The domain names are registered with iHoldings.com
Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2005. On November 18, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On November 22, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 November 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2005.
The Center appointed Thomas Hoeren as the Sole Panelist
in this matter on December 22, 2005. 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 worldwide leading retail group, created in France in 1961 by Gérard Mulliez. In 1981, Auchan started its worldwide expansion. Today, Auchan employs more than 3600 persons.
The Complainant is - among others - owner of the following registered trademarks:
- International trademark “AUCHAN”, designating among others Germany and Switzerland, n° 284616 in classes 3, 9, 11, 25, 29, 32;
- International trademark “AUCHAN” n° 782558 in classes 9, 36, 38, 42;
- International trademark “AUCHAN” n° 840895 in classes 1 to 45;
- Community trademark “AUCHAN”, n°000283101, in classes 1 to 42;
- Community trademark “AUCHAN”, n° 004510707,
in classes 35, 38.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following allegations.
It clearly appears that the disputed domain names are confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that these domain names directly refer to the Complainants’ services.
Furthermore, the Complainant also submits that the Respondent is not affiliated with the Complainant in any way. It has not authorized the Respondent to use its trademarks, or to seek the registration of any domain name incorporating said marks. The Respondent has no prior rights or legitimate interest in the domain names. The registration of several AUCHAN trademarks, as well as the registration of the various domain names owned by the Complainant, preceded the registration of the disputed domain names by years. Since the domain names in dispute are so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.
Finally, the Complainant submits that it seems obvious that the Respondent knew or must have known the Complainant at the time it registered the domain names. The use of the word “auchan”, along with the terms “france” and “hypermarches”, supports the fact that the Respondent knew of the Complainant when registering the domain names. Moreover, the Complainant doubts that the Respondent provided a proper address for the administrative contact as required under the Respondent’s Service Agreement. The Complainant has claimed that, according to the Whois information, the Respondent’s address is Tortola in the Bouvet Islands. However, the Respondent proposed to the Complainant to transfer the disputed domain names for 2 500 euros which had to be paid on Respondent’s account in a bank located in Switzerland. This behaviour has already been qualified of bad faith.
Finally, the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademarks in the corresponding domain names and to induce the Complainant to offer to purchase these domain names for a substantial sum of money. Indeed, as mentioned above, the financial proposals made by the Respondent to proceed to the transfer were disproportionate in relation to the out-of-pocket costs directly related to the registration and maintenance of the disputed domain names. The Respondent requested 250 euros for the transfer of the ten disputed domain names, which corresponds to 2 500 euros.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable.”
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The domain names in question are confusingly similar to the Complainant’s
registered trademarks. The domain names at issue and the trademarks both include
the trademark AUCHAN. The only difference between the disputed domain names
and the trademarks of the Complainant lies in the addition of the descriptive
terms “france” and “hypermarches”. These words do not
add a distinctive element to the disputed domain names that can be seen as taking
the domain names outside the realm of the obvious similarity with the Complainant’s
marks. In fact, these descriptive terms relate to the geographical origin and
the service fields with which the Complainant’s marks are associated.
It is well accepted that first-level domains, in this case “.com”,
“.net”, “.org”, “.info” or “.biz”,
are to be ignored when assessing identity or confusing similarity of a mark
and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO
Case No. D2000-0607).
The Panel thus finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain names.
The Complainant certified that it had not authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant’s trademarks. As the Respondent has apparently not used the domains names at issue, and in the absence of a Response from his part, the Panel sees no reason to assume that the domain names were registered in order to be put to legitimate use.
Thus, the Panel concludes that the Complainant has demonstrated a prima facie case of Respondent’s lack of rights or legitimate interests, which has not been challenged by the Respondent. Consequently, the second element of the UDRP has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.
First, bad faith cannot only be based upon the idea that the Respondent might have no proper address. The Whois information provided by the Complainant refers to Road Town and Tortola as the main information referring to the Respondent’s address. The second address section of the Whois data contains the term “B.V.I.”. The abbreviation “B.V.I.” refers to the British Virgin Islands whose main and largest island is in fact Tortola. Furthermore, Road Town is the capital of the British Virgin Islands. Finally, the British Virgin Islands belong to the United Kingdom. Further, it is by no means unusual or suspicious that a British citizen opens a banking account in a Swiss bank.
Under the “Registrant Country” entry, the Whois information refers to Bouvet Island and to “BV” as country code. This reference is apparently a registration error. The Bouvet Island is an uninhabited sub-antarctic volcanic island in the South Atlantic Ocean, south-southwest of the Cape of Good Hope (South Africa). It remains unclear who is responsible for linking the Registrant’s contact data with the Bouvet Island, although a domain name holder is always responsible for maintaining correct Whois details.
In any event, there is sufficient evidence to conclude in this case on the
basis of Paragraph 4.b(ii) of the UDRP. This provides that bad faith registration
and use will be made out where the Respondent has “registered the domain
names in order to prevent the owner of the trademark or service mark from reflecting
the mark in a corresponding domain name, provided that [the Respondent has]
… engaged in a pattern of such conduct”. A “pattern of conduct”
as required in Paragraph 4.b(ii) may involve multiple domain names directed
against a single Complainant (see Gruner + Jahr Printing & Publishing
Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment,
Inc. v. Savior Baby, WIPO Case No. D2000-1741).
The registration of ten domain names incorporating the Complainant’s marks
and different service and geographical descriptors obviously involves a pattern
of conduct directed against the Complainant, preventing it from reflecting its
marks in corresponding domain names (see Potomac Mills Limited Partnership
v. Gambit Capital Management, WIPO Case
No. D2000-0062; ISL Marketing AG, Federation International de Football
Association v. J.Y. Chung, <worldcup2002.com>, W Co. and Worldcup 2002,
WIPO Case No. D2000-0034).
Furthermore, the Respondent was most likely aware, at the time of registration of the disputed domain names, of the prior and exclusive rights held by Complainant on the AUCHAN trademarks. This awareness is suggested by the fact that the domain names include the terms “france” and “hypermarches” which exactly describe the origin and main business of the Complainant. The Respondent’s bad faith is further illustrated by his request to sell the disputed domain names to Complainant for 250 United States dollars each, which is in excess of the out-of-pocket expenses incurred by the Respondent for the domain names’ registration with the Registrar. Although this may not necessarily be the primary purpose of the registration of the disputed domain names by the Respondent, the latter obviously tried to make easy profit out of the domain names, if not by successfully trading on the fame of the trademarks through the website, at least by re-selling them to Complainant for an unreasonable sum exceeding by far the domain names registration and maintenance fees paid by the Respondent.
The Panel is thus satisfied that the Respondent registered and is using the
domain names at issue in bad faith in accordance with the criteria set out under
paragraph 4(b)(ii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names
