WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Auchan, SA v. Tiziana Pini
Case No. D2008-0729
1. The Parties
The Complainant is Groupe Auchan, Croix, France, represented by Cabinet Dreyfus & Associ�s, France.
The Respondent is Tiziana Pini, Milan, Italy, represented by Studio Legale Maggio, Italy.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2008. On May 13, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 23, 2007. The Center verified that the Complaint together with the amendment to 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 May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008. The Response was filed with the Center on June 15, 2008.
The Center appointed David Perkins as the sole panelist in this matter on June 27, 2008. 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.
In its Response dated June 15, 2008 the Respondent asserted that her company, M&CS Travel, was expressly authorized by the Complainant’s affiliate, Auchan SpA, to register the disputed domain name in the context of an agreement with Auchan SpA whereunder the Respondent’s company would offer Auchan’s hypermarkets in Italy travel packages for the employees and customers of Auchan SpA.
Notwithstanding, the Respondent says that she agreed not to renew the disputed domain name after its renewal date of March 22, 2008. However, according to the Respondent, the Registrar’s procedure for deleting the disputed domain name or for transferring it to the Complainant is currently blocked as a result of this Administrative Proceeding.
The Complainant by email of June 27, 2008 announced its intention to make a Submission in answer to the Respondent. On June 20, 2008, the Center advised the Complainant that the admissibility of such additional Submission is at the sole discretion of the Panel.
In a Preliminary Panel Direction of July 1, 2008, the Panel stated that, if there is a clear and unambiguous agreement between the parties that the Respondent will transfer the disputed domain name to the Complainant, then pursuant to paragraphs 10 and 15 of the Rules the Panel can proceed immediately to make an Order for Transfer without a reasoned Decision dealing with the elements of paragraph 4(a) of the Policy. Accordingly, the Panel requested the Parties to inform the Center within 5 working days whether they both consent to transfer of the disputed domain name on that basis.
On July 3, 2008, the Respondent stated that she agreed to transfer the disputed domain name and requested the Center to proceed on that basis. The Complainant has not responded but, in the circumstances, the Panel will proceed upon the basis that there is the requisite consent to the making of a Decision ordering transfer.
4. Factual Background
4.1 The Complainant
4.1.1 The Complainant is in the business of the distribution of goods and services. Its first store was opened in 1961 in Roubaix, France. Its first hypermarket was opened in 1967 in Rouq, also in France. Then in the 1980’s, the Complainant began to expand internationally and today carries on business in 12 countries including Italy.
4.1.2 The Complainant’s business in Italy began in 1989. The Respondent is also located in Italy. The Complainant currently operates 45 “Auchan” hypermarkets and some 1,500 supermarkets in Italy, which are either wholly owned (267) or franchised (1,200) and which appear to be operated under a number of names, for example, “Simply Market”, “Sma” and “Cityper”. The Complainant employs some 1,860 staff in Italy.
The AUCHAN trademark
4.1.3 The Complainant is the proprietor of the following registered trademark for AUCHAN.
Country
Trademark No.
Trademark
Classes
When filed / registered
European Community
CTM 000283101
AUCHAN & device
1 to 42
May 31, 1996
August 19, 2005
European Community
CTM 004510707
AUCHAN & device
35 and 38
June 27, 2005
January 1, 2007
International Trademark Registration
284,616
AUCHAN
3, 9, 11, 25, 29 & 32
June 5, 1964
International trademark Registration
332,854
AUCHAN & device
35 to 42
January 24, 1967
International Trademark Registration
531,717
A AUCHAN
3, 9, 11, 25, 29 & 32
November 22, 1988
International Trademark Registration
585,353
A AUCHAN
3, 9, 11, 25, 29 & 32
May 11, 1992
International Trademark Registration
625,533
AUCHAN
1 to 42
October 19, 1994
International Trademark Registration
626,147
A AUCHAN
2 to 5, 8, 9,. 11, 16, 18, 21, 25, 29, 30, 32, 36 and 37
October 31, 1994
International Trademark Registration
658,656
A AUCHAN
1, 6, 7, 10, 12–15, 17, 19, 20, 22-24, 26-28, 31, 32-35 and 38-42
July 29, 1996
International Trademark Registration
713,595
AUCHAN
29 – 31
June 3, 1999
International Trademark Registration
759,476
AUCHAN DIRECT
3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 29 to 33, 35, 36, 238 and 42
February 28, 2001
International Trademark Registration
759,477
AUCHAN INTERACTIVE
3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 29 to 33, 35, 36, 238 and 42
February 28, 2001
International Trademark Registration
914,115
AUCHAN TELECOM
9, 16, 35 to 38 and 41-42
November 28, 2006
France
898727954
VOYAGES AUCHAN
35, 39, 41 and 42
April 14, 1998
All the above listed Community and International Trademark Registrations include Italy, where the Respondent is located. Further, all the above AUCHAN registered trademarks were registered prior to the disputed domain name, which was created on March 22, 2007.
The AUCHAN domain names
4.1.4 The Complainant is the registrant of the following domain names, all of which comprise or include the AUCHAN mark.
Domain Name
Date Registered
February 11, 1997
November 19, 2001
November 29, 2007
August 24, 2001
December 10, 2001
August 17, 2000
November 29, 2007
November 23, 2000
November 19, 2007
December 10, 2001
December 11, 2001
March 8, 2002
Prior UDRP Complaints
4.1.5 The Complainant has brought the following successful complaints under the Policy in relation to its AUCHAN trademark.
WIPO Case No.
Disputed Domain Name
D2007-0565
D2007-0268
D2007-0175
D2007-0004
D2005-1195
and 9 other “auchan” prefixed domain names
D2006-1096
D2005-0001
D2005.0407
1
D2007-0270
4.2 The Respondent
4.2.1 The Respondent is the proprietor of M&CS Travel, which is located in Italy and which provides travel and holiday packages. In February 2006, the Respondent received from the Complainant’s operating company in Italy a proposal to provide holiday packages for its employees and customers of its Italian hypermarkets.
4.2.2 The disputed domain name is Italian for “auchanvoyages” and, says the Respondent, was registered by her with the express authorization of the Complainant’s Italian company, Auchan SpA.
5. Parties’ Contentions
5.1 The Respondent says that from the outset she agreed that the disputed domain name would only be used with explicit authorisation from the Complainant. Further, when a dispute arose between the Parties, the Respondent says that she immediately agreed not to renew the disputed domain name when it fell due for renewal on March 22, 2008. Indeed, she says that the disputed domain name was not renewed on that date and that, as explained in Section 3 above, delay in deleting the domain name is by reason of the Registrar’s procedures for deletion and, latterly, by the domain name currently being locked as a result of this administrative proceeding. As noted above, the Respondent has consented to transfer of the disputed domain name.
5.2 In the circumstances, it is not necessary to recite the Complainant’s contentions under paragraph 4(a) of the Policy.
6. Discussion and Findings
A number of decisions under the Policy dealing with transfer by consent are recited in the Preliminary Panel Decision in BHP Billiton Innovation Pty Ltd. v. OS Domain Holdings IV LLC., WIPO Case No. D2008-0488. Suffice it to say that where, as in this case, the Respondent consents to transfer of the disputed domain name and the Complainant acquiesces, there is no requirement that the Panel should give a reasoned Decision in relation to whether the requirements of paragraph 4(a) of the Policy have been satisfied. Indeed, to do so would be superfluous.
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 domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: July 15, 2008
1 “Oushang” is Chinese for “auchan”
Full & Egal Universal Law Academy