WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Holding SA v. On behalf of auchanfrance.com owner, Whois Privacy Service / Philippe DeRoux

Case No. D2021-0798

1. The Parties

The Complainant is Auchan Holding SA, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is On behalf of auchanfrance.com owner, Whois Privacy Service, United States of America / Philippe DeRoux, France.

2. The Domain Name and Registrar

The disputed domain name <auchanfrance.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2021, 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 the Complainant on March 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 24, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021.

The Center appointed Alexandre Nappey as the sole panelist in this matter on May 11, 2021. 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 French industrial group, one of the world’s leading companies in the food retailer industry. The Complainant was founded in 1960 by Gerard Mulliez.

The Complainant operates in 17 countries across Europe, Africa and Asia and employs over 350,000 employees.

In 2019, the Complainant has established a revenue of approximately EUR 33.4 billion excluding tax.

The Complainant has a large internet presence and shares information about its products, services and news on its website at the domain name <auchan.fr>, registered on February 11, 1997. According to Similarweb.com, the Complainant’s website at its primary domain name <auchan.fr> has received over 14.5 million visitors during the 6-month period from July to December 2020. Additionally, the Complainant’s website is ranked 2,147th globally and 92nd in France.

The Complainant is the owner of numerous worldwide trademark registrations for the mark AUCHAN. For example:

The Complainant also developed its presence on the Internet and is the owner of numerous domain names consisting of the mark AUCHAN. For example: <auchan.fr>, <auchan.com>, <auchan.net> and others.

The disputed domain name <auchanfrance.com> was registered on May 26, 2020.

The disputed domain name <auchanfrance.com> is inactive.

5. Parties’ Contentions

A. Complainant

According to the Complainant, it clearly appears that the disputed domain name is confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that the disputed domain name directly refers 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 interests in the disputed domain name. Since the disputed domain name in issue is so similar with 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 disputed domain name. The use of the word “auchan”, along with the terms “france”, supports the fact that the Respondent knew of the Complainant when registering the disputed domain name. Moreover, the Complainant underlines that the Respondent has used a privacy service to hide its identity. This behavior has already been qualified of bad faith.

Finally, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in the corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Identical or Confusingly Similar

The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the AUCHAN trademark. The AUCHAN trademark has been registered by the Complainant in numerous jurisdictions and has been used extensively on a worldwide basis. This has also been confirmed by several UDRP decisions (see among many other decisions Auchan Holding v. Domains By Proxy, LLC / NAME REDACTED, WIPO Case No. D2019-2045).

The disputed domain name comprises of the Complainant's AUCHAN trademark in its entirety with adjunction of the geographical term “france” which stands for the Complainant’s country of origin.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's AUCHAN trademark as the geographical adjunction does not detract from the recognizability of the main element of the disputed domain name, namely the AUCHAN trademark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See section 2.1 of the WIPO Overview 3.0.

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, since the Complainant has not licensed or otherwise permitted the Respondent to use the AUCHAN trademark, or a variation thereof, and the Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely-known trademark and a geographical term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered, or you have 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant's rights to the AUCHAN trademark when it registered the disputed domain name.

The below factors support a finding of bad faith registration and use of the disputed domain name:

(a) the date of registration of the disputed domain name which was on May 26, 2020, long after the Complainant had registered the AUCHAN trademark;

(b) the notoriety of the trademark through widespread and long use of the AUCHAN trademark by the Complainant at an international level, well before the disputed domain name was registered by the Respondent;

(c) the disputed domain name is inactive, and not connected to any bona fide offering of goods or services;

(d) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use;

(e) the Respondent’s concealing its identity behind a privacy service; and

(f) the implausibility of any good faith use to which the disputed domain name may be put.

The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and is using the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent's documented out-of-pocket costs and/or to disrupt the Complainant's business.

As such, the Panel finds that bad faith has been demonstrated under the Policy.

Accordingly, the third element of paragraph 4(a) of the Policy is met.

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 <auchanfrance.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: June 7, 2021