The Complainant is GROUPE AUCHAN of Croix, France represented by Dreyfus & associés, France.
The Respondent is Li Jian of Anhui, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 10, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On April 11, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 11, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of proceedings. On April 16, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceeding by the specified due date.
On April 19, 2012, the Center transmitted an email to the Complainant, informing the Complainant that the annexes to the Complaint were not received and requested the Complainant to transfer them at the Complainant's earliest convenience. On April 19, 2012, the Complainant transferred the Center the annexes to the Complaint.
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 April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 31, 2012. 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 French industrial group, one of the world’s leading in the food retailer industry. The Complainant was founded in 1961 by Gerard Mulliez and opened its first hypermarket in 1967.
The Complainant is running1335 hypermarkets and supermarkets in 12 countries and employs 186,000 employees.
In 2007, the Complainant had established revenue of approximately EUR 36.7 billion before tax.
In 1981, the Complainant began its international expansion. The Complainant currently has a local presence in various countries including, among others, China by its affiliate RT Mart hypermarkets, with a total of 42 Auchan hypermarkets, employing 86,000 employees.
The Complainant is the owner of numerous worldwide trademark registrations for the mark AUCHAN. For example: International trademark registration No. 284616 – AUCHAN (logo), with the registration date of June 5, 1964; International trademark registration No. 332854 – AUCHAN (logo), with the registration date of January 24, 1967; International trademark registration No. 407814 – AUCHAN, with the registration date of April 22, 1974; International trademark registration No. 531717 – AUCHAN (logo), with the registration date of November 22, 1988; International trademark registration No. 898156 – AUCHAN(logo), with the registration date of April 18, 2006; International trademark registration No. 1011777 – AUCHAN (logo), with the registration date of February 19, 2009; and many more.
The Complainant also developed its presence on the Internet and is the owner of numerous domain names consisting of the mark AUCHAN. For example: , and others.
The Complainant’s affiliate, Auchan China, is the owner of: , which was registered on March 21, 2000.
The disputed domain name was registered on February 22, 2011.
The disputed domain name resolves to an inactive page. 5. Parties’ Contentions A. Complainant
The Complainant argues that it sent a registered letter and e-mail to the Respondent informing it of the Complainant's rights in its trademark and requesting the Respondent to cease infringing the Complainant's rights and to transfer the disputed domain name to the Complainant. The Complainant contends that the Respondent never replied to the letter.
The Complainant further argues that it owns numerous AUCHAN trademarks, which were registered long before the Respondent had registered the disputed domain name.
The Complainant further argues that the disputed domain is identical or confusingly similar to a trademark it has rights in.
The Complainant further argues that the addition of the geographic term "CHINA" and the gTLD ".com" do not avoid the identity or at least confusing similarity between the disputed domain name and the Complainant's trademark.
The Complainant further argues that the addition of a generic term is more likely to increase the likelihood of confusion, especially when the generic term is a country where the Complainant is present.
The Complainant further argues that it has not authorized the Respondent to use its AUCHAN trademark or to apply for any domain name incorporating its trademark.
The Complainant further argues that the Respondent is not known by the name Auchan or any other similar term.
The Complainant further argues that the Respondent knew or must have known the Complainant’s trademark at the time it registered the disputed domain name.
The Complainant further argues it has successfully initiated several previous UDRP proceedings, in which the decision was to its favor and the UDRP panels chose to transfer the domain names at issue to the Complainant, since its trademark is well-known around the world and has a widespread reputation.
The Complainant further argues that the AUCHAN trademark is well-known in many countries and that the AUCHAN trademark is highly distinctive.
The Complainant further argues that the Respondent was aware, at the time of registration to the existing and exclusive rights held by the Complainant on the AUCHAN trademark.
The Complainant further argues that the use the Respondent is making of the disputed domain name is in bad faith. The Complainant further contends that the website under the disputed domain name refers to another company, but it seems that the displayed information is about the Complainant.
The Complainant further argues that the Respondent's use of the disputed domain name was an intentional attempt to attract Internet consumers by creating a likelihood of confusion with the Complainant’s name.
The Complainant further argues the Respondent had created a misleading website, giving the impression that it was linked to the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings be English.
The Panel cites the following with approval:
“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.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of English characters, rather than Chinese letters;
b) The disputed domain name consists of the English word “China”;
c) According to evidence provided by the Complainant, the website under the disputed domain name used to display the name “Hefei Auchan Biotechnology Co., Ltd.” in English;
d) The Respondent did not object to the Complainant request that English be the language of proceedings.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant have rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns multiple worldwide trademarks registrations for the mark AUCHAN. For example: International trademark registration No. 284616 – AUCHAN (logo), with the registration date of June 5, 1964; International trademark registration No. 332854 – AUCHAN (logo), with the registration date of January 24, 1967; International trademark registration No. 407814 – AUCHAN, with the registration date of April 22, 1974; International trademark registration No. 531717 – AUCHAN (logo), with the registration date of November 22, 1988; International trademark registration No. 898156 – AUCHAN(logo), with the registration date of April 18, 2006; International trademark registration No. 1011777 – AUCHAN (logo), with the registration date of February 19, 2009; and many more.
Also, the Complainant’s rights in the AUCHAN trademark have been established in numerous UDRP decisions (see e.g., Groupe AUCHAN v. Tryox, WIPO Case No. D2011-0470, Groupe AUCHAN v. Bai Huiqin, WIPO Case No. D2009-0840, Groupe AUCHAN v. Slawomir Cynkar, WIPO Case No. D2009-0314).
The disputed domain name integrates the Complainant AUCHAN trademark in its entirety, as a dominant element.
The disputed domain name differs from the AUCHAN trademark by the additional geographical term “china”, a hyphen and the gTLD suffix “.com”.
The addition of the geographical term “china” and the additional hyphen do not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s AUCHAN trademark as “china” stands for the People's Republic of China, where the Complainant conducts business. It is clear that the most prominent element in the disputed domain name is the term “Auchan”, which lacks an English dictionary meaning. The use of a hyphen between the mark AUCHAN and the word "china" in the disputed domain name also cannot avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281). Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s AUCHAN trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD suffix “.com” to the disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD suffix “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the AUCHAN trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the AUCHAN trademark since the year 1964. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a Respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's use of a highly distinctive trademark of the Complainant is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.”)
The Complainant submitted evidence proving that the Respondent was using the disputed domain name to promote, among others, goods and service that are related to the Complainant’s goods and services, while using a name that is very similar to the Complainant’s name.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b) of the Policy.
Moreover, the Panel also finds that the Respondent’s failure to respond to the Complainant’s cease and desist letter is a further indication of the Respondent’s bad faith (see Compiere Inc. v. Access, Denied,WIPO Case No. D2007-0131).
The Panel further notes that the website under the disputed domain name currently resolves to an offline page. This does not prevent a finding of bad faith registration and use.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademarks, the Respondent's use of the disputed domain name and the fact that the Respondent did not respond to the Complainant's cease and desist letter, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: June 12, 2012
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