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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Auchan Holding v. Nat Medy

Case No. D2018-0549

1. The Parties

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

Respondent is Nat Medy of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <auchanretailgroup.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2018. On March 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2018, the Registrar transmitted by e-mail 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2018.

The Center appointed Robert Badgley as the sole panelist in this matter on April 17, 2018. 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 a food retailer that operates hypermarkets in 17 countries. Complainant asserts that it was the 11th largest food retailer in the world in 2016. Complainant holds various trademark registrations for AUCHAN, including International trademark number 898156, registered April 18, 2006, International trademark number 1011777 registered February 19, 2009, and French trademark number 1381268 registered November 24, 1986. Complainant also operates a website at “www.auchan.com”.

The Domain Name was registered on January 31, 2018. It does not resolve to an active website.

Complainant has submitted into the record of this case an e-mail dated February 14, 2018, addressed to an individual and purportedly sent by the director of Auchan Retail France. The e-mail is alleged to have been sent in pursuit of a phishing scam.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

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

(ii) 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 Panel concludes that Complainant has rights in the mark AUCHAN through registration and use. The Panel finds that the Domain Name is confusingly similar to the AUCHAN mark. The Domain Name fully incorporates the mark, and adds the descriptive words “retail group”. Given Complainant’s business as a retailer, the addition of these descriptive words to the AUCHAN mark reinforces consumer confusion between the Domain name and the mark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to articulate or defend his motives in registering the Domain Name. Complainant asserts that it has no relationship with Respondent, and has never authorized Respondent to use the AUCHAN mark in a domain name or otherwise. The foregoing facts and allegations, coupled with the fact that AUCHAN is not a common word, make it clear that Respondent has no rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in the corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. It is clear that Respondent had Complainant’s AUCHAN mark in mind when registering the Domain Name. First, the mark does not reflect a common word, and the Domain Name includes both the mark and two descriptive words – “retail group” – which one would expect to be associated with the mark and Complainant’s business. Moreover, Respondent’s phishing email falsely assumes the name of the director of Complainant’s French operations, which underscores Respondent’s familiarity with Complainant.

Bad faith use is also easy to find here. The record contains evidence of a phishing email sent by someone with control over the Domain Name, and Respondent has not come forward to deny this allegation or otherwise explain himself. Accordingly, the Panel concludes that on this record Respondent has very likely registered and used the Domain Name to commit some type of fraud on the strength of consumer confusion as respects the origin of the email in question.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <auchanretailgroup.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: May 1, 2018

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