The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Karin Krueger of Drums, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, the Registrar 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 November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2013.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 9, 2014. 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, Carrefour, is a worldwide group of companies that owns numerous well-known CARREFOUR trademarks around the world in the field of retail, ticket offices, travel, banking and insurance. Including franchises and partners, the Carrefour Group has around 10,000 shops in 34 countries. The Complainant has grown to become the second-largest retailer in the world and the largest in Europe, operating hypermarkets, supermarkets, convenience stores and cash and carry shops for professionals.
The Complainant owns and operates various websites in order to present the Complainant’s services and products, including (registered October 25, 1995) and (registered June 23, 2005).
The Complainant, in particular, is the owner of a Community trademark CARREFOUR no. 008779498 dated December 23, 2009; an international trademark CARREFOUR no. 1010661 dated April 16, 2009; and a US trademark CARREFOUR no. 3720625 dated December 8, 2009.
The Complainant sent a cease-and-desist letter to the Respondent via email on June 28, 2013, followed by several reminders, but no response was received from the Respondent.
The disputed domain name was registered on May 3, 2013. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant and its CARREFOUR trademarks enjoy a worldwide reputation. The Complainant has registered numerous CARREFOUR trademarks in countries around the world. The Complainant further has registered a number of domain names around the world that incorporate the CARREFOUR trademark.
The disputed domain name is confusingly similar to the Complainant’s CARREFOUR trademark and company name. The disputed domain name reproduces the Complainant’s CARREFOUR trademark in its entirety, which previous UDRP panels have considered to be “well-known” and “famous”. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.
The disputed domain name reproduces entirely the trademark of the Complainant together with a generic and descriptive word “group” intersected with a hyphen. The descriptive term “group” does not distinguish the disputed domain name from the Complainant’s trademark but on the contrary, suggests that the registrant of the disputed domain name is part of the Complainant’s group. The disputed domain name is confusingly similar to the Complainant’s trademark since Internet users may expect to land on a website of the Complainant when typing in the Complainant’s trademark CARREFOUR together with the term “group”, which is commonly understood and used for a group of companies under common control. Addition of generic terms to well-known trademarks does not prevent the risk of confusion between the complainant’s trademark and the disputed domain name.
Equally, the addition of hyphenation in a disputed domain name does not prevent the risk of confusion between the Complainant’s trademark and the disputed domain name.
The addition of the gTLD “.info” is irrelevant and it is well established practice that gTLDs do not impact on the overall impression of the dominant portion of the disputed domain name.
Due to popularity of the Complainant’s trademark CARREFOUR, the public has learnt to perceive goods and services offered under that trademark to be those of the Complainant. Therefore the public would reasonably assume that the disputed domain name is owned or related to the Complainant.
The disputed domain name is identical in all material respects to the Complainant’s company name and trademark CARREFOUR and as such is likely to mislead Internet users into believing that the disputed domain name is authorized by or is otherwise affiliated with the Complainant or the Complainant’s business. It may lead Internet users to wrongly believe that the Complainant has endorsed, or otherwise created the disputed domain name.
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 nor has been authorized by the Complainant to use and register its trademark or to register any domain name incorporating the said trademark.
The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the CARREFOUR trademark preceded the registration of the disputed domain name by years.
As the disputed domain name is identical to the famous CARREFOUR trademark of the Complainant, the Respondent cannot reasonably claim to have intended to develop legitimate activity through the disputed domain name.
The Respondent is neither commonly known by the Carrefour name, nor is in any way affiliated with the Complainant, nor authorized or licensed to use the CARREFOUR trademark or to seek registration of any domain name incorporating the said trademark. In the absence of any permission or license from the Complainant to use such widely known trademark, the Respondent cannot reasonably claim any actual or contemplated bona fide or legitimate use of the disputed domain name.
The Respondent did not demonstrate any use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name is inactive and therefore the Respondent has not shown any intention of noncommercial or fair use of the disputed domain name. It is most likely that the Respondent has no legitimate interests or rights in the disputed domain name.
The Respondent did not demonstrate any reason for the dispute domain name to be identical to the Complainant’s trademarks, activity, domain names and products and this cannot correspond to a legitimate interest in the disputed domain name.
The Complainant contacted the Respondent by sending a cease-and-desist letter by email. However, despite numerous reminders, the Respondent did not reply. If the Respondent had any rights or legitimate interests in the disputed domain name, the Respondent would have defended its rights in the response to the cease-and-desist letter.
The disputed domain name was registered and is being used in bad faith:
It is implausible that the Respondent was unaware of the Complainant when the disputed domain name was registered since the Complainant is well known throughout the world and its trademark registrations cover, amongst other countries, United States of America, the home country of the Respondent.
The Respondent’s reproduction in its entirety of the Complainant’s CARREFOUR trademark in the disputed domain name clearly proves that the Respondent was aware of the existence of the Complainant’s trademark. Opportunistic bad faith has been found in previous UDRP decisions where a well-known trademark is used in a disputed domain name by someone with no connection to the trademark.
It was the Respondent’s duty to establish that the registration of the disputed domain name does not infringe on any rights or any third party. A quick Internet search would have revealed the Complainant’s CARREFOUR trademark to the Respondent. Failure to do such a search is a contributory factor to bad faith.
It is hard to believe that the Respondent was unaware of the Complainant’s CARREFOUR trademark when the disputed domain name was registered. This knowledge at the time of registration proves that the disputed domain name was registered in bad faith.
The Respondent did not try to defend its position, nor did the Respondent provide any arguments as to why the disputed domain name was registered. Additionally the disputed domain name remains inactive. This demonstrates lack of legitimate interest in the disputed domain name and suggests evident bad faith behind the registration.
It is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. There is no doubt that Internet users attempting to visit the Complainant’s website have ended up on the domain name registered by the Respondent. As the disputed domain name is confusingly similar to the Complainant’s trademark, a likelihood of confusion is presumed and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to that of the Respondent.
The Respondent does not use the disputed domain name at present and it is currently inactive. It is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate, such as trademark infringement or an infringement of consumer protection legislation. Passive holding of a disputed domain name does not preclude the finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has registered the CARREFOUR trademark in a number of jurisdictions. The Complainant submits that the disputed domain name is confusingly similar to its trademark as the disputed domain name incorporates the CARREFOUR trademark in its entirety. The Panel finds the Complainant’s CARREFOUR trademark to be well-known worldwide.
In relation to the incorporation in the disputed domain name of the generic word “group” the Panel finds that the inclusion of a generic element together with a well-known trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a well-known trademark. The Panel finds that due to the fame of the CARREFOUR trademark of the Complainant, the addition of the merely generic or descriptive element “group” in the disputed domain name does nothing to avoid a finding of confusing similarity in this case. Indeed, the inclusion of this term in the disputed domain name together with the business name of the Complainant may increase the risk of confusion for Internet users taking into account that the Complainant does have a large worldwide group of companies trading under the CARREFOUR trademark. Therefore Internet users may misleadingly assume that the disputed domain name may be a central portal for all business of the Complainant.
The hyphenation of the disputed domain name, as well as the addition of a gTLD “.info” does nothing to distinguish the disputed domain name from the Complainant’s well-known CARREFOUR trademark.
It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).
Accordingly, the Panel finds the incorporation of the merely generic or descriptive term “group” in the disputed domain name together with a hyphen and gTLD “.info” does not prevent a finding of confusing similarity to the Complainant’s trademark CARREFOUR.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights and legitimate interests in the disputed domain name.
The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant the Respondent was using the disputed domain name for a bona fide offering of goods and services.
According to the documents submitted by the Complainant the disputed domain name is currently inactive. Clearly such use of the disputed domain name in the Panel’s view cannot constitute a bona fide offering of goods and services in the circumstances of this case due to the unauthorized use of the Complainant’s trademark CARREFOUR in its entirety in the disputed domain name. There is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel recalls that the Respondent registered the disputed domain name on May 3, 2013. The Complainant asserts that the Complainant has been trading under the CARREFOUR trademark long before the registration of the disputed domain name and the CARREFOUR trademark has acquired worldwide reputation and is globally known.
Therefore the disputed domain name was registered with the knowledge of the CARREFOUR trademark and its reputation and it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.
It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s CARREFOUR trademark as well as the goodwill associated with it. Even if the Respondent was not aware of the Complainant’s CARREFOUR trademark (which in itself is a virtual impossibility), a simple Internet search would have put the Respondent on notice of the Complainant’s rights in the CARREFOUR trademark and goodwill associated with it.
The disputed domain name may further mislead Internet users as to the affiliation between the disputed domain name and the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainants, for valuable consideration in excess of its 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 online location, by creating a likelihood of confusion with the complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the disputed domain name was registered for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name with the CARREFOUR trademark of the Complainant.
The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the well-known CARREFOUR trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith.
The Panel notes that the disputed domain name is currently inactive. However, such “passive holding” does not prevent a finding of bad faith. In this case, the Panel finds it difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate.
In this regard, the Panel also draws inferences of bad faith from the lack of any response from the Respondent to the cease and desist letter as well as the Complaint.
Considering all circumstances, the Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith. 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.
Irina V. Savelieva
Sole Panelist
Date: January 23, 2014
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