The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & Associés, France.
The Respondent is Evgeniy V Volyk of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2014. On November 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 12, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On November 12, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 in both English and Russian, and the proceedings commenced on November 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. The Response was filed with the Center on December 8, 2014.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on December 12, 2014. 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 world leading group in the food retail industry created by Gerard Mulliez in 1961, in Northern France. Group Auchan operates in 16 countries in Europe as well as Asia, and develops its activities through its core businesses: hypermarkets, supermarkets, real estate, banking and ecommerce. According to the uncontested allegations of the Complainant, it has a workforce of 302,500 employees performing more than 150 different jobs and generated more than 60 billion euros in revenue including taxes for the chains in 2013.
Moreover, the Complainant carries out its banking activities through its subsidiary Oney Banque Accord which increases its clients’ spending power by providing various financial products and services such as financing, bank and private payment cards, insurance and gift vouchers.
The Complainant has been operating in the Russian market since 2002. Auchan Group in the Russian Federation engages in a variety of sectors – inter alia Oney Banque Accord offers credit facilities in Auchan hypermarkets via its subsidiary BA Finans.
The Complainant pursues its activities under several trademarks including, in particular, the numerous AUCHAN trademarks registered throughout the world:
- International trademark registered on July 29, 1996, No. 658656 and covering goods and services in classes 1, 6, 7, 10, 12, 13, 14, 15, 17, 19, 20, 22, 23, 24, 26, 27, 28, 31, 33, 34, 35, 38, 39, 40, 41 and 42;
- International trademark registered on October 19, 1994, No. 625533 and covering goods and services in classes 1 to 42;
- International trademark registered on October 31. 1994, , No. 626147 and covering goods and services in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30, 32, 36 and 37.
In addition, the Complainant owns domain names reflecting its trademarks: (1) registered on April 1, 1996, (2) registered on August 23, 2001 and (3) registered on November 15, 2004.
The Respondent is Evgeniy V Volyk who lives in Moscow, Russian federation. He introduces himself as a person working in a bank sphere.
The disputed domain name was registered on April, 17, 2012. The Registration Agreement is in Russian. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant requests that the language of proceedings be English as it claims that fairness requires both parties being able to prepare their submissions in the language of the proceedings without incurring additional expanses for translation. Since the Complainant is located in France and has no knowledge of Russian, it contents that the cost of specialized translation is likely to be higher than the overall cost for the present proceedings. Consequently, in the Complainant’s opinion, the use of Russian in the proceeding would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings. In claiming so, the Complainant refers to many previous UDRP decisions. Furthermore, it asserts that the Respondent speaks English which is reflected in the exchanges he had in English with the Complainant.
Secondly, the Complainant contends that on June 25, 2014 its representatives sent a cease-and-desist letter to the Respondent by email and registered letter on the basis of its trademark rights. After the third reminder, the Respondent replied to the Complainant’s representatives asking for documents that would attest the use of the trademark AUCHAN in the banking sector. According to the Complainant, its representatives sent to the Respondent the links to the relevant websites that constitute a proof of the Complainant’s banking activities via the trademark AUCHAN in the Russian Federation and reiterated its request for the transfer of the disputed domain name. Despite reminders, the Complainant asserts that it obtained no reply from the Respondent before October 28, 2014 when the Respondent replied that he was willing to sell the domain name for USD 70,000.
The Complainant bases its claim on the following legal grounds: (a) the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights (paragraph 4(a)(i) of the Policy), (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph4(a)(ii) of the Policy) and (c) the domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant contends that the disputed domain name reproduces the Complainant’s famous trademark in its entirety which may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark. In doing so, the Complainant refers the Panel to numerous UDRP decisions affirming such a position. In the Complainant’s view, adding the generic and descriptive term “bank” does not prevent the risk of confusion between the Complainant’s trademark and the disputed domain name. The Complainant emphasis that it may lead the Internet users to believe that the disputed domain name will direct them to a website offering the numerous services of the Complainant, particularly in the banking sector. As the Complainant has used the trademark AUCHAN in connection with a wide variety of products and services around the world, it finds that the public has learnt to perceive the goods and services offered under this mark as being those of itself. Therefore, the Complainant claims that the disputed domain name is confusingly similar to its trademark.
Furthermore, the Complainant contends that the Respondent is not in any way affiliated with it, nor has it authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating the said trademark. In the Complainant’s view, the Respondent is not commonly known by the name “Auchan”. Additionally, the Complainant underlines the Respondent did not make a demonstrate use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services as the disputed domain name resolves to an inactive page. The Complainant also directs the Panel attention to the fact that the Respondent was not seriously interested in actively using the disputed domain name as it offered the Complainant to buy for USD 70,000.
Finally, the Complainant finds that it is implausible that the Respondent was unaware of the Complainant’s right when he registered the disputed domain name as the trademark AUCHAN is a well-known throughout the world including the Russian Federation. This is, in the Complainant’s opinion, a proof that the Respondent acted in bad faith while registering the disputed domain name. In addition, the Complainant underlines the fact that a trademark search or even regular Google search at the time of the registration of the domain names would have revealed the Complainant's registrations of the AUCHAN trademark.
The Complainant also contends that is also used in bad faith as it is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the domain name. According to the Complainant, a clear inference can be drawn from the Respondent's operations - he is trying to benefit from the fame of the Complainant's marks. The Complainant asserts that bad faith can be also sustained through the offer of selling the disputed domain name to Complainant at USD 70 000 as it is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain names can be compelling evidence of bad faith registration and use. B. Respondent
Firstly, the Respondent contends that the disputed domain name was not registered for sale as it did not offer it to anybody until October 29, 2010. Instead, it claims that it asked for the documents proving the Complainant’s case and offer to meet a representative of the company to discuss the situation. The Respondent asserts that it had no knowledge that the Complainant pursues its activity also in banking sector before the Complainant’s representative explained it to him.
Secondly, the Respondent emphasizes that the sale offer made by him “was dictated only by desire to begin one project in business”. It further claims that the disputed domain name was registered to be used in the future as he wanted to facilitate communication between consumers and banks. The said product was named Automatic Unique CHANneled bank. According to the Respondent, Auchan is an abbreviation of Automatic Unique CHANneled. 6. Discussion and Findings
The language of the Registration Agreement for the disputed domain name is Russian. 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 Complaint was filed in English and the Complainant requested that the language of the administrative proceedings be English. The Respondent did not object to it. Moreover, the Respondent filed its Response in both Russian and English which together with the previous emails exchange between the Complainant and the Respondent prove that the Respondent understands English and is able to use it in writing. In line with the previous UDRP decisions in this matter (Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679), the Panel recognizes that the cost of translation would constitute an additional burden for the Complainant.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English as per paragraph 11(a) of the Rules.
As to the merits of the case, paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The Complainant proves that it holds following trademark registration:
- International trademark registered on July 29, 1996 No. 658656 and covering goods and services in classes 1, 6, 7, 10, 12, 13, 14, 15, 17, 19, 20, 22, 23, 24, 26, 27, 28, 31, 33, 34, 35, 38, 39, 40, 41 and 42;
- International trademark registered on October 19, 1994 No. 625533 and covering goods and services in classes 1 to 42;
- International trademark registered on October 31. 1994 No. 626147 and covering goods and services in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30, 32, 36 and 37.
The 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). Here, the disputed domain name incorporates the Complainant's AUCHAN trademark in its entirety.
It is also well established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150). Furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189; Compagnie Generale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047). The Panel concludes that the use of the generic word “bank” does not serve to distinguish the disputed domain name from the AUCHAN trademark in any significant way. Moreover, in the Panel’s opinion, adding the term “bank” to the Complainant’s trademark may even increase the risk of confusion as the Complainant is also involved in the banking sector (two of the Complainant’s trademarks No. 625533 and 626147 – are registered for services in class 36 - insurance underwriting; banks; exchange agencies; portfolio management; pawnbrokerage; debt recovery and collection; operating lotteries; issuing of travelers’ checks and letters of credit; real estate agencies (sale and rental of business assets and buildings); real estate appraisal; apartment house management).
The Panel accepts the Complainant’s assertion that the mere adjunction of a the generic Top Level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that gTLD is insufficient to avoid a finding of confusing similarity (L ‘Oreal v. Tina Smith,WIPO Case No. D2013-0820, Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and, as a consequence, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Respondent is not commonly known by the disputed domain name as the Panel is not persuaded with the argument that “Auchan” originates from Automatic Unique CHANneled. The Respondent did not submit any evidence proving that it indeed pursues any business activity under the name Automatic Unique CHANneled bank. In the Panel’s opinion, this name was created solely for the purpose of defense in this administrative proceeding.
The Panel recognizes also that the Complainant has neither authorized nor licensed the Respondent to use its trademark. The Complainant has also no business relationship with the Respondent – the Respondent is not a reseller or distributor of the goods and services offered by the Complainant and protected by the AUCHAN trademark.
The Respondent did not offer any evidences supporting its contentions regarding the alleged business project that the disputed domain name was created for. As a website that the disputed domain name resolves to remains inactive, there is no sign of use or demonstrable preparation to use in connection with a bona fide offering goods or services.
Thus, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b)(i) of the Policy states that in case the Panel establishes circumstances indicating that the 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 for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, they shall serve as an evidence of the registration and use of a domain name in bad faith.
Here, the Complaintant presented email communication proving that the Respondent offered the disputed domain name for a price of USD 70,000. This was even confirmed by the Respondent who also attached the relevant email to its Response. The Panel understands that it is well established in the UDRP case law that the respondent’s offer to sell a domain name in excess of the out of pocket expenses is a compelling evidence of bad faith registration and use (Imara Trade Marks BVI Limited v. Direct Privacy ID I078D, Domain Name Proxy Service, Inc., WIPO Case No. D2012-2183; Massachusetts Medical Society v. Michael Karle, WIPO Case No. D2000-0282; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001). Therefore, this is sufficient to establish the Respondent’s bad faith while registering and using the disputed domain name.
However, the Panel also underlines that the disputed domain name was registered on April, 17, 2012 and incorporates the Complainant’s AUCHAN trademark which was registered years before and is widely used all around the world, including in the Russian Federation. In light of the reputation of the Complainant’s AUCHAN trademark, the Respondent's reproduction of the trademark in the disputed domain name proves that the Respondent was or should have been aware of the existence of the Complainant’s trademark when he registered the disputed domain name. The Panel accepts the Complainant’s suggestion that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091, Caixa D'Estalvis I Pensions de Barcelona (“La Caixa ») v. Eric Adam, WIPO Case No. D2006-0464). Finally, the panel notes that the website at the disputed domain anem is inactive, but this does not present a finding of bad faith registration and use. Thus, the Panel finds that the disputed domain name was regsitered and is being used in bad fath.
Accordingly, the Panel finds that the Complaint has satisfied 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.
Piotr Nowaczyk
Sole Panelist
Date: December 26, 2014
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