Complainant is Groupe Auchan, Croix, of France, represented by Dreyfus & associés, of Croix, France.
Respondent is Slawomir Cynkar, of Czudec, Poland.
2. The Domain Names and Registrar
The disputed domain names <auchanpolska.com> and <auchan24.com> are registered with OnlineNic, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2009. On March 11, 2009, the Center transmitted by email to OnlineNic, Inc., a request for registrar verification in connection with the disputed domain names. On March 12, 2009, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on March 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 7, 2009.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 27, 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
Complainant is Groupe Auchan, one of the world's leading food retailer groups, running 1163 hypermarkets and supermarkets in 12 countries. The first supermarket in Poland was opened in Piaseczno, near Warsaw, in May 1996. Today Auchan has a local presence in Poland with its affiliate Auchan Polska, and a total of 24 Auchan hypermarkets.
Complainant is the owner of numerous International trademark registrations, two Community trademarks registrations including the element AUCHAN as well as a national Polish trademark registration for the word AUCHAN.
AUCHAN is part of Complainant's registered company name, Groupe Auchan. It is also part of the registered name of its Polish affiliate Auchan Polska.
Complainant operates, amongst others, the following domain names which reflect its marks: <auchan.com>, <auchan.fr>, <auchan.net>, <auchan.hu>, <groupeauchan.com>, <auchan.es>.
Complainant and its local Polish affiliate are communicating with Polish customers through a dedicated website: <www.auchan.pl>. Besides, Complainant's affiliate, Auchan Polska, is the owner of <auchan.com.pl>, <auchan.org.pl>, <auchan.info.pl>, <auchan.net.pl>.
Complainant has become aware of the registration of the domain names <auchanpolska.com> and <auchan24.com> on May 19, 2008 by the Respondent domiciled in Poland.
The disputed domain names were redirecting to the website of the administrator of these domain names (Nazwa.pl). They now redirect to Complainant's official website <www.groupe-auchan.com>.
By registered letter and e-mail of July 7, 2008, Complainant notified Respondent that the registration of the domain names <auchanpolska.com> and <auchan24.com> containing and reproducing the trademark AUCHAN in its entirety was constituting an infringement to Complainant's intellectual property rights, and asked him to transfer amicably the domain names <auchanpolska.com> and <auchan24.com> to Complainant. Respondent never replied to Complainant.
5. Parties' Contentions
A. Complainant
Complainant contends that the disputed websites are identical or confusingly similar to its trademarks.
It owns inter alia the following trademark registrations containing or reproducing the element AUCHAN, which predate the registration of the domain names.
- International Trademark AUCHAN, n° 284616, in classes 3, 9, 11, 25, 29, 32;
- International Trademark AUCHAN, n° 332854, in classes 35 to 42;
- International Trademark AUCHAN, n° 407814, in classes 1 to 42;
- International Trademark AUCHAN, n° 531717, in classes 3, 9, 11, 25, 29, 32;
In Poland, where the Respondent is domiciled, the Complainant owns inter alia:
- International Trademark AUCHAN, n° 580995, registered on January 29, 1992 in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30;
- International Trademark AUCHAN n° 585353, registered on May 11, 1992 in classes 3, 9, 11, 25, 29, 32;
- International Trademark AUCHAN n° 625533 registered on October 19, 1994 in classes 1 to 42;
- International Trademark AUCHAN, n° 626147 registered on October 31, 1994 in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30, 32, 36, 37;
- Community Trademark AUCHAN, n° 000283101, registered on August 19, 2005 in class 1 to 42;
- Community Trademark AUCHAN, n° 004510707, registered on January 19, 2007 in classes 35 and 38;
- Polish Trademark AUCHAN, n° 152266, registered on October 11, 1995 renewed in classes 3, 9, 11, 25, 29, 32, 42.
Furthermore Complainant contends that Respondent has no rights or legitimate interests in respect of the domain names. He is neither affiliated with the Complainant in any way nor has Complainant authorized Respondent to use or register its AUCHAN trademarks or to apply for any domain names incorporating said mark. Respondent has no prior rights or legitimate interests in the disputed domain names and is not known under the name “Auchan” or any other similar term.
Respondent never replied to Complainant's cease-and-desist letter and reminders. Consequently, Respondent did not take the opportunity to expose a legitimate interest or right for the registration of the disputed domain names and more generally regarding the term “auchan”.
Respondent has not made significant use of the domain names, namely, the redirection to the website at their administrator (Nazwa.pl). And since the disputed domain names incorporate the AUCHAN trademark of Complainant in entirety, Respondent cannot reasonably pretend that he has registered the disputed domain names with the purpose of developing a legitimate activity.
The Complainant further contends that the domain names were registered by Respondent in bad faith. Complainant is well-known internationally and in Poland where Complainant is present with 24 AUCHAN hypermarkets. Regarding this business presence in Poland, it is obvious that Respondent knew or must have known Complainant's trademark and hypermarkets at the time he registered the disputed domain names.
Furthermore the mark AUCHAN is highly distinctive, it is thus highly unlikely that Respondent was ignoring Complainant's trademark at the time he registered the disputed domain names. Beside this the registration of more than one domain names including Complainant's trademark suggests the bad faith of Respondent.
The fact that Respondent has changed the direction of the disputed domain names and now directs them to a website belonging to Complainant only evidences his knowledge of Complainant.
Finally Complainant contends that the disputed domain names were registered and are being used by Respondent in bad faith for the following reasons:
Respondent has registered several domain names including Complainant's trademark the same day. He is the owner of numerous domain names namely 688. According to Complainant, he is inter alia the owner of other domain names reproducing well-known trademarks and among other the domain names <loreal24.com>, <citroen24.com>, <dior24.com>, <renault24.com> and <promod24.com>.
The fact that Respondent has redirected the disputed domain names after receiving Complainant's cease-and-desist letter to redirect them to Complainant's website does not diminish the fact the domain names are being used in bad faith
B. Respondent
The Respondent did not submit a formal Response in reply to the Complainant's contentions. However, on March 24, 2009, the Respondent sumitted to the Center, presumably directed at the Complaint stating inter alia its awareness of the Complainant and its supermarkets and offering the disputed domain names for sale for € 30,000 or alternatives for rent for € 15,000.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant started its retail business under AUCHAN in 1961 in France and is present under this name in Poland since 1995. The Complainant has adduced evidence to demonstrate that it is the owner of trademark for AUCHAN as word or reproducing the word AUCHAN within the context of a device in multiple jurisdictions such as the member states of the European Union and in particular Poland.
The disputed domain name <auchanpolska.com> is composed of “auchan”, the polish word “polska” and the suffix “.com”.
“Auchan”, is identical with the Complainant's registered trademark, “polska” is the polish name for Poland. The last part of the domain name “.com” is a generic indicator of a gTLD. The word “polska” is only a geographical description which does not provide any additional specification of sufficient distinction from Complainant or its Auchan marks. It was held in many other proceedings before the Center that the addition of a geographical term to a Complainant's trademark does not change confusing similarity between the domain name and the trademark. (Compagnie Gervais Danone v. Global Conventions (Pvt) Ltd,WIPO Case No. D2009-0077; Volvo Trademark Holding AB v. Sc-RAD Inc.
WIPO Case No. D2003-0601). The addition of “polska” even increases the level of confusion by serving to suggest that the website available under the domain name is the official country specific website of the trademark owner. Especially since the generic term chosen is a country where Complainant is present with a local affiliate whose name is exactly the disputed domain name AUCHAN POLSKA. It is also an accepted principle that the addition of suffixes such as “. com” being the gTLD is not a distinguishing factor (Compagnie Gervais Danone v. Global Conventions (Pvt) Ltd,
WIPO Case No. D2009-0077; Accor SA v. jacoop org,
WIPO Case No. D2007-1257).
The second disputed domain name <auchan24.com> consists of “auchan”, “24” and “.com”.
As stated above “auchan” is identical with the Complainant's trademark. Neither the number “24” nor the generic indicator of a TLD detracts from the confusing similarity between the trademark and the domain name (Sanofi-Aventis v. Protected Domain Services and Jan Hus, Husiten,
WIPO Case No. D2008-0463; Sanofi-Aventis v. Conciergebrain.com,
WIPO Case No.D2005-0660).
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant demonstrated Respondents lack of rights or legitimate interests in the disputed domain names. Respondent has not contested these allegations, since he is in default.
Seeing the difficulties for complainant to prove the negative that respondent does not have any rights or legitimate interests in the disputed domain names and the facility for respondent to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, it is well established that the burden of proof shifts to the respondent to rebut the complainants allegations as soon as complainant establishes a prima facie case that the respondent lacks rights or legitimate interests.
The Panel finds that Complainant has made out a prima facie case. Despite Respondent stating in its email communication that its “action, taken in good faith at the moment of registration of domains for AUCHAN, was a proof of my respect for the company”, the Panel note that the Respondent's offer to sell or rent the domain names does not give rise to any right or legitimate interest therein. As such, Respondent has failed to demonstrate any rights or legitimate interests, pursuant to paragraph 4(c) of the Policy. There is no relationship between Complainant and Respondent which would entitle Respondent to use the trademark. In addition to it does not appear on the record that Respondent is neither commonly known by the name “auchan” nor does he make a legitimate non-commercial or fair use of the domain name pursuant to paragraph 4(c) (ii) or (iii) of the Policy.
The Panel is convinced that Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4 (c) of the Policy.
C. Registered and Used in Bad Faith
As Complainant is internationally well-known and owns 24 hypermarkets in Poland, where Respondent is domiciled, and taking into account the high distinctiveness of the AUCHAN marks, it is inconceivable that Respondent registered the disputed domain names without knowledge of Complainant's rights in the AUCHAN marks. The Panel is therefore satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant's marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.
The disputed domain names long directed to the website of their administrator (Nazwa.pl). As Respondent has not made significant use of the domain names, the Panel has to decide whether such (non-)use is to be considered as use in bad faith under the Policy.
The absence of an active use of a domain name does not prevent a finding of bad faith as such. The Panel must examine all circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that may indicate bad faith use include the existence of a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving good faith use of the domain name (Groupe Auchan v. Jakub Kamma,
WIPO Case No. D2007-0565; Ladbroke Group Plc v. Sonoma International LDC,
WIPO Case No. D2002-0131; Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
Complainant has provided evidence for the international use of its trademarks and that they are well-known, including in Poland. More over Respondent has communicated an offer to sell or rent the domain names for in excess of Respondent's out of pocket costs. The Panel could not imagine any plausible actual or contemplated active use of the disputed domain name by Respondent in the present circumstances that would preclude a finding of bad faith.
The fact that the disputed domain names now direct to one of the Complainant's websites “www.group-auchan.com” does not diminish the fact that they are used in bad faith. This is not a legitimate offer of goods or services. Respondent is not authorized to use Complainant's trademark AUCHAN in any way. Beside this the Complainant has no control over this re-direction which could therefore be changed by the sole will of Respondent at any time.
The Panel is therefore convinced that the Respondent has registered and uses the domain names in bad faith.
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, <auchanpolska.com> and <auchan24.com> be transferred to the Complainant.
Andrea Jaeger-Lenz Sole Panelist
Dated: May 11, 2009
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