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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Auchan v. Oushang Chaoshi
Case No. D2005-0407
1. The Parties
The Complainant is Auchan, Croix, France, represented by Cabinet Dreyfus &
The Respondent is Oushang Chaoshi, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <oushang.net> is registered with Xin Net Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
Ў°CenterЎ±) on April 18, 2005. On April 18, 2005, the Center transmitted by email
to Xin Net Corp. a request for registrar verification in connection with the
domain name at issue. On June 21, 2005, Xin Net Corp. 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, having determined that the registration
agreement of the disputed domain name is in Chinese according to the information
received from the Registrar concerned, sent a notification on the Language of
Proceeding to the Complainant on June 21, 2005, and requested for the Complaint
to be translated into the Chinese language for re-submission to the Center.
The translation of the Complaint was completed and the Complaint in the Chinese
language was submitted to the Center on July 4, 2005, by the Complainant. In
response to a notification by the Center that the Complaint was administratively
deficient, the Complainant filed an amendment to the Complaint on August 9,
2005. The Center verified that the Complaint together with the amendment to
the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute
Resolution Policy (the Ў°PolicyЎ±), the Rules for Uniform Domain Name Dispute
Resolution Policy (the Ў°RulesЎ±), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the Ў°Supplemental RulesЎ±).
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 August
12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response
was September 1, 2005. The Respondent did not submit any response. Accordingly,
the Center notified the RespondentЎЇs default on September 9, 2005.
The Center appointed Susanna H.S. Leong as the Sole Panelist in this matter
on September 16, 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,
4. Factual Background
The Complainant is a retail group, incorporated in France, in 1961 by GЁ¦rard
Mulliez. Over the years, the Complainant has expanded its business operations.
In 1999, the Complainant opened its first store in China. Today, the Complainant
employs more than 3600 persons and inaugurated its twelfth supermarket in China,
last February. It has also diversified its activities to other services such
as real estate and banking.
The Complainant is the proprietor of numerous AUCHAN trademarks throughout
the world including China and also in Asia. Consequently, the ComplainantЎЇs
trademark AUCHAN enjoys a great notoriety all over the world including Asia.
The trademark AUCHAN is also registered in Chinese characters and its translation
in Chinese is OU SHANG. Furthermore, the logo of a stylized bird is also protected
throughout the world and in China. The marks AUCHAN and OU SHANG are also protected
as a trade name in China.
Recently, the Complainant has noticed that the domain name <oushang.net>
has been registered. A search on the WHOIS database revealed that the said domain
name was registered by the Respondent.
Before commencing the present UDRP proceedings, the Complainant has sent a
warning letter, by registered letter and via e-mail, on March 3, 2005, to the
Respondent, asking him to transfer amicably the domain name <oushang.net>
to the Complainant based on its trademarks rights.
The Respondent did not respond to the ComplainantЎЇs letter. As the parties
failed to arrive at an amicable settlement, the Complainant decided to file
the present Complaint according to the UDRP.
5. PartiesЎЇ Contentions
Firstly, the Complainant contends that the disputed domain name is identical
or confusingly similar to a trademark or service mark in which the Complainant
has rights. The Complainant set forth its registered trademark rights in the
mark AUCHAN throughout the world including China. The ComplainantЎЇs mark AUCHAN
is also registered as a trademark in China in the Chinese language and the transliteration
of AUCHAN in Chinese is OU SHANG. The Complainant further states it has registered
the domain name <oushang.biz> which reflects its trademark AUCHAN in the
transliteration of OU SHANG on February 25, 2005, and has been conducting its
business via this domain name in China since then.
The term Ў°OUSHANGЎ± is the official Chinese name for AUCHAN and the name itself
has been trademarked. The domain name <oushang.net> reproduces entirely
the ComplainantЎЇs mark OU SHANG and the phonetic pronunciation of this name
in English or in French most closely corresponds with the pronunciation of the
Chinese characters Ў°Е·ЙРЎ±. The domain name is identical to the trademark owned
by the Complainant and the Respondent cannot claim any legitimate right to this
trademark. Furthermore, the Complainant argues that it is well established that
the mere adjunction of the gTLD Ў°.netЎ± is not a distinguishing feature and does
not change the finding of a likelihood of confusion. See, Telstra Corp Ltd v.
Nuclear Marshmallows, WIPO Case No. D2000-0003,
and UDV North America, Inc. v. UKJENT, WIPO
Case No. D2001-0684.
The Complainant contends that the domain name <oushang.net> is confusingly
similar to the numerous trademarks registered by the Complainant in China, and
there is a high risk that it will cause confusion, as it could lead average
consumers to think that the domain name <oushang.net> is related to the
official AUCHAN website or at least that it resolves to the official website
for AUCHAN in China.
Secondly, the Complainant contends that the Respondent has no rights or legitimate
interests in respect of the disputed domain name. The Respondent is not affiliated
with the Complainant in any way. The Complainant has not authorized the Respondent
to use and register its trademarks and service marks, or to seek the registration
of any domain name incorporating the said mark. Furthermore, the Respondent
has no prior rights or legitimate interest in the domain name as the Respondent
has never used the term Ў°OU SHANGЎ± in any way before or after the Complainant
started their business. The Respondent is not known under the name Ў°OU SHANGЎ±
or any similar term. Besides, Ў°OU SHANGЎ± is not the family name of the Respondent.
The Complainant contends that the conduct of the Respondent is merely parasitical
in nature. The disputed domain name <oushang.net> reproduces entirely
the trademark Ў°OU SHANGЎ± and it resolves to a website that infringes the trademark
Ў°AUCHANЎ± and the trademark Ў°AUCHANЎ± in Chinese characters, on the top left side
of the website and especially the logo. The website to which the disputed domain
name resolved to was used to sell among others things electronic equipment.
The Complainant also utilizes the Internet for the sale of its goods and services
in China under its trademark Ў°AUCHAN DirectЎ± which has been registered via an
international trademark, designating among other countries China. In the ComplainantЎЇs
opinion, the reproduction of the ComplainantЎЇs trademark Ў°OU SHANGЎ± constitutes
an obvious intent to misleadingly divert the Internet consumers. Thus, the Complainant
contends that it is clear the Respondent does not use the domain name in a legitimate
way. As a result of the actions of the ComplainantЎЇs legal services in China,
the content of the website to which the disputed domain name resolves to has
been changed and is now resolved to a mere page which is inactive.
Finally, the Complainant contends that the domain name was registered and is
being used in bad faith. The name Ў°OUSHANGЎ± does not have any meaning in Chinese.
The Respondent had no reason to choose this domain name other than one of profiting
from the reputation of the Complainant. OUSHANG is also not the family name
of the Respondent. The Complainant contends that the Respondent is trading on
the goodwill of the ComplainantЎЇs famous service mark to intentionally attract
Internet users to RespondentЎЇs website for purposes of commercial gain. This
constitutes evidence of bad faith use and registration under Paragraph 4(b)(iv)
of the Policy. See Six Continents Hotels, Inc., v. Anti-Globalization Domains,
WIPO Case No. D2003-0765; Yahoo ! Inc.
v. Data Art Corp., WIPO Case No. D2000-0587.
The Complainant also contends that the Respondent has registered <oushang.net>
with the intention of profiting either by reselling this domain name to its
rightful owner. The registration of the domain name in dispute has been done
on purpose, to disrupt the ComplainantЎЇs business, as it used the domain name
<oushang.net> with a commercial website. This constitutes obvious evidence
of both registration and use in bad faith under Paragraph 4(b)(ii) of the Policy.
Furthermore, the Complainant has tried many times to achieve an amicable settlement
of this dispute. The Complainant asked also its legal services in China to get
in touch with the Respondent. It is the ComplainantЎЇs contentions that with
the help of those services, the Respondent must be aware of the ComplainantЎЇs
claims because the content of the website to which the disputed domain name
resolved to has been changed and the Complainant trademarks and its logo were
subsequently not reproduced anymore on the website. The Complainant argues that
the RespondentЎЇs good faith would have been demonstrated if it has tried to
get in touch with the Complainant. In the present case, the Respondent did not
show its willingness to discuss the reality of the attempt to the ComplainantЎЇs
rights in its AUCHAN mark with regard to the disputed domain name <oushang.net>.
In this way, the Complainant contends that bad faith on the part of the Respondent
has been established.
The Respondent did not reply to the ComplainantЎЇs contentions.
6. Discussion and Findings
A. Language of the Proceedings
The Complaint was filed in the English language. On June 21, 2005, the Center
sent a notification to the Complainant concerning the Language of Proceeding.
Pursuant to Rules, paragraph 11, in the absence of an agreement between the
parties, or specified otherwise in the registration agreement, the language
of the administrative proceeding shall be the language of the registration agreement.
The Center has been informed by the registrar concerned that the language of
the registration agreement for the disputed domain name is Chinese. Accordingly,
the Center requested the Complainant to provide the Center with satisfactory
evidence of an agreement between the Complainant and the Respondent to the effect
that the proceedings should be in English. If the Complainant could not do so,
then the Center would request that the Complaint be translated into Chinese
and re-submitted to the Center.
In response to the CenterЎЇs notification, the Complainant submitted a Chinese
translation of the Complaint on July 4, 2005, to the Center. In the Complaint,
the Complainant submits that for the reasons cited below it should be allowed
to pursue the proceeding in English:
(a) Many precedent decisions have recognized that using the registrationЎЇs
language would lay an undue burden on the Complainant. In Deutsche Messe A.G.
v. Kim Hyungho, WIPO Case No. D2003-0679,
attached as Annex 3, the panelist stated that Ў°the spirit of Paragraph 11 is
to ensure fairness in the selection of language by giving full consideration
to the partiesЎЇ level of comfortability with each language, the expenses to
be incurred and possibility of in the proceeding in the event translations are
required and other relevant factorsЎ±.
(b) The Complainant has tried to achieve an amicable settlement with the Respondent.
Although the registered letter and the e-mails as well as the reminders were
written in English, the website to which the disputed domain name resolved to
have been changed after the assistance of the ComplainantЎЇs legal services in
China. Accordingly, the Complainant contends that this is evidence that the
Respondent was then aware of the ComplainantЎЇs claims and understood the ComplainantЎЇs
For theses reasons, the Complainant considers that it is entitled to conduct
the present proceeding in English.
After considering the submissions of the Complainant on the issue of the language
of the proceeding, the Panel finds that the proceeding should be conducted in
the English language and the reasons for its decision are as follows:
(i) The PanelЎЇs discretion under the UDRP
Paragraph 11 of the Rules provides:
Ў°Unless otherwise agreed by the Parties, or specified otherwise in the Registration
Agreement, the language of the administrative proceeding shall be the language
of the Registration Agreement, subject to the authority of the Panel to determine
otherwise, having regard to the circumstances of the administrative proceeding.Ў±
Thus, the general rule is that the parties are at liberty to agree on the language
of the administrative proceeding. In the absence of this agreement, the language
of the Registration Agreement shall dictate the language of the proceeding.
However, the panel reserves the right to decide otherwise having regard to the
circumstances of the case. The panelЎЇs discretion must be exercised in the spirit
of fairness and justice to both parties taking into consideration matters such
as command of the language, time and costs. It is important that the language
finally decided by the panel for the proceeding is not prejudicial to either
one of the parties in his or her abilities to articulate the arguments for the
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their
abilities to prepare the necessary documents for this proceeding and also to
respond adequately to these documents when they are served upon the parties.
The Panel is satisfied that the Complainant has exhausted all reasonable options
to establish contact with the Respondent on this issue of the language of the
proceeding including soliciting the help of its legal services in China.
Furthermore, the Complainant upon being notified by the Center that the language
of the proceeding is Chinese has promptly submitted a Chinese translation of
the Complaint to the Center within the stipulated time frame. The Respondent
has then been notified of the Complaint and its contents in the Chinese language.
The Complainant has alleged that the Respondent has no legitimate rights to
the disputed domain name which is confusingly similar to the ComplainantЎЇs registered
trademark and that the Respondent has registered and used the domain name in
bad faith. However, the Respondent has failed to respond to the ComplainantЎЇs
contentions. The Panel finds that the RespondentЎЇs failure to respond to the
Complaint might not be the result of the RespondentЎЇs inability to understand
the Complaint filed against him but an indication that he could not provide
a satisfactory response either on the issue of the language of the proceeding
or the allegations contained in the Complaint lodged by the Complainant.
To rule that the language of the proceeding is Chinese under such circumstances
would not serve any useful purpose to either parties and would be unfair to
the Complainant as this would cause substantial delay in the proceedings resulting
in unnecessary costs incurred on the part of the Complainant. Therefore, in
consideration of the above circumstances, the Panel hereby decides that, in
accordance to paragraph 11 of the Rules, English shall be the language of the
present administrative proceeding and the decision shall thus be submitted in
B. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this
proceeding and obtain the transfer of the disputed domain name, the Complainant
must establish that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the domain
3. The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with
the Complainant to establish that all these three elements are satisfied in
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide
the Complaint on the basis of the statements and documents submitted and in
accordance with the Policy, the Rules and any rules and principles of law that
it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules,
if a party, in the absence of exceptional circumstances, does not comply with
any provision of, or requirement under, the Rules of any request from the Panel,
the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular
with regard to the content of the relevant provisions of the Uniform Policy,
(paragraphs 4(a), (b), (c)), the Panel concludes as follows:
1. Identical or Confusingly Similar
Having reviewed the documents adduced by the Complainant, the Panel is satisfied
that the Complainant has established its rights in the trademark AUCHAN in many
countries including China. The Complainant has also registered the mark AUCHAN
in the Chinese characters of Ў°Е·ЙРЎ± in China. The English word OUSHANG is the
transliteration of AUCHAN Ў°Е·ЙРЎ± in Han Yu Pin Yin (Ў°єєУпЖґТфЎ±), the phonetic representation
of the Chinese characters in English. Although the disputed domain name <oushang.net>
is visually different from the ComplainantЎЇs trademark AUCHAN, it is confusing
similar to the ComplaintЎЇs trademark as the disputed domain name reproduces
the ComplainantЎЇs trademark AUCHAN phonetically in its entirety. Anyone who
is conversant in the Chinese language is likely to conclude that OU SHANG probably
refers to Ў°Е·ЙРЎ± -- the Chinese mark of AUCHAN. Comparing the disputed domain
name and the ComplainantЎЇs mark, the Panel finds that they are confusingly similar.
The Panel thus finds for the Complainant on the first part of the test.
2. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights
or legitimate interests in the domain name, among other circumstances, by showing
any of the following elements:
Ў°(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;
(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.Ў±
The Panel finds that the Respondent has not provided evidence of circumstances
of the type specified in paragraph 4(c) of the Policy, or of any other circumstances
giving rise to a right to or legitimate interest in the domain name. The Panel
further notes that the Respondent has failed to submit a Response to the Complaint
filed against him. In particular, the Respondent has failed to make submissions
to demonstrate that he has rights or legitimate interests to the domain name.
In accordance to the Rules paragraph 14, the Panel thus draws such inferences
as she considers appropriate, which are that the Respondent is unable to adduce
evidence to show cause that he has rights or legitimate interests to the said
Based on the following reasons the Panel finds that the Respondent has no rights
or legitimate interests in the disputed domain name:
(i) The Respondent has not provided evidence of a legitimate use of the domain
name <oushang.net> or reasons to justify the choice of the word OU SHANG
in its business operations;
(ii) The Complainant has not licensed or otherwise permitted the Respondent
to use its trademark or to apply for or use any domain name incorporating the
(iii) The mark AUCHAN and its Chinese version Ў°Е·ЙРЎ± is a mark which enjoys a
wide spread reputation in the relevant sector of retail and supermarkets in
many countries including China. Consequently, it is not one that traders would
legitimately choose unless the purpose is to create an impression of an association
with the Complainant.
The Panel finds for the Complainant on the second part of the test.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation,
shall be evidence of the registration and use of a domain name in bad faith,
(i) circumstances indicating that Respondent has registered or 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 the RespondentЎЇs documented out-of-pocket costs directly related
to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract,
for commercial gain, Internet users to RespondentЎЇs website or other on-line
location, by creating a likelihood of confusion with the ComplainantЎЇs mark
as to the source, sponsorship, affiliation, or endorsement of RespondentЎЇs website
or location or of a product.
After carefully considering the contentions of the parties and the evidence
adduced before the Panel, the Panel concludes that the circumstances referred
to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and
upon the evidence of these circumstances it is adequate to conclude the Respondent
has registered and used the disputed domain name in bad faith.
On the evidence adduced before the Panel, the Panel finds that the ComplainantЎЇs
trademark AUCHAN and its Chinese version Ў°Е·ЙРЎ± enjoys a wide spread reputation
in the relevant sector of retail and supermarkets in many countries including
China. Therefore, the Panel finds that the Respondent would have actual notice
of the ComplainantЎЇs trademark rights at the time of the registration of the
domain name. It would therefore have been pertinent that the Respondent explain
of its choice in the disputed domain name, failing which the Panel draws the
conclusion that it is not one that traders would legitimately choose unless
the purpose was to create an impression of an association with the Complainant.
It is important to note that the website to which the disputed domain name
resolved to was used to sell among others things electronic equipment. The Complainant
also utilizes the Internet for the sale of its goods and services in China under
its trademark Ў°AUCHAN DirectЎ± which has been registered via an international
trademark, designating among other countries China. Given that the disputed
domain name and the ComplainantЎЇs mark are found to be confusingly similar to
each other, it seems likely that the disputed domain name <oushang.net>
is used to divert Internet users seeking the ComplainantЎЇs website to the RespondentЎЇs
website. In the absence of evidence to the contrary and acceptable reasons from
the Respondent, the choice of the disputed domain name and the conduct of the
Respondent as far as the website on to which the domain name resolves are indicative
of usage of the disputed domain name in bad faith. In fact, the Complainant
has shown that as a result of the actions of the ComplainantЎЇs legal services
in China, the content of the website to which the disputed domain name resolves
to has since been changed and now resolves to a mere page which is inactive.
The Panel accepts the ComplainantЎЇs submission that this fact coupled with all
the other evidence prove that the Respondent has registered and used the disputed
domain name in bad faith.
The Panel finds for the Complainant on the third and final part of test.
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 <oushang.net>
be transferred to the Complainant.
Susanna H.S. Leong
Dated: September 30, 2005