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Auchan v. Oushang Chaoshi [2005] GENDND 1583 (30 September 2005)

World Intellectual Property Organization

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 & Associ¨¦s, France.

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 ¡°Center¡±) 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 ¡°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 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 Respondent¡¯s 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, paragraph 7.

4. Factual Background

The Complainant is a retail group, incorporated in France, in 1961 by G¨¦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 Complainant¡¯s 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 Complainant¡¯s letter. As the parties failed to arrive at an amicable settlement, the Complainant decided to file the present Complaint according to the UDRP.

5. Parties¡¯ Contentions

A. Complainant

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 Complainant¡¯s 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 ¡°OUSHANG¡± is the official Chinese name for AUCHAN and the name itself has been trademarked. The domain name <oushang.net> reproduces entirely the Complainant¡¯s 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 ¡°Å·ÉС±. 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 ¡°.net¡± 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 ¡°OU SHANG¡± in any way before or after the Complainant started their business. The Respondent is not known under the name ¡°OU SHANG¡± or any similar term. Besides, ¡°OU SHANG¡± 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 ¡°OU SHANG¡± and it resolves to a website that infringes the trademark ¡°AUCHAN¡± and the trademark ¡°AUCHAN¡± 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 ¡°AUCHAN Direct¡± which has been registered via an international trademark, designating among other countries China. In the Complainant¡¯s opinion, the reproduction of the Complainant¡¯s trademark ¡°OU SHANG¡± 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 Complainant¡¯s 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 ¡°OUSHANG¡± 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 Complainant¡¯s famous service mark to intentionally attract Internet users to Respondent¡¯s 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 Complainant¡¯s 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 Complainant¡¯s contentions that with the help of those services, the Respondent must be aware of the Complainant¡¯s 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 Respondent¡¯s 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 Complainant¡¯s 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.

B. Respondent

The Respondent did not reply to the Complainant¡¯s 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 Center¡¯s 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 registration¡¯s 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 ¡°the spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties¡¯ 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 factors¡±.

(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 Complainant¡¯s legal services in China. Accordingly, the Complainant contends that this is evidence that the Respondent was then aware of the Complainant¡¯s claims and understood the Complainant¡¯s will.

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 Panel¡¯s discretion under the UDRP

Paragraph 11 of the Rules provides:

¡°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.¡±

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 panel¡¯s 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 case.

(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 Complainant¡¯s 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 Complainant¡¯s contentions. The Panel finds that the Respondent¡¯s failure to respond to the Complaint might not be the result of the Respondent¡¯s 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 English.

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 name; and

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 this proceeding.

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 ¡°Å·ÉС± in China. The English word OUSHANG is the transliteration of AUCHAN ¡°Å·ÉС± in Han Yu Pin Yin (¡°ººÓïÆ´Òô¡±), the phonetic representation of the Chinese characters in English. Although the disputed domain name <oushang.net> is visually different from the Complainant¡¯s trademark AUCHAN, it is confusing similar to the Complaint¡¯s trademark as the disputed domain name reproduces the Complainant¡¯s trademark AUCHAN phonetically in its entirety. Anyone who is conversant in the Chinese language is likely to conclude that OU SHANG probably refers to ¡°Å·ÉС± -- the Chinese mark of AUCHAN. Comparing the disputed domain name and the Complainant¡¯s 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:

¡°(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 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 domain name.

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 trademark; and
(iii) The mark AUCHAN and its Chinese version ¡°Å·ÉС± 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, namely:

(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 Respondent¡¯s 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; or

(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 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 Respondent¡¯s 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 Complainant¡¯s trademark AUCHAN and its Chinese version ¡°Å·ÉС± 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 Complainant¡¯s 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 ¡°AUCHAN Direct¡± which has been registered via an international trademark, designating among other countries China. Given that the disputed domain name and the Complainant¡¯s 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 Complainant¡¯s website to the Respondent¡¯s 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 Complainant¡¯s 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 Complainant¡¯s 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.

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 <oushang.net> be transferred to the Complainant.

Dated: September 30, 2005