language of the proceedings:

(a) Many UDRP decisions have recognized that using the registration’s language would lay an undue burden on the Complainant. The Complainant cited the Deutsche Messe A.G. v. Kim Hyungho, WIPO Case No. D2003-0679, in which the Panelist stated that “the spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of in the proceeding in the event translations are required and other relevant factors”.

(b) Before filing this Complaint, the Complainant had tried to find an amicable settlement by sending a letter of cease and desist via email. The letter was written in English, however, the Complainant has adduced evidence that the Respondent responded to the Complainant’s cease and desist letter in English.

(i) The Panel’s discretion under the UDRP

Paragraph 11 of the Rules provides:

“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.”

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name; the language of the Complainant’s Cease and Desist letter; and the Respondent’s response to the Complainant’s letter etc. The Respondent is Chinese and is thus not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likelihood that the Respondent is conversant and proficient in the English language. The Respondent has duly been notified of the Complaint and its contents. However, the Respondent has failed to respond to the Complainant’s contentions.

Pursuant to the Rules, paragraph 11, the Panel has the discretion to determine the language of the present proceeding. After considering the circumstances of the present case, the Panel decides that the proceeding should be conducted in the English language and should proceed henceforth in the English language.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced evidence to demonstrate that it has used the trademark AUCHAN in its retail business since 1961. Furthermore, the Complainant has also adduced evidence to show that it is the registered owner of the trademark AUCHAN in France and in many other countries including China. The Panel accepts the evidence adduced by the Complainant and finds that the Complainant has trademark rights in the mark AUCHAN.

The disputed domain name comprises an exact reproduction of the Complainant’s trademark AUCHAN with the addition of the ccTLD “.cc”. In assessing the degree of similarity between the Complainants’ mark and the Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements.

The addition of a ccTLD to an otherwise identical replication of the Complainant’s trademark does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark. Many UDRP cases have held that the addition of the generic top level domain extension does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark because “when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL nor the TLD (.com) have any source indicating significance. Those designations are merely devises that every Internet site provider must use as a part of its address.” (See The Forward Association, Inc. v Enterprises Unlimited, NAF Case FA 0008000095491, October 3, 2000.). Consequently, the addition of “.cc” domain to the Complainant’s trademark AUCHAN does not distinguish the Respondent’s domain name from the Complainants’ AUCHAN trademark.

The Panel therefore finds that the disputed domain name <auchan.cc> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel thus finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests to the Domain Name.

The Panel finds that the following circumstances are indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name:

(i) The Complainant’s trademark AUCHAN is a coined word with no descriptive significance to the goods or services sold under it. Therefore, the Respondent could not be taken to be using the mark AUCHAN in a descriptive sense.

(ii) The Respondent has not provided evidence of a legitimate use of the domain name <auchan.cc> or reasons to justify the choice of the word AUCHAN in its business operations;

(iii) The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and

(iv) The mark AUCHAN is a mark which is widely known especially in the sector of retail business in many countries including China. Consequently, it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has not participated to this proceeding and has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to show cause that he has rights or legitimate interests to the said domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that 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; or

(ii) Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 Respondent’s website or location or of a product.

The Panel finds that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude the Respondent has registered and used the disputed domain name in bad faith.

Based on the record, the Panel finds that the Complainant’s trademark AUCHAN is widely known especially in the relevant sector of retail in many countries including China. Therefore, the Panel finds that the Respondent most likely had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. It is therefore pertinent that the Respondent explains its choice in the disputed domain name, failing which the Panel draws the conclusion that it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with the Complainant.

An affidavit from the Bailiff in Paris, France has shown that the domain name <auchan.cc> was up for sale in the Internet. When contacted by the Complainant for the proposed transfer of the domain name on the premise that the Complainant has rights in the trademark AUCHAN, the Respondent requested the Complainant to make an offer of the domain name. Further communications between the parties broke down when the Complainant’s offer to pay USD 50 for the reimbursement of the fees for registration was not accepted by the Respondent. No evidence has been adduced before the Panel to demonstrate that since the registration of the domain name, the Respondent has used the domain name for a bona fide offering of goods or services over the Internet. In the absence of evidence adduced by the Respondent and a plausible explanation from the Respondent, the Panel draws the conclusion that the Respondent did not register the domain name in good faith and there are circumstances indicating that 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..

Furthermore, it is important to note that the website to which the disputed domain name resolved to is that of the Complainant’s competitor. The Complainant also uses the Internet for the sale of its goods and services in China under its trademark AUCHAN. Given that the disputed domain name and the Complainant’s mark are found to be confusingly similar, it is very likely that the disputed domain name <auchan.cc> diverts Internet users seeking the Complainant’s website to a competitor’s website. In the absence of evidence to the contrary, the above circumstances are indicative of usage of the disputed domain name in bad faith. The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence prove that the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds for the Complainant on the third and final part of test.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <auchan.cc> be transferred to the Complainant.

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Susanna H.S. Leong
Sole Panelist

Date: November 27, 2006