WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Field, Lake & Sky
Case No. D2007-0563
1. The Parties
The Complainant is Carrefour S.A, of Levallois Perret, France, represented by J.-P. KARSENTY & Associ�s of France.
The Respondent is Field, Lake & Sky of Cheyenne, Wyoming, United States of America.
2. The Domain Names and Registrar
The disputed domain names and (hereinafter “Domain Names”) are registered with NameKing Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2007. On April 16, 2007, the Center transmitted by email to NameK a request for registrar verification in connection with the Domain Names at issue. On April 16, 2007 NameK transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 30, 2007 the Center notified that the Complaint was administratively deficient and the deficiency was cured on May 1, 2007. 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 May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2007.
The Center appointed Anna Carabelli as the sole panelist in this matter on June 7, 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 the Rules, paragraph 7.
The Panel independently determined and agrees with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has submitted evidence of the following registered trademarks (Annexes 8 through 15):
A) French trademark registrations:
Trademark
Reg. No.
Registration Date
Carrefour
1565338
December 12, 1989
Carrefour
1487274
September 2, 1988
Carrefour
351147
October 2, 1988
Carrefour
353849
February 28, 1989
Services Financiers Carrefour
97674939
April 23, 1997
Vacances Carrefour
97674943
April 13, 1997
B) International trademark registrations:
Trademark
Reg. No.
Registration Date
Services Financiers Carrefour
681506
October 15, 1997
Vacances Carrefour
681666
October 15, 1997
The Complainant, as the Panel could confirm, holds several domain names composed of the trademark CARREFOUR and the word “finance(s)”, on the one hand, and “voyage(s)”, on the other, under which the Complainant operates websites.
The Complainant offers widely also financial and travel agency services as shown, among others, by the number of Carrefour financial services Pass Card holders (2.700.000) and by the number of travel agencies (95) opened throughout France (Annexes 20 through 24, 28 through 31).
The Respondent registered the Domain Names on the following dates, respectively (Annexes 1 and 2):
- on October 29, 2005;
- on June 13, 2005.
The Domain Names are used as referral portals which through “Sponsored Links” lead to third parties’ web sites (Annexes 39 through 47).
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- the Complainant is well-known worldwide as it is the second largest distribution group in the world and the second in Europe which is common ground in other WIPO UDRP decisions (Carrefour SA contre Eric Langlois, WIPO Case No. D2007-0067; Carrefour S.A. v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837);
- the Complainant holds several trademark registrations in various countries;
- the Complainant holds about 199 domain names incorporating the trademark CARREFOUR, some of which are also associated with the words “finance(s)” and “voyage(s)”;
- the Domain Names are confusingly similar to the Complainant’s CARREFOUR trademarks as their most significant part coincide with the Complainant’s trademark and the words “finance” and “voyage” are not capable to rebut the confusing similarity;
- the Domain Names are also confusingly similar to the Complainant’s trademarks and service marks SERVICES FINANCIERS CARREFOUR and VACANCES CARREFOUR as they explicitly refer to the financial and travel services offered by the Complainant.
With respect to the Respondent, the Complainant further contends that:
- the Respondent has no rights or legitimate interests in respect to the Domain Names as (i) the Complainant never authorized nor consented in the Respondent use of the Domain Names; (ii) the Respondent is not carrying out any bona fide commercial activity under the Domain Names; and (iii) the Domain Names were registered in bad faith;
- the Domain Names were registered in bad faith as, in light of the worldwide notoriety of the Complainant, it is hard to believe that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the Domain Names;
- the Domain Names are being used in bad faith to deceivingly attract and divert people from the Complainant’s products and services and redirect them to third parties’ sites, with an obvious commercial purpose.
- the Respondent’s bad faith is also supported by the facts that (i) the Respondent has been previously involved as Respondent in a similar domain name dispute raised before the WIPO Arbitration and Mediation Center and the case was resolved for the Complainant; and (ii) the Respondent did not reply to a couple of cease and desist letters sent to it by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Domain Names are confusingly similar to the Complainant’s CARREFOUR registered trademarks as they incorporate them in their entirety and the addition of the generic words “finance”, on the one hand, and “voyage” and a hyphen, on the other, is not capable to sufficiently differentiate the Domain Names from the said trademarks. On the contrary, taking into account that the Complainant is widely known also as a financial and travel services provider, the addition of the words “finance” and “voyage” to the trademark CARREFOUR may increase the likelihood of confusion.
Indeed, as established by several WIPO UDRP decisions: (i) the incorporation in a domain name of a distinctive trademark in its entirety creates sufficient similarity between that trademark and the domain name to create a likelihood of confusion (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ , WIPO Case No. D2002–0313); and (ii) the addition of generic terms to a domain name (such as “finance” and “voyage”) incorporating a well-known trademark in its entirety, not only does not eliminate a likelihood of confusion (F. Hoffmann-La Roche AG v. C, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232) but may even reinforce the impression of an affiliation among the domain name and the complainant (Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).
Consequently, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if 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 consumers or to tarnish the trademark or service mark at issue.
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Names under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complaint’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.
Moreover, the Panel finds, in line with WIPO UDRP decisions, that the Respondent’s use of the Domain Names to divert Internet users to his websites and redirect them to other websites, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy (see, e.g., Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142; Motorola, Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).
Consequently, the Panel deems that the Respondent has no rights or legitimate interests in the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As established in section 6.A. above, the Domain Names are confusingly similar to the Complainant’s trademarks which were registered before the registration of the Domain Names by the Respondent.
Moreover, the Panel accepts that the Complainant is the first distribution group in Europe and the second in the world and agrees that the Complainant is widely known also in connection with financial and travel services, based on (i) the number of the Carrefour financial services Pass Card holders (2.700,000), and (ii) the number of travel agencies (95) opened throughout France.
In light of the above, the Panel finds that the Respondent was undoubtedly aware of the Complainant at the time the Respondent registered the Domain Names (see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397).
Consequently, the Panel finds that the Respondent has registered the Domain Names in bad faith.
Moreover, the Respondent’s use of the Domain Names as referral portals to redirect Internet users, through “Sponsored Links”, to third parties’ sites, very likely for the purpose of collecting referral or click-through fees, has been held by various WIPO UDRP decisions as clear evidence of bad faith use of a domain name (see
Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096; Philip Morris Incorporated v. , WIPO Case No. D2003-0004).
In light of all the above circumstances, the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.
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 names and be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Date: June 20, 2007
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