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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Auchan v. Web4comm Srl Romania

Case No. DRO2005-0001

 

1. The Parties

The Complainant is Auchan, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Web4comm Srl Romania, Bucharest, Romania, represented by Andrei Buliga-Neagu, Romania.

 

2. The Domain Name and Registrar

The disputed domain name <auchan.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 9, 2005, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On February 10, 2005, RNC.ro 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 verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Response was filed with the Center on March 8, 2005.

The Center appointed Edoardo Fano as the sole panelist in this matter on March 23, 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, paragraph 7.

 

4. Factual Background

The Complainant is a worldwide leading retail group, created in France in 1961. In 1981, Auchan started its worldwide expansion. In 1999, Auchan opened its first store in China and in Taiwan, Province of China, and a few years later opened in Moscow the biggest discount superstore in the Russian Federation. It has also diversified its activities to propose services such as real estate and banking. Nowadays, it employs more than 165.000 persons, in 12 countries all over the world.

The Complainant’s trademark “AUCHAN” enjoys a great notoriety all over the world, and is protected, in particular in Europe and also in Romania, by means of several trademark registrations, among which:

- National Romanian trademark “AUCHAN” n° 26260, in classes 3, 9, 11, 25, 29, 32 and 42;

- National Romanian trademark “AUCHAN” n°26262, in classes 3, 9, 11, 25, 29, 32 and 42;

- International trademark “AUCHAN” n°658656, in classes 1, 6, 7, 10, 12, 13, 14, 15, 17, 19, 20, 22, 23, 24, 26, 27, 28, 31, 33, 34, 35, 38, 39, 40, 41, 42;

- International trademark “AUCHAN” n° 625533 in classes 1 to 42;

- Community trademark “AUCHAN”, n°000283101, in classes 1 to 42.

Moreover, the Complainant operates the domain name <auchan.com> reflecting its trademark, which was registered on April 1, 1996.

The Respondent’s domain name <auchan.ro> was registered on August 14, 2001.

The website at “www.auchan.ro” results to be a site “under construction”.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that the language of the administrative proceeding should be English, despite the fact that the registration agreement was available in Romanian and in English

The Complainant argues that the domain name <auchan.ro> reproduces entirely the Complainant’s trademark AUCHAN, since it is well established that the mere adjunction of the ccTLD “.ro” is not a distinguishing feature and does not change the likelihood of confusion.

As a result, the 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 this domain directly refers to the Complainant’s services.

The Complainant submits that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating the Complainant’s trademarks.

Furthermore, the Respondent has no prior rights or legitimate interests in the domain name. The Respondent has never used the term “AUCHAN” in any way before or after the Complainant started its business.

The Respondent is not known under the name “AUCHAN” or any similar term. Besides, “AUCHAN” is not the family name of the Respondent.

The conduct of the Respondent is merely parasitical. The Respondent does not use the domain name in a legitimate way. There is no website exploited but a simple Internet page announcing that the website is still under construction.

The name “AUCHAN” does not have any meaning in Romanian or in English. The Respondent had no reason to choose this domain name except to profit from the reputation of the Complainant.

The domain name was registered and used in bad faith. The domain name could lead average consumers to think that the domain name is related to the Complainant’s Auchan website or at least that it resolves to the official website for Auchan in Romania.

The Respondent is trading on the goodwill of the Complainant’s famous trademark to intentionally attract Internet users to Respondent’s website for commercial gain. The Respondent has registered several domain names. Those domain names reproduce other well-known trademarks such as Novotel, Chrysler, Jeep or Nivea. See for example Praktiker AG v. web4COMM SRL Romania,WIPO Case No. DRO2003-0001.

The Complainant has tried to contact the Respondent since December 2004, in order to find an amicable settlement regarding the transfer of the domain name <auchan.ro>, but the Respondent has not replied.

B. Respondent

The Respondent submits that, according to art. 13 of the Romanian Constitution, the official language in Romania is the Romanian language and that, under Article 127 of the Constitution: “Judicial procedure must be conducted in Romanian language.” The only applicable laws in jurisdictional relations between Respondent and the registrar is Romanian. Although the Complainant has not submitted the Complaint in Romanian, the Respondent has, nevertheless, decided to submit a Response in order to minimize both the material and moral damages to the Respondent.

The Respondent underlines that the exclusive right to use the <auchan.ro> domain name was acquired through the registration and the payment of the related fees to the registrar. The Respondent became the exclusive user of the domain name with no other conditions or special clauses whatsoever that would oblige the Respondent to use the domain name. The only conditions that could apply would therefore be those under Romanian law as it was at the time of the registration of the domain name at issue.

The Respondent contends that the Complainant did not provide any statistics of its notoriety in Romania nor in Europe. The real fact is that in Romania the name/trademark AUCHAN is, at this moment, unknown among Romanians and a so-called “notoriety of name AUCHAN” in Romania is not true, as the Complainant neither started a business, nor advertised its name. There is no evidence that the noun “auchan” could be assimilated by Romanians to the trademark/activities of Complainant.

As to the allegation that the Complainant’s trademark “AUCHAN” is registered under classes 3, 9, 11, 25, 29, 32 and 42 at Romanian National Trademark Register, the Respondent contends that the Romanian State Office For Inventions And Trademarks (OSIM) does not have any information about the registered trademark AUCHAN. The Complainant has failed to prove that the name “auchan” has been officially registered at Romanian OSIM.

The Complainant’s trademark consists of the word AUCHAN and a design; the Respondent never used the design.

The disputed domain name was acquired by the Respondent as a part of a contract between the Respondent and a Romanian organization. The Respondent works on this site, that has no commercial purpose at all. At this moment “www.auchan.ro” is active, and is presenting a discussion forum. The Respondent underlines that the .ro ccTLD is mainly designated for Romanian people, as foreign consumers would not have any interest to access the “www.auchan.ro” web page.

In fact, the RNC.ro registering guide lines provide the following specifications:

.ro - for any organizations or individuals

.com.ro - for business, firms, products and services of a commercial nature

.tm.ro - for trademarks only. To register under the tm.ro subdomain, proof of a Romanian trademark (OSIM, or other authority) must be submitted.

The Respondent alleges that RNC.ro suggests that <auchan.com.ro> would be the right choice for a commercial site, and <auchan.tm.ro> would be the right choice for the trademark AUCHAN in Romania. The Respondent has no intention to register <auchan.com.ro>, nor <auchan.tm.ro> as the purpose of “www.auchan.ro” is not commercial, and the Respondent’s has acted in good faith.

The Respondent then alleges that Romania is a multiethnic country with recognized minorities and that the noun “auchan” is used with a reference to roma, and that the Respondent’s website is a non-commercial site, targeting the romas minority, therefore certainly not outlawed.

The Respondent submits that as proof of its good faith the web page includes a disclaimer, mentioning that the site has no association with AUCHAN SRL/SA/PFA.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:

i. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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.

The Panel has considered the issue of the language of the proceeding. The Respondent has indicated that both Respondent and the registrar are Romanian entities and that Romanian is the official language in judicial proceedings in Romania. The issue before the Panel is, however, not a dispute between two Romanian parties but between a French Complainant and a Romanian Respondent. According to RNC.ro, the Registration Agreement concerning the disputed domain name is in Romanian and English. Paragraph 11(a) of the Rules prescribes that the language of the proceedings shall be that of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

On the basis of the provision in Paragraph 11(a) of the Rules and in view of the circumstances in the case, the Panel decides that the language of the proceedings before the Panel shall be English. See, Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001, and other previous UDRP cases in which the same Registrar (RNC.ro) was involved.

A. Identical or Confusingly Similar

With regard to the first test, the Panel finds that the Complainant has demonstrated its registered and common law rights to the trademark AUCHAN. Complainant has put forward proof of its trademark rights as annexed in the Complaint, Exhibit 8. Complainant has also demonstrated that the disputed domain name <auchan.ro> is confusingly similar to the trademark AUCHAN. It is well accepted that a top-level domain, in this case .ro, is to be ignored when assessing identity or confusing similarity of a mark and a domain name (see, e.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607).

No relevance is to be given to the Respondent’s reasoning that the Complainant’s trademark consists of the denomination AUCHAN and a design representing a bird, since only a word can be registered and used as a domain name. It is technically impossible to register and use a figurative part of a trademark as a domain name.

The Complainant has therefore met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

As to the second element, the Complainant asserts, inter alia, that there is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name.

The Respondent alleges that its rights and legitimate interests with respect to the disputed domain name lie on the fact that the relevant website “www.auchan.ro” has no commercial purpose and the website is a discussion forum addressed to Romanian people.

The Panel finds that although the Respondent has the right to open a discussion forum targeting a specific group of nationals, it does not have the right to do so by using a domain name that includes the trademark in which the Complainant has rights, as in the present case.

The Panel finds that the second test of the Policy, paragraph 4(a) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, “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 the Respondent has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or

(ii) that the 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 the Respondent has engaged in a pattern of such conduct; or

(iii) that the 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, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.”

With regard to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark has been established and the Panel finds that the Respondent knew or should have known that the disputed domain name <auchan.ro> was confusingly similar to a trademark of a third party (see, e.g., Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd, WIPO Case No. D2000-0163; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Lian Ming, WIPO Case No. DWS2003-0001; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Antonietta Maria Loprete, WIPO Case No. DRO2003-0004).

Further evidence of the registration in bad faith of the disputed domain name lies on the fact that the Respondent registered other domain names identical to well-known trademarks, as stated both in the present Complaint and in Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001.

As to the Respondent’s allegation that “AUCHAN is a roma noun”, the Panel notes that the Respondent has not put forward any explanations as to the meaning of this noun.

The Panel finds that the disputed domain name was chosen by the Respondent because of its confusing similarity to the trademark AUCHAN, in order to attract Internet users to its website.

Finally, it has to be noted that the disputed domain name was registered on August 14, 2001, and, although the Respondent states that the relevant website “www.auchan.ro” displays an active discussion forum, the Panel has inspected the website and found out that the site is still “under construction”. Such a long inactivity to use the domain name amounts in the Panel’s view to a further evidence of use of the disputed domain name in bad faith.

Considering the above, the Panel finds that the Complainant has fulfilled its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name 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 name <auchan.ro> be transferred to the Complainant.

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Edoardo Fano
Sole Panelist

Dated: April 20, 2005