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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Auchan v. Jakub Kamma

Case No. D2007-0565

 

1. The Parties

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

The Respondent is Jakub Kamma of Wroclaw, Poland.

2. The Domain Name and Registrar

The disputed domain name <auchansoftware.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2007 electronically and on April 23, 2007 in hardcopy. On April 16, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 16, 2006, Tucows 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 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceedings commenced on May 10, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2007.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 8, 2007. 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 paragraph 7 of the Rules.

 

4. Factual Background

The Complainant is a leading retail group, established in France in 1961. It opened its first hypermarket in the North of France in 1967.

Today, the Complainant is present in twelve countries and employs more than 165,000 people. The Complainant developed its activities around its hypermarkets and supermarkets and is offering services such as real estate and banking as well. The Complainant is also doing business on the Internet through its online supermarket at “www.auchandirect.com” and “www.auchandirect.fr”. In Poland, where the Respondent is located, the Complainant owns at least seventeen AUCHAN-branded hypermarkets.

The Complainant owns numerous AUCHAN trademarks around the world, including the following trademarks enjoying protection inter alia in Poland:

- Community trademark no.000283101 AUCHAN in classes 1 to 42;

- Community trademark no. 004510707 AUCHAN in classes 35, 38;

- International trademark no. 580995 AUCHAN in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30;

- International trademark no. 585353 AUCHAN in classes 3, 9, 11, 25, 29, 32;

- International trademark no. 625533 AUCHAN in classes 1 to 42;

- International trademark no. 626147 AUCHAN in classes 2, 3, 4, 5, 8, 9, 11, 16, 18, 21, 25, 29, 30, 32, 36, 37;

- International trademark no. 658656 AUCHAN no. 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 no. 759476 AUCHAN DIRECT in classes 3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 29, 30, 31, 32, 33, 35, 36, 38, 42 and

- International trademark no. 759477 AUCHAN INTERACTIVE in classes 3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 29, 30, 31, 32, 33, 35, 36, 38, 42

(the “AUCHAN Marks”).

The domain name <auchansoftware.com> was registered on October 20, 2006. The priority of the AUCHAN Marks precedes the registration of the disputed domain name.

On December 6, 2006 the Complainant sent a cease and desist letter to the Respondent asking him for the transfer of the domain name based on the Complainant’s prior trademarks rights. Such letter was sent by hard copy and by email to the addresses indicated on the Whois database. The postal address seemed to be the one of “Home.pl”, the reseller of the domain name, which received the hard copy of the cease and desist letter and later informed the Complainant that he forwarded the cease and desist letter by email and by regular mail to the Respondent. The Respondent did not reply.

The Respondent is not actively using the domain name. The domain name resolves to a website stating that the domain name is provided by “Home.pl” and it redirects after a few seconds to the “Home.pl” website.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:

(i) The domain name <auchansoftware.com> is confusingly similar to the AUCHAN Marks as it fully incorporates the Complainant’s well-known trademark AUCHAN with the mere addition of the common term “software” which designates products sold by the Complainant through its online supermarket. The mere adjunction of a generic word is not a distinguishing feature and does not remove the likelihood of confusion.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as he is neither affiliated with the Complainant in any way nor authorized to seek registration of a domain name incorporating the AUCHAN Marks. Furthermore, the Complainant contends that the Respondent is not commonly known under the domain name and is not making any non-commercial or fair use of the domain name as the domain name leads Internet users to a page generated by the reseller, indicating that the domain name is provided by “Home.pl” and redirecting the user after a few seconds to “Home.pl’s” website.

(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent knew or must have known the AUCHAN Marks at the time it registered the domain name because of the Complainant’s business activities, especially in Poland, where the Respondent is located, and because of the fact that the only difference between the Complainant’s well-known and highly distinctive trademark and the domain name is the addition of the generic term “software” which makes it clear that the Respondent had the Complainant’s trademark in mind when registering the domain name in dispute. With regard to bad faith use, the Complainant contends that the Respondent did not make any active use of the disputed domain name. However, the Complainant contends that the lack of active use, in addition to the registration of a domain name corresponding to a famous trademark which the Respondent must have been aware of, demonstrates bad faith. The Respondent’s bad faith is further evidenced by the lack of a response to the Complainant’s cease and desist letter.

B. Respondent

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

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s highly distinctive AUCHAN Marks in which the Complainant has exclusive rights.

The mere addition of the generic word “software” following the trademark does not eliminate the similarity between the Complainant’s marks and the domain name, as “software” is a common term which designates products the Complainant sells through its online supermarket. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

(i) circumstances indicating that the 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.

The Complainant is well-known internationally and has established business activities throughout the world since its foundation in 1961. Given that the Complainant owns at least seventeen supermarkets or hypermarkets in Poland, where the Respondent is located, and given the high distinctiveness of the AUCHAN Marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights in the AUCHAN Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.

As the domain name is not actively used by the Respondent, the Panel has to decide whether such (non-)use is to be considered as use in bad faith under the Policy.

The absence of an active use of a domain name does not as such prevent a finding of bad faith. The panel must examine all circumstances of a case to determine whether a respondent is acting in bad faith. Examples of circumstances that may indicate bad faith use include the existence of a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving good faith use of the domain name (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

In the present case, the Respondent has neither replied to the Complainant’s cease and desist letter nor to this Complaint and has therefore not provided any argument supporting an actual or contemplated good faith use of the disputed domain name. On the other hand, the Complainant has provided evidence showing that its trademarks are used internationally and are well-known, inter alia in the country where the Respondent is domiciled. Furthermore, the domain name fully incorporates the Complainant’s highly distinctive AUCHAN Marks next to the generic term “software”, a product sold by the Complainant and protected by several of the Complainant’s trademarks. Finally, in the view of the Panel, the facts of this case do not support any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not infringe the Complainant’s trademark rights. The Panel is therefore convinced that, even though the domain name is not actively used at the moment, the Respondent’s non-use of the domain name equals its use in bad faith.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as well.

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 <auchansoftware.com> be transferred to the Complainant.

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Brigitte Joppich
Sole Panelist

Date: June 22, 2007