WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. Arab4Des Co, Karim Mohamed

Case No. D2012-0978

1. The Parties

The Complainant is Groupe Auchan of Croix, France, represented by Dreyfus & associés, France.

The Respondent is Arab4Des Co, Karim Mohamed of Egypt.

2. The Domain Name and Registrar

The disputed domain name <auchangallery.com> is registered with Name.com LLC. (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 a request for registrar verification in connection with the disputed domain name. On May 10, 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.

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 May 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2012. On May 20, 2012, the Center received two informal email communications from Karim Mohamed. On May 23, 2012, the Center received an email communication from Karim Mohamed containing a similar message as in previous email communications of May 20, 2012. The Respondent did not file a formal Response. Accordingly, the Center notified the parties about the commencement of panel appointment procedure on June 6, 2012.

The Center appointed Pravin Anand as the sole panelist in this matter on June 14, 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 an internationally renowned hypermarket chain and is a group involved in the food retail industry since the year 1961. The Complainant opened its first hypermarket in the year 1967 in France and its international expansion started in the year 1981. There are approximately 1335 Auchan higher markets all over the world. The Complainant employs over 158300 employees all over the world and has its presence in 12 countries and regions.

The Complainant is the registered proprietor of the trade mark AUCHAN and has international registrations for the same in classes 9, 35 and 38 as well as several community trade marks for a device which also contains the word mark AUCHAN. The Complainant is also the owner of the domain names <auchan.com>, <auchan.org> and <auchan.fr> and operates these domain names to promote its services.

The Respondent has registered the disputed domain name since the year 2012 and has not used the disputed domain name till date. In other words, the disputed domain name does not resolve into any active website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it is the registered owner of the trade mark AUCHAN and has registrations for the same in several classes and enjoys a worldwide reputation for the trade mark AUCHAN. The Complainant has cited two previous WIPO UDRP decisions which have recognized the rights of the Complainant in the AUCHAN trade mark (Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; Groupe AUCHAN v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No.D2009-1746).

The Complainant claims that the disputed domain name contains its trade mark in entirety and this itself is sufficient to establish that the disputed domain name is identical and confusingly similar to the Complainant’s registered trade mark.

The Complainant has also alleged that the incorporation of the term “gallery” does not in any way mitigate the risk of confusion. In fact, the Complainant claims that the use of the generic term “gallery” increases the risk of confusion. In this regard, the Complainant states that the term “gallery” refers to a mall in which the Complainant’s grocery stores are located and consumers are likely to link grocery stores to a mall. According to the Complainant, Internet users who visit the disputed domain name are likely to be confused and falsely believe that the disputed domain name is operated by the Complainant. The Complainant has also alleged that the mere addition of the generic top-level domain name (gTLD) “.com” cannot be taken into consideration when the identity between the Complainant’s trade mark and the disputed domain name is examined.

As regards the second limb of the Policy in paragraph 4(a)(ii), regarding the Respondent’s rights or legitimate interests in the disputed domain name, the Complainant submits that no such rights or legitimate interests exist. In this regard, the Complainant makes the following submissions:

(i) The disputed domain name has been registered much after the registration of the AUCHAN trade mark by the Complainant;

(ii) The disputed domain name is so similar to the AUCHAN trade mark that it could not be claimed by the Respondent that he intended to develop a legitimate activity through the disputed domain name;

(iii) The Respondent is not commonly known by the name “Auchan” and is in no way affiliated with the Complainant nor is it authorized by the Complainant to use the said trade mark or to seek any domain name registrations regarding the same;

(iv) The Respondent has incorporated the Complainant’s trade mark AUCHAN in its entirety and any addition of the generic term “gallery” is with the sole intention of benefitting from the fame and reputation of the Complainant’s trade mark.

As regards the requirement of the Policy under paragraph 4(a)(iii) and paragraph 4(b) that the domain name has been registered and is being used in bad faith, the Complainant has made the following submissions:

(i) Since the trade mark AUCHAN is a well-known trade mark and enjoys worldwide reputation, it is unlikely that the Respondent is not aware of the Complainant’s rights in the said trade mark. Further, since the Respondent has reproduced the AUCHAN trade mark in its entirety, it is evident that the Respondent was aware of the existence of the Complainant’s trade mark;

(ii) The search for the key word “Auchan” on the Internet would have revealed to the Respondent that the said trade mark was registered in favour of the Complainant and was used by the Complainant. The Respondent’s failure to conduct such a search is a contributory factor to its bad faith.

As regards the use of the disputed domain name in bad faith, the Complainant claims that the passive holding of the disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy in appropriate circumstances. The Complainant cites the decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 which holds that in case where the Respondent is passively holding the disputed domain name, the Complainant needs to satisfy the following two requirements to prove bad faith use:

(i) That the Complainant has a strong reputation and is widely known;

(ii) That the Respondent has provided no evidence of any actual or contemplated good faith use of the domain name.

The Complainant claims that it is unlikely that the Respondent will be able to establish any good faith use of the disputed domain name either actual or contemplated. The Complainant has also claimed that in the absence of any licence or permission from the Complainant to use the widely-known trade mark, no actual or contemplated legitimate use could reasonably be claimed by the Respondent. In the above facts and circumstances, the Complainant claims that the disputed domain name has been used by the Respondent in bad faith in spite of the fact that it is only passive held by the Respondent.

The Complainant has also cited several WIPO UDRP panel decisions in support of its above arguments.

B. Respondent

In response to the Complainant’s claim the Respondent, through its CEO Mr. Karim Mohammed, has stated that the disputed domain name was registered by the Respondent for one of its clients which had selected the disputed domain name and currently “owns” the same. The Respondent has stated that the responsibility of the Respondent is only in the registration process of the disputed domain name and after registration all responsibility “switches to the Client”. The Respondent has sought a resolution of the issue as soon as possible and has suggested returning the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the proprietor of the trade mark AUCHAN and owns several registrations for the said trade mark worldwide including international registrations in classes 9, 35 and 38.

The rights of the Complainant in the AUCHAN trade mark have been upheld by previous UDRP panels. The said trade mark has also been considered to be well-known by previous UDRP panels and this shows the reputation enjoyed by the said trade mark worldwide across several classes of goods and services (See Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; Groupe AUCHAN v. beijingyidutiandikejifazhanyouxiangongsi, WIPO Case No. D2009-1746; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).

In view of the above, this Panel is of the view that the Complainant has rights in the trade mark AUCHAN by virtue of its trade mark registrations and also by virtue of its wide Internet use of the said trade mark. These facts are also not disputed by the Respondent who has only made a summary informal response.

The disputed domain name incorporates the Complainant’s trade mark AUCHAN in its entirety and in this Panel’s view the mere addition of the generic term “gallery” does not refer the disputed domain name dissimilar to the Complainant’s trade mark AUCHAN. The principal part of the disputed domain name is AUCHAN which is the Complainant’s trade mark in entirety and the term “gallery” is not capable of distinguishing the disputed domain name from the Complainant’s trade mark. In this regard, reference may be made to the decision Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, wherein the Panel held that the addition of the term “girls” to the Complainant’s trademark NOKIA is not sufficient to distinguish the disputed domain name <nokiagirls.com> from the Complainant’s trademark NOKIA. Further, in the case of QuixtarInvestments, Inc. v. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138, the panel held that because the domain name <quixter-sign-up.com> incorporates in its entirety the Complainant's distinctive mark QUIXTER, the domain name is confusingly similar.

Further, the Complainant has alleged that the term “gallery” bears a correlation with the Complainant’s trademark AUCHAN and this remains undisputed by the Respondent. Several UDRP panels have held that the addition of a generic term, especially where such generic term is related to the business of the Complainant, does not in any manner lessen the risk of confusion (See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, where the Panel found that <ansellcondoms.com> is confusingly similar to the trademark ANSELL since the term “condoms” described the Complainant's products, the addition of said term is more likely to increase confusion).

Further, the addition of the gTLD ‘.com’ does not in any way lessen the risk of confusion and does not render the domain name dissimilar to the Complainant’s trade mark (See Accor S.A. v. jacoop.org, WIPO Case No. D2007-1257).

In view of the above, this Panel is of the view that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The disputed domain name does not resolve into an active website and the Respondent has failed to show any rights or legitimate interests in the disputed domain name. In fact, the Respondent has stated that it is a web service provider and has merely registered the disputed domain name for its client.

In any event, the disputed domain name incorporates the Complainant’s trade mark AUCHAN in its entirety. It is unlikely that the Respondent adopted the disputed domain name with the intent to develop a legitimate business activity under the same, especially since the trade mark AUCHAN has been registered and widely used by the Complainant much prior to the Respondent’s registration of the disputed domain name.

The Complainant has claimed that it has not licensed or authorized or permitted the Respondent to use its registered trade mark or to register a domain name on its behalf. In the absence of any licence or permission from the Complainant to use its widely-known trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent and in these circumstances the Respondent clearly does not have any rights or legitimate interests in the disputed domain name.

Based on the above facts and circumstances, this Panel is of the view that the Complainant has satisfied the requirements of the Policy under paragraph 4(a)(ii) of the Policy and that the Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant submits that it is unlikely that the Respondent was unaware of the Complainant’s trade mark at the time when registering the disputed domain name considering the fact that the AUCHAN trade mark is a well-known trade mark throughout the world and enjoys worldwide reputation. This Panel agrees that since the Respondent has incorporated the Complainant’s trade mark AUCHAN in its entirety, it is unlikely that is was not aware of the existence of the Complainant’s trade mark. Such “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith” (see Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 holding that in the light of the Complainant’s trade mark registrations for LA CAIXA, and its reputation, it is most likely that the Respondent was aware of the Complainant’s mark LA CAIXA when registering the disputed domain name).

Further, the Respondent could easily have become aware of the Complainant’s trade mark and the Complainant’s rights therein by merely searching for the same on the Internet and it is unlikely that such a search was not conducted by the Respondent before registering the disputed domain name. In any event, the Respondent’s failure to carry out such a search also contributes to bad faith. In view of the above, this Panel holds that the disputed domain name was registered by the Respondent in bad faith.

As regards, the use of the disputed domain name in bad faith, this Panel notes that the disputed domain name does not resolve into an active website and thus the Respondent is only passively holding the disputed domain name. The decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 suggests that where the Respondent is passively holding the domain name, the Panel may consider surrounding circumstances to come to a conclusion of bad faith use. In the present case, the following facts and circumstances are relevant:

(i) The Complainant’s trade mark has a strong reputation and is widely known;

(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name. In this case, the Respondent is a web service provider and has submitted that it had merely registered the disputed domain name for one of its clients;

(iii) The Respondent’s current holding of the disputed domain name in combination with having no rights or legitimate interests in the disputed domain name and the high likelihood of the Respondent being aware of the reputation of the AUCHAN trade mark (See Prada S.A. v. Cybershop Co., Ltd, WIPO Case No. D2002-0662);

(iv) The act of registering a domain name without developing an active website itself may constitute bad faith (See World Wrestling Federation Entertainment Inc. (WWFE) v. M. de Rooij, WIPO Case No. D2000-0290);

(v) The Respondent has failed to submit any substantive response to the Complaint.

In view of the above, the Complainant can validly claim that the disputed domain name has been used in bad faith.

In these fact and circumstances, this Panel is of the view that the disputed domain name has been registered and is being used in bad faith.

There is another aspect of the matter which merits consideration. The Respondent has not contested the proceedings or disputed any of the facts adduced by the Complainant. The Respondent has in fact offered to return the disputed domain name of the Complainant. In these fact and circumstances, it is fair in this Panel’s view to transfer the disputed domain name to the Complainant.

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 name <auchangallery.com> be transferred to the Complainant.

Pravin Anand
Sole Panelist
Dated: June 28, 2012