Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.
Respondent is Rishat Dunaev of Tatarstan, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2012. On May 9, 2012, the Center transmitted by email to the Registrar request for registrar verification in connection with the disputed domain name. On May 9, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 10, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 14, 2012.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2012. Respondent did not answer the Complaint. Accordingly, the Center notified Respondent’s default on June 5, 2012.
On June 6, 2012, the Center received an email communication from Respondent, indicating its willingness to give the disputed domain name. Complainant filed a request for suspension of the proceedings on June 8, 2012, and on June 11, 2012, the Center confirmed that the proceedings would be suspended until July 10, 2012. Upon request of Complainant of July 6, 2012, the proceedings were subsequently reinstituted on July 9, 2012.
The Center appointed Clark W. Lackert as the sole panelist in this matter on July 13, 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
Complainant is a food retailer based in France which maintains numerous retail locations in multiple countries. Complainant owns multiple trademark registrations for AUCHAN for food products and retail services including registrations in the European Community, the Russian Federation, and Australia. Complainant also owns domain names which incorporate its AUCHAN trademark including , , and .
According to the information provided by the Registrar, the disputed domain name was registered by Respondent on September 22, 2011. The disputed domain name has been registered through the privacy service PrivacyP, which, upon receipt of the Complaint, confirmed the registrant’s identity as “Privat Person”, Rishat Dunaev of Tatarstan, Oman. The record also shows that WhoIs records for the disputed domain name previously identified the registrant as " Private Person", Rishat Dunaev of Tatarstan, Russian Federation.
The record shows that Complainant sent a cease and desist letter to Respondent on October 17, 2011, which notified Respondent of Complainant’s rights in the AUCHAN trademark and requesting that Respondent cease use of the disputed domain name and transfer the disputed domain name to Complainant. There is nothing in the record which indicates that Respondent replied to this cease and desist letter.
Prior to and during this proceeding, the disputed domain name was used to display links to third party websites and has subsequently resolved to a webpage which appears to be held by a registrar. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its AUCHAN trademark because it incorporates the AUCHAN trademark in its entirety. Complainant has provided specifics of past UDRP decisions which regard its AUCHAN trademark as well-known and argues that the use of the term “catalogue” in the disputed domain name does nothing to distinguish the disputed domain name from Complainant’s AUCHAN trademark because “catalogue” is a generic term with connotations which could lead Internet users to believe that the content of the disputed domain name is connected to Complainant. Complainant maintains that it has not provided Respondent with any authorization to use its AUCHAN trademark and argues that there is no indication that Respondent has any prior rights or legitimate interests in the disputed domain name or that Respondent is commonly known by the name “Auchan”. Regarding bad faith, Complainant alleges that Respondent must have known of its AUCHAN trademark when registering the disputed domain name because the disputed domain name incorporates the well-known AUCHAN trademark in its entirety. Complainant also cites the content of the disputed domain name as an indication of Respondent’s knowledge of its trademark, noting that the webpages displayed at the disputed domain name have featured links to third party websites of Complainant’s competitors. Complainant alleges that these links are sponsored and generate revenue for Respondent when accessed by visitors of the disputed domain name. Complainant also cites efforts by Respondent to conceal his/her identity and Respondent’s revision of the website’s content to a registrar holding page after receiving Complainant’s cease and desist letter as further indications of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions by the deadline of June 5, 2012. On June 6, 2012, Respondent contacted the Center stating that he/she had no need for the disputed domain name and was willing to transfer the disputed domain name if desired. Complainant responded to this communication requesting the authorization code in order to initiate transfer; however it appears that Respondent did not reply to this request. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that from the record that Complainant has established rights in the AUCHAN trademark. These rights are recognized in the Russian Federation and in Australia, jurisdictions cited in WhoIs database as the residences of Respondent and the privacy service utilized by Respondent among other countries. Complainant’s registered trademark rights in the AUCHAN trademark date to at least as early as 1986, well before the registration of the disputed domain name on September 22, 2011.
It has been held by prior UDRP panels that AUCHAN is a well-known mark. See, e.g., Groupe Auchan v. Net Admin,WIPO Case No. D2011-2030 (citing the AUCHAN trademark as “world-renown” and “well-known”), Groupe Auchan v. Zhenghui,WIPO Case No. D2011-2123 (citing the “widespread reputation” of the AUCHAN marks), and Groupe Auchan v. Bai Huiqin,WIPO Case No. D2009-0840 (finding that AUCHAN is a “famous or well-known trade mark within the global retailing industry”). Given that AUCHAN trademark has been recognized as well-known and that an Internet search for the term results in links predominantly related to Complainant’s products and services, the Panel finds that that use of this trademark in a domain name creates a domain name which has the potential to create consumer confusion. Specifically, consumers are likely to believe that the disputed domain name is owned by, sponsored by, or otherwise affiliated with Complainant.
It has been held by prior UDRP panels that the incorporation of a trademark in its entirety into a domain name supports a finding of a likelihood of confusion. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark ‘Xerox’. This is sufficient to justify the finding that the name is ‘confusingly similar’ to the Complainant’s registered trademarks”). The Panel considers that the incorporation of the term “catalogue” in the disputed domain name does nothing to distinguish the disputed domain name from Complainant’s AUCHAN trademark. The term “catalogue” has been cited as a generic term in multiple UDRP decisions involving domain names which combined this term with a trademark (see, e.g., Jardiland v. Ayr Sha,WIPO Case No. D2011-1873 which concluded that “the generic word ‘catalogue’ is insufficient in itself to avoid a finding of confusing similarity” and Inter IKEA Systems B.V. v. WhoisGuard Protected / NA, Jerry Wray,WIPO Case No. D2010-1919 which concluded that the term was “not sufficient to refute the confusing similarity between the disputed domain name and the Complainant’s trademark” in a case regarding the domain name ). Considering that Complainant uses its AUCHAN trademark in connection with consumer goods and retail services, the use of the term “catalogue” in this case actually aggravates the likelihood of consumer confusion because consumers are likely to believe that the disputed domain name serves as a portal for obtaining Complainant’s products and/or services.
The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, to which Respondent did not contest. The Panel also finds no evidence in the record to indicate that Respondent is licensed to use Complainant’s AUCHAN trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the disputed domain name or the term “Auchan” or the terms “Auchan Catalogue”.
Under the circumstances, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
It has been established that the registration of a domain name incorporating a well-known trademark can constitute registration in bad faith, since it is unlikely that the registrant was unaware of the established rights in the mark at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397 (finding bad faith since it was unlikely that the registrant of was unaware of Complainant’s well-known NIKE trademark when registering the domain name) and Dr. Ing. H.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488 (finding bad faith, noting that it was implausible that Respondent was unaware of Complainant’s trademark PORSCHE when registering ). Given that the AUCHAN trademark has been recognized in prior UDRP cases as well-known and appears to have been used in connection with Complainant’s products and services, the Panel finds that it is difficult to imagine that Respondent was unaware of Complainant’s trademark rights when registering the disputed domain name . Any doubts in favor of Respondent are minimized upon consideration of the use of “catalogue” in the disputed domain name and its connotations when combined with a trademark used for retail products and services.
There is evidence suggesting that the links displayed on Respondent’s website were efforts to trade off the goodwill of Complainant’s trademarks. Specifically, Respondent’s website has featured primarily of links relating to retail services identical and similar to those provided by Complainant. The incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728.
The content of the disputed domain name suggests to the Panel that Respondent is aware of Complainant. Specifically, the record shows that Respondent’s website has featured links to pages advertising products and services provided by third party competitors of Complainant such as Carrefour (“” and “”) and Supermarche Ligne (“”). Registration and use of a domain name incorporating a trademark and providing links which relate to goods or services provided under that Complainant’s trademark has been held to be indicative of a Respondent’s knowledge of the goods or services provided under the trademark. See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517.
By registering the disputed domain name and offering links to third party services directly competitive with those of Complainant, Respondent is diverting traffic from Complainant’s domain names which use Complainant’s AUCHAN trademark. There is no evidence in the record to refute this contention. Registration of a confusingly similar domain name for the purpose of deriving pay-per-click advertising revenue from links offering competitive products or services has been found in prior UDRP cases to be indicative of bad faith under paragraph 4(b)(iv) of the Policy. See, e.g., Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 and S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. Continued use of the disputed domain name by a party other than Complainant without license or approval contributes to the risk that consumers will mistakenly believe that the content featured at the disputed domain name is offered, sponsored, endorsed, or otherwise approved by Complainant.
Also, while Respondent’s website appears (since the commencement of the dispute) to have changed to resolve to a webpage which appears to be held by a registrar, this does not preclude a finding of bad faith in respect of the use that has been made of the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)
Accordingly, the Panel finds that Complainant has satisfied the requirements of 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 Complainant.
Clark W. Lackert
Sole Panelist
Date: July 27, 2012
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