WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Groupe Auchan v. Bai Huiqin Case No. D2009-0840 1. The Parties
The Complainant is Groupe Auchan of Croix, France.
The Respondent is Bai Huiqin of Handan, Hebei Province, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2009, in English language. On June 25, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 26, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name and providing the contact details for the disputed domain name. On June 29, 2009, the Center transmitted an email to the parties in both English and Chinese language concerning the language of the proceeding. The Complainant included in the Complaint a request that English be the language of proceeding. The Respondent did not file any submissions with respect to the language of the proceeding by the due date.
The Center has verified that the Complaint satisfies 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 proceeding commenced, on July 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on August 5, 2009. 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 A. The Complainant
The Complainant is a French company involved in retailing and the owner of several international multi-class trade mark registrations for the AUCHAN word and device trade marks covering numerous countries, including China, the earliest registered since October 19, 1994, and the owner of two national registrations in China for the word mark AUCHAN in classes 3 and 35, registered since February 21, 1997 and April 14, 1999 respectively (“the Trade Marks”).
The Complainant and its affiliates are also the owners of several domain names containing the trade mark AUCHAN, the earliest registered since April 1, 1996, including:
;
;
;
;
; and
. B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on December 14, 2008. 5. Parties' Contentions A. The Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant is a leading global retailer created by Gerard Mulliez in 1961, in Northern France. It opened its first hypermarket in Roncq (France) in 1967 and opened its first commercial centre in Englos (France) in 1969.
The Complainant began its international expansion in 1981 with the creation of Alcampo in Spain. Further Auchan hypermarkets were subsequently opened by the Complainant in various countries. The first Auchan hypermarket in Italy dates back to 1989. Auchan hypermarkets were opened in Luxembourg and Poland in 1996, in Hungary in 1998, and in China in 1999.
As per today, the Complainant is one of the world's leading food retailing groups running 1197 hypermarkets and supermarkets in 12 countries, employing 186 000 persons, and achieving a revenue before tax of 36.7 billion Euros in 2007. It has also diversified its activities to real estate and banking business through its subsidiaries Immochan and Banque Accord.
The Complainant is present in different parts of the world and inter alia in Asia. It entered this market in 1999 with the opening of the first Auchan hypermarket in China.
The Complainant has 31 Auchan hypermarkets in China and employs nearly 55,000 employees in China.
The activities of the Complainant to China have received widespread press coverage. The Complainant has made strong investments in order to expand in China.
As a result of the above, the Trade Marks enjoy a high notoriety all across China.
The Complainant sent a cease-and-desist letter to the Respondent requesting transfer of the disputed domain name by registered letter on January 31, 2009 and email on January 28, 2009.
The registered letter was returned on February 7, 2009 on the grounds of insufficient address details.
The Respondent has not replied to the Complainant despite numerous reminders sent to the Respondent by email.
A. The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The disputed domain name reproduces in its entirety the Complainant's trade mark AUCHAN with the sole additions of the term “groupe” and the gTLD extension “.mobi”.
AUCHAN is the most prominent part of the disputed domain name. In many WIPO UDRP decisions, the Panel considered that the incorporation of a trade mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered mark.
The disputed domain name reproduces the Complainant's trade name, GROUPE AUCHAN, in its entirety. As a result, the adjunction of the term “groupe” does not differentiate the disputed domain name from the Trade Marks, but increases the likelihood of confusion.
The term groupe is a generic element that is insufficient to create a distinguishable sign from the original such that the issue of likelihood of confusion may be avoided.
The addition of the gTLD indication does not prevent likelihood of confusion since it is necessary for the registration of the domain name itself. The extension “.mobi” is not to be taken into consideration when examining the identity or similarity between the Trade Marks and the disputed domain name.
B. The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent is not known under the name AUCHAN, GROUPE AUCHAN or any similar terms.
The Respondent is not affiliated with the Complainant in any way, nor did the Complainant authorize Respondent to use or register its AUCHAN trade mark, or to apply for any domain name incorporating said mark.
The registration of numerous AUCHAN Trade marks long precedes the registration of the disputed domain name.
It can be inferred that the Respondent has no legitimate interest in the disputed domain name. The Respondent has never claimed any prior rights or legitimate interests in the disputed domain name. The Respondent never replied to the Complainant's cease-and-desist letter and reminders.
Consequently, the Respondent did not take the opportunity to expose a legitimate right or interest for the registration of the disputed domain name and more generally regarding the term “auchan”.
When a respondent does not avail himself of his right to respond to a Complaint, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name.
The Respondent's contacts appear to be erroneous since the cease-and-desist letter sent by the Complainant was returned with the mention “insufficient address”. It can be deducted from the secretive nature of the Respondent that he has no rights or legitimate interests in the disputed domain name.
The disputed domain name reproduces in its entirety the famous trade mark AUCHAN of the Complainant and is identical to the Complainant's trade name GROUPE AUCHAN. The Respondent cannot thus reasonably pretend that the Respondent has registered the disputed domain name with the purpose of developing a legitimate activity.
C. The domain name was registered and is being used in bad faith
Regarding registration in bad faith
It seems obvious that Respondent knew or must have known of the Complainant at the time the Respondent registered the disputed domain name.
The Complainant is a well-known group at an international scale, which has expanded its activities from Western Europe to Eastern Europe, Asia and in particular China. Media have largely reported this expansion.
The mark AUCHAN is highly distinctive. It is thus highly unlikely that the Respondent was ignoring the Complainant's trade mark at the time the Respondent registered the disputed domain name.
The Complainant is also very active in the protection of its trade mark AUCHAN through judiciary as well as extra-judiciary proceedings. The Complainant has successfully initiated the following UDRP proceedings:
Groupe Auchan v. Registrant [1429578]: Broadcast Technology,WIPO Case No. D2009-0313;
Groupe Auchan v. Slawomir Cynkar,WIPO Case No. D2009-0314;
Auchan v. Bruno Jolly, Event & Go,WIPO Case No. D2007-0886;
Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565;
GROUPE AUCHAN v. John Hilinski,WIPO Case No. D2007-0268;
Groupe Auchan v. R. Wijma,WIPO Case No. D2007-0175;
Auchan v. Hostdativiet,WIPO Case No. D2006-1096;
Auchan v. Cantucci Commercial Corp.,WIPO Case No. D2005-1195;
Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004;
Auchan v. Web4comm Srl Romania,WIPO Case No. DRO2005-0001;
Auchan v. Oushang Chaoshi,WIPO Case No. D2005-0407.
These decisions underline the notoriety of the trade mark AUCHAN, its international use and well-known character. They have also held that the trade mark AUCHAN is well-known in many countries. They have also underlined that the trade mark AUCHAN is widely-known. They have insisted on the reputation of the trade mark AUCHAN and the scope of its reputation.
Besides, a mere search on Google or any other search engine on “auchan” would have revealed the existence of the Complainant to the Respondent. Indeed, almost all the results of said searches conducted on Google relate to the Complainant's websites or to websites referring to the Complainant.
The disputed domain name reproduces the Complainant's trade name in its entirety which is so highly suspicious that coincidence in the absence of explanations from the Respondent is inconceivable. The Respondent most likely registered the disputed domain name to prevent the Complainant from reflecting its trade mark AUCHAN and its trade name GROUPE AUCHAN in a corresponding domain name.
In addition to that, the Respondent did not reply to the Complainant's emails. The cease and desist letter of the Complainant sent by registered letter was sent back with the mention “insufficient address”. These elements indicate that the Respondent has tried to hide the Respondent's contact details, which constitutes another clue that the registration was made in bad faith.
Therefore, it seems quite difficult to sustain that the Respondent was not aware of the existence of the Complainant at the time it registered the disputed domain name.
All the above mentioned circumstances confirm that the disputed domain name was registered in bad faith.
Regarding use in bad faith
The disputed domain name is also used in bad faith.
The disputed domain name incorporates a well-known mark. The AUCHAN trade mark is indeed widely-known, especially in China where the Respondent is domiciled. As stated by a previous panel, the Complainant's trade mark AUCHAN is widely known especially in the relevant sector of retail in many countries including China.
The Respondent did not reply to the Complainant's cease-and-desist letter despite its numerous reminders via email.
The Respondent failed to provide sufficient contact information to the Registrar which evidences the Respondent's bad faith.
In view of the above elements, there can be no possible good faith use of the disputed domain name.
Furthermore, the disputed domain name directs Internet users to a website offering skincare products branded under the mark MOORE. Internet users are thus likely to believe that the Complainant is developing a home brand of skincare products under the mark MOORE, which is untrue, and that the Respondent's website is an official website of the Complainant, which is not the case. The Respondent is thus taking advantage of the Complainant's reputation and goodwill to attract Internet users to the Respondent's website in order to obtain commercial gains for his company instead of the Complainant by misleading Internet users. This use of the disputed domain name is also constitutive of bad faith.
Panels have previously stated in numerous decisions that using famous trade marks to attract Internet users to a website for commercial gain constitutes bad faith use. Furthermore, it has been previously established that bad faith may be present where a domain name is so obviously connected with such a well-known product that its very use by someone with no connection to the product suggests optimistic bad faith.
The Respondent's registration and use of the disputed domain name meet numerous indicia of bad faith commonly accepted by courts and UDRP panels in domain name cases. Any one of the following factors by itself may be sufficient to prove bad faith registration or use of the disputed domain name. The cumulative effect of the following examples of bad faith on the part of Respondent can result only in the Panel determining that the domain name was registered in bad faith pursuant to the Policy: B. The Respondent
The Respondent did not reply to the Complainant's contentions. 6. Decision 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) 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. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant drafted the Complaint in English and this choice of language is related to the combined fact that the English language is the language most widely used in international relations and that it is one of the working languages of the Center;
(2) The Complainant has exhausted all efforts to contact the Respondent and made all reasonable efforts to bring this dispute to the attention of the Respondent. However, the Respondent never answered the Complainant's registered letter nor the reminders sent by the Complainant. As a result, it was not possible for the Complainant to come to an agreement on the issue of the language of proceedings with the Respondent;
(3) In a recent similar case where the language of the proceedings should have been Chinese and where the Respondent did not reply to the Complainant's cease-and-desist letter, the Panel determined that English shall be the language of the proceeding;
(4) 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;
(5) The Complainant is located in France and has no knowledge of Chinese. In order to proceed in Chinese, the Complainant would have had to retain specialised translation services at cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of this proceeding. It should be recalled in this respect that the procedure under this Policy was designed particularly in the interest of speed and low cost;
(6) Many WIPO UDRP decisions have recognized that using the registration agreement's language would lay an undue burden on the Complainant;
(7) In many relevant WIPO UDRP decisions, the Panel decided that since the Complainant was unable to communicate in the language of the registration agreement, the proceeding would inevitably be delayed unduly, and the Complainant would have to incur substantial expenses if the Complainant were to submit all documents in said language.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On June 26, 2009, HiChina Zhicheng Technology Ltd transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
There is no evidence that the Respondent does not understand the English language.
The disputed domain name comprises romanised latin script and is not a Chinese language domain name.
However, the Respondent's website to which the disputed domain name is resolved (“the Website”) is in Chinese language.
No evidence has been filed to suggest that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding if English is the language of the proceeding.
The Panel has taken into account the submissions filed by the Complainant and the WIPO UDRP decisions referred to by the Complainant in support of the Complainant's submissions. The Panel does not find all of the submissions filed by the Complainant on the issue of the language of the proceeding persuasive. Had the Respondent filed cogent submissions requesting that the language of the proceeding be Chinese, it is likely the Panel would have chosen Chinese as the language of the proceeding. However, absent any such submissions, and having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. 6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The domain name is identical with or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration. The Panel also finds that the Complainant's trade mark AUCHAN is a famous or well-known trade mark within the global retailing industry, including in China, where the Respondent is based. The Panel also finds that the Complainant has rights in the trade name GROUPE AUCHAN (“the Trade Name”) acquired through use.
The disputed domain name comprises the Trade Marks and the Trade Name in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it” (J. Thomas McCarthy, McCarthy on Trade Marks and Unfair Competition (4th ed. 1998), General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087, PCCW-HKT DataCom Services Limited v. Yingke, HKIAC Case No. 0500065).
It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The use of a hyphen in the disputed domain name does not serve to distinguish the disputed domain name in any way. The hyphen used in the disputed domain name should be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Trade Marks and the Trade Name.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondent of the dispute, 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
(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks or the Trade Name. The Complainant has prior rights in the Trade Marks and the Trade Name which precede the Respondent's registration and use of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The evidence shows that the Respondent has intentionally registered and used the disputed domain name for the purpose of attracting, for commercial gain, users to the Website, or for the purpose of selling the disputed domain name (see below).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel disagrees with the Complainant's assertion that the Respondent has provided false, misleading, and/or incomplete contact information in breach of paragraph 4(a)(iii) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
By virtue of the use of the Trade Marks and the Trade Name in the disputed domain name and the promotion of MOORE branded skincare products on the Website, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Respondent, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
Circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.
The last page of print-outs from the Website included in Annex 23 to the Complaint (and dated June 16, 2009) contains the wording in Chinese:
“此域名转让150万美元，有意请联系。”
Meaning:
This website is for sale for USD1.5 million. If you're interested, pleasecontact us.
At some stage following receipt of the Complaint, this wording was removed from the Website and as at the date of this Decision the wording is no longer on the Website.
This is clear evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(i) of the Policy.
The failure of the Respondent to respond to the Complaint and to the letters of demand from the Complainant further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: August 11, 2009
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