The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Tony Mancini, USDIET of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2014. On July 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on August 25, 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 the leading retailer in Europe and the second-largest retailer in the world.
The Complainant has presence in more than 30 countries; it generates more than 55% of its sales outside France. As of December 2013, the Complainant operates over 10,000 stores in 34 countries including the United States where it operates 762 stores under its banners.
The Complainant currently operates under four store formats: hypermarkets, supermarkets, convenience stores and cash and carry shops for professionals. Among these stores, there is Carrefour Market, which guarantees quality products and fresh products.
The Complainant is the owner of the following trademark registrations:
- International trademark CARREFOUR No. 1010661 dated of April 16, 2009.
- International trademark CARREFOUR MARKET + logo No. 1034794 dated December 23, 2009.
The Complainant is the owner of the following domain name registrations:
- registered on October 25, 1995;
- registered on August 16, 2007.
The disputed domain name was registered on June 28, 2013. 5. Parties’ Contentions A. Complainant
The Complainant claims that its CARREFOUR and CARREFOUR MARKET trademarks enjoy a worldwide reputation. Complainant further indicates that it owns numerous CARREFOUR and CARREFOUR MARKET trademark registrations around the world.
The Complainant claims that the disputed domain name is identical to the Complainant’s trademarks and company name. The disputed domain name reproduces entirely the Complainant’s trademark.
The Complainant indicates that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the CARREFOUR and CARREFOUR MARKET trademarks preceded the registration of the disputed domain name for years.
The Complainant also alleges that the Respondent is neither commonly known by the names “Carrefour” and “Carrefour Market”, nor in any way affiliated with the Complainant, nor authorized or licensed to use the CARREFOUR and CARREFOUR MARKET trademarks, or to seek registration of any domain name incorporating said marks.
The Complainant states that in this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademarks, as well as the strong reputation of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademarks at the time of registration of the disputed domain name.
The Complainant additionally states that during the exchanges of email communications between the Complainant and the Respondent, the latter revealed its intention to sell the disputed domain name and to gain financial advantages. This behavior is a strong indication that the Respondent hoped to sell the disputed domain name to the Complainant or to another competitor of the Complainant which is clear evidence of registration and use in bad faith.
Finally the Complainant states that the disputed domain name previously resolved to a French website related to online drugstores particularly from French supermarkets and additionally displayed the trademark and logo CARREFOUR as well as competitors’ trademarks. Hence, it reasonably cannot be inferred that the Respondent was not aware of the trademark while the trademark was displayed on the website associated to the disputed domain name. Furthermore, after receipt of the cease and desist letter the Respondent deactivated the litigious website. Presently, the Respondent does not use the disputed domain name, as it is currently inactive.
Consequently, in view of the above-mentioned circumstances, it is established that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the trademarks CARREFOUR and CARREFOUR MARKET (Annex 5 to the Complaint). The disputed domain name consists of the term “carrefour market”, but with a hyphen between the mentioned terms. As indicated by the Complainant, previous UDRP panels constituted under the Policy have held that the hyphenation of a trademark in a domain name does not eliminate the identity or confusing similarity with the mentioned trademark.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.
The Panel will consider the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the domain name.
Furthermore, the Respondent is neither commonly known by the names “Carrefour” and “Carrefour Market”, nor in any way affiliated with Complainant, nor authorized or licensed to use the CARREFOUR and CARREFOUR MARKET trademarks.
Furthermore, the Complainant contacted the Respondent by sending a cease-and-desist letter. The Respondent replied indicating the following “or Youbuyit!! or we keep it we don’t use it but whey we should give it to you in this case go through legal procedures and spend money for your customer we already stopped using it ! but we paid for that”(Annex 4 to the Complaint). Given the above statement it can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant when he registered the disputed domain name, since the Complainant owns numerous trademarks that are well- known throughout the world. Therefore, it is highly unlikely that the Respondent did not have this trademark in mind when registering the disputed domain name, specially when considering that the only difference between the disputed domain name and the Complainant’s trademark is a mere hyphen, reproducing the Complainant’s trademark in its entirety. Consequently, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith.
In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith, since during the exchange of email correspondence between the Respondent and the Complainant, the Respondent clearly asked for money in exchange for the transfer of the disputed domain name.
The Complainant indicates that the disputed domain name originally resolved to a website that mentioned several French supermarkets, also showing the Complainant’s trademark and logo as well as its competitors logos and proclaimed to be a competitor of the Complainant. After receipt of the cease and desist letter the Respondent deactivated such website and presently the website is inactive.
In view of the above it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
In addition to the above, the circumstance that the Respondent answered the cease and desist letter with an offer of sale, is in the Panel’s view evidence to conclude that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Andrea Dawson
Sole Panelist
Date: September 4, 2014
Full & Egal Universal Law Academy