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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Auchan v. Hostdatviet

Case No. D2006-1096

 

1. The Parties

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

The Respondent is Hostdatviet, Ho Chi Minh of Viet Nam.

 

2. The Domain Name and Registrar

The disputed domain name <dauchan.net> is registered with Visesh Infotecnics Ltd. d/b/a Signdomains.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2006. On August 28, 2006, the Center transmitted by email to Visesh Infotecnics Ltd. d/b/a Signdomains.com a request for registrar verification in connection with the domain name at issue. On September 16, 2006, Visesh Infotecnics Ltd. d/b/a Signdomains.com 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 September 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2006.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2006.

The Center appointed Mr. Adam Taylor as the Sole Panelist in this matter on October 24, 2006. 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, incorporated under French law as sociйtй anonyme, is a worldwide leading retail group founded in France in 1961. The Complainant expanded internationally starting in 1981. It has diversified into activities such as real estate, banking, communications and mobile telephones. It currently employs more than 172,000 people in 11 countries.

The Complainant owns numerous trademarks in respect of the term AUCHAN including:

- International trademark dated January 29, 1992, for the word AUCHAN, number 580995, in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30.

- International trademark, designating among others Viet Nam, dated October 19, 1994, for the word AUCHAN, number 625533, in classes 1 to 42.

- International trademark, designating among others Viet Nam, dated October 31, 1994, for logo including the word AUCHAN, number 626147, in classes 2, 3, 4, 5, 8, 9, 11,16, 18, 21, 25, 29, 30, 32, 36, 37.

- International trademark, designating among others Viet Nam, dated July 29, 1996, for logo including the word AUCHAN, number 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.

The Complainant operates a number of websites linked to different domain names including <auchan.com> registered on April 1, 1996, and <auchansupermarket.net> registered on March 3, 2005.

The disputed domain name was registered on April 18, 2006. According to the Complainant, the original registrant was “FASTHOSTVN” in Viet Nam.

As of May 11, 2006, the disputed domain name resolved to what appears to be a service provider home page at “www.hiepthanhnetwork.com”. The branding “FastHostVN” also appeared on that page.

As of May 15, 2006, the disputed domain name resolved to a technical page consisting of an index of folders.

On May 15, 2006, the Complainant sent a cease and desist letter by registered post and email to “FASTHOSTVN”. The letter was later returned as undeliverable. The Complainant also sent emails to “FASTHOSTVN” on June 7, 2006, and July 6, 2006. The Complainant received no response to any of its communications.

A Whois printout dated August 17, 2006, the registrant had changed to the Complainant’s name, but all of the other contact details remained the same.

There was no website available at all at the disputed domain name as of August 25, 2006.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The disputed domain name reproduces entirely the previously registered mark AUCHAN with the mere addition of the letter “d”. This addition is an obvious attempt to “typosquat” the disputed domain name and is insufficient to avoid confusion.

Both a visual and aural comparison between the trademarks and disputed domain name support the assertion that the domain name is confusingly similar to the trademark. Numerous WIPO decisions recognize that adding a single letter is insufficient to give any distinctiveness to the disputed domain name (Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin, WIPO Case No. D2004-0404 and Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc, WIPO Case No. D2004-0359), which is precisely the case here. The addition of the letter “d” does not change the overall impression of the designation as being a domain name connected to the trademark AUCHAN.

A specific top level of a domain name such as “.com” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

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 Complainant’s services.

Rights or Legitimate Interests

The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks or to seek the registration of any domain name incorporating the trademarks.

The Respondent has no prior rights or legitimate interest in the disputed domain name which is predated by the Complainant’s trademarks and domain names by some years.

The Respondent is not known under the name “auchan”, “dauchan” or any similar term. Furthermore, it is unlikely that the term “dauchan”, composed of a renowned trademark plus a single letter, has a special meaning in French and in English, other than that of the trademark.

The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, as it previously directed internet users to the home page of the website “www.hiepthanhnetwork.com”, then to an index page and is now inactive.

Some WIPO decisions have held that when a domain name is inactive it can not be considered as used in connection with a bona fide offering of goods or services.

In fact, the domain name in dispute is so close to the famous trademarks of the Complainant, that it could not reasonably claim that it was intending to develop a legitimate activity.

Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that Respondent both registered and used the disputed domain name in bad faith.

As regards registration in bad faith, it is obvious that the Respondent knew or must have known the trademark AUCHAN at the time he registered the domain name. It is difficult to argue that the Respondent was not aware of the existence of the Complainant as the very precise combination of the word “AUCHAN” and the single letter “D” clearly indicates the Respondent had the Complainant in mind.

AUCHAN refers to the Complainant’s trade name and trademarks and also worldwide leading retail groups, created in France. The worldwide fame of AUCHAN was recognized in, for example, Auchan v. Oushang Chaoshi, WIPO Case No. D2005-0407 and Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001. Thus, the Respondent must have been well aware that it was infringing the Complainant’s rights when it registered <dauchan.net>.

The Respondent also used the domain name in bad faith.

It has been established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that it is very use by someone with no connection with the product suggests opportunistic bad faith” (Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).

The disputed domain name is in fact inactive. Said “passive use” of the domain name indicates bad faith. Many WIPO decisions have held such behaviour as bad faith. (Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon WIPO Case No. D2004-0245, Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, DCI S.A. v. Link Commercial Corporation WIPO Case No. D2000-1232, CareerBuilder LLC, v. Finity Development Group WIPO Case No. D2006-0615).

The Respondent, by registering a domain name corresponding to a famous trademark, intentionally attempted to divert Internet users from the Complainant’s business by creating a likelihood of confusion with the Complainant’s trademarks. This behavior constitutes further another evidence of bad faith use, which may damage the Complainant’s reputation by attracting Internet users to a webpage that does not correspond to what they were looking for. According to SFR v. Redpoint Consulting Ltd, Nominet Decision DRS 01831, this constitutes obvious bad faith use.

The Respondent did not answer the warning letter nor any of the Complainant’s emails. This behavior is another element contributing to a finding of bad faith. Such behavior, indicating a clear absence of interest on the part of the Respondent undermines any basis for a fair or legitimate interest (Banque Transatlantique S.A. v. DOTSCOPE WIPO Case No. D2004-1100).

The fact that the registered letter sent to the Respondent’s address was returned as undeliverable confirms that the Respondent provided an incorrect or false address. This has been found to be a circumstance involving registration in bad faith. (Corbis Corporation v. RegisterFly.com/ Whois Protection Service/surf advertising Company/ Joseph Graham WIPO Case No. D2006-0546, Lincoln Property Company v. LPC WIPO Case No. D2001-0238, Home Director, Inc. v. HomeDirector WIPO Case No. D2000-0111).

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has undoubtedly established trademark rights in the term AUCHAN.

The issue is whether the domain name <dauchan.net> is confusingly similar to the trademark AUCHAN. The domain name suffix is disregarded for the purposes of the comparison.

There are numerous UDRP decisions to the effect that a domain name which incorporates a trademark as a whole should be considered as confusingly similar to the trademark. See, e.g., Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin, WIPO Case No. D2004-0359.

The extra “D” before “AUCHAN” may denote “d’Auchan” to French users.

In any case, even if not visually similar, there is phonetic similarity between DAUCHAN and AUCHAN. See, e.g., L’TUR Tourismus AG v. Juergen Frey, WIPO Case No. D2003-0665 (<eltour.net> confusingly similar to the trademark L’TUR), Auchan v. Oushang Chaoshi, WIPO Case No. D2005-0407 (<oushang.net> confusingly similar to the trademark AUCHAN), Sanofi-Aventis v. Renars Jeromans, WIPO Case No. D2005-0705 (<eccomplia.com> confusingly similar to the trademark ACOMPLIA).

Taking all the above matters together, the Panel finds that disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.

As to paragraph 4(c)(i) of the Policy, there is no evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Nor is there any evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.

The Panel finds that the Complainant has demonstrated a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes accordingly that the Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant relies on “passive holding” as constituting bad faith. This is explained in the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” as follows:

“3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder? (Passive holding)

“Consensus view: The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”

The Panel notes the following circumstances in this case:

First, the letter sent by registered post to the Respondent’s address shown on the Whois for the disputed domain name was returned as undeliverable. This indicates that an incorrect address was provided by the Respondent.

Second, the Respondent has not replied to the Complainant’s emails or appeared in these proceedings.

Third, the Complainant has established a substantial international reputation in the AUCHAN trademark as well as registered trademarks for AUCHAN in Viet Nam, where the Respondent is located.

Fourth, the Complainant submits that it is unlikely that the term DAUCHAN has any meaning other than in reference to the Complainant’s trademark. The Panel is not aware of any alternative meaning and the Respondent has not appeared to deny the Complainant’s assertion.

Taking all of the above matters together, the Panel considers it likely that the Respondent registered the disputed domain name to target the Complainant’s well known trademark. In the Panel’s view, the Respondent’s behaviour constitutes passive holding in bad faith as explained above, and the Complainant has therefore established the third element of the policy.

In reaching this conclusion, the Panel has placed no weight on the apparent change of registrant at some point after the Complainant first became aware of the disputed domain name. The exact timing of this change is unclear and no relevant Whois printouts have been provided.

 

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 <dauchan.net> be transferred to the Complainant.

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Adam Taylor
Sole Panelist

Dated: November 7, 2006