The Complainant is Carrefour S.A. of Boulogne Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Patrick Demestre of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 21, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name(s). On December 22, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2012.
The Center appointed Cherise M. Valles as the sole panelist in this matter on January 30, 2012. 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 the world's second-largest, and Europe's largest, retailer. It was created in 1959 and is now primarily involved in the fields of retail, travel, banking, and insurance. Carrefour has over 15,500 stores and employs approximately 471,755 individuals.
It is the owner of the following trademarks, among others:
- International trademark CARREFOUR, no. 1010661 dated April 16, 2009 in class 35;
- European Community trademark CARREFOUR, no. 8779498 dated December 23, 2009 in class 35.
Patrick Demestre is the registrant of the disputed domain name . The disputed domain name was registered on August 20, 2011 with Melbourne IT Ltd. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on December 21, 2011, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the CARREFOUR trademark in light of the fact that it wholly incorporates the Complainant’s registered trademark. The disputed domain name differs only from the licensed trademark of the Complainant in its addition of the generic French word “magasin” to the Carrefour trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file any reply in these proceedings and is therefore in default and the Panel shall draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark Carrefour. The disputed domain name incorporates the Complainant’s mark in its entirety, with the exception of the addition of the generic French term “magasin”. The word "magasin" is generic because it is the French word for “store”. It has been held in many prior UDRP panel decisions that when a domain name incorporates a registered mark in its entirety, it is generally accepted to be confusingly similar to that registered trademark. See, Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited,WIPO Case No. D2006-1113; and Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
This is especially true where the domain name incorporates a well-known mark. The notoriety of the trademark CARREFOUR is well-known and has been confirmed by previous UDRP panels: Carrefour SA v. Eric Langlois,WIPO Case No. D2007-0067.
Thus, the combination of the Carrefour mark with other generic names in a domain name can be considered as identical or confusingly similar to the mark: Carrefour SA v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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 Respondent did not submit any Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s well-known Carrefour trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021. The Complainant, who registered the trademark CARREFOUR, has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Respondent has not attempted to make bona fide or legitimate noncommercial use of the disputed domain name. The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead, the evidence suggests that the Respondent has intentionally chosen a domain name identical to the Complainant’s business name and mark in order to make commercial use of the Complainant’s business name. The evidence indicates that when one clicks on the disputed domain name, one is diverted to sponsored links to generate pay-per-click advertising revenues. Previous panels have found that such use does not constitute a bona fide offering of goods and services: Pepperdine University v. The CJ Group, LLC,WIPO Case No. D2007-1389. In the circumstances, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of 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 web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademark and that the Respondent has no relationship to the CARREFOUR trademark. The Panel shares the view that the registration of a domain name that is confusingly similar or identical to a well-known trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319.
As the both the company Carrefour and the CARREFOUR trademark are well-known, it is clear that the Respondent would have been aware of the goodwill associated with the word Carrefour and wished to create a likelihood of confusion with the Complainant's mark.
Moreover, the Respondent has ignored the cease-and-desist letter and its reminders sent by the Complainant. This is another indication of the bad faith of the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: February 10, 2012
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