The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Park KyeongSook of GimHae, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Cyrus the Great, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2014. On August 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 proceeding commenced on August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 19, 2014.
The Center appointed Nuno Cruz as the sole panelist in this matter on September 29, 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 belongs to the Carrefour group. The Carrefour group is the leading retailer in Europe and the second-largest retailer in the world.
In 2012 the Carrefour group launched the brand Carrefour bio, which commercialises organic products.
The Complainant has been operating in the Republic of Korea since 1996 and had invested more than 1.5 trillion Won in that country until mid-2006.
The trademark CARREFOUR is well known, as confirmed by the previous decisions under the UDRP, such as Carrefour v. Yujinhua,WIPO Case No. D2014- 0257; Carrefour v. Karin Krueger,WIPO Case No. D2013-2002.
The Complainant is the owner of Korean trademarks registration numbers 5120050001235; 5020060001167; 5020060001166; and 5020060001165, CARREFOUR, and French trademark registration number 3386311 CARREFOUR BIO plus logo, as may be confirmed from the certificates of registration attached to the Complaint as Annex 5.
The Complainant operates, among others, domain names such as (registered on May 28, 2009) and (registered on October 25, 1995).
The disputed domain name was registered on April 27, 2014.
The Respondent is Park KyeongSook.
On May 20, 2014, representatives of the Complainant sent a cease-and-desist letter to the Respondent via email in which they requested the Respondent to transfer the disputed domain name to the Complainant. On May 28, 2014, the Responded replied and asked for USD 1,500 in exchange for the transfer of the disputed domain name. After the refusal of this proposal by the Complainant, the Respondent replied, on June 30, 2014, that he maintained his position to sell the disputed domain name, but this time for USD 1,000. 5. Parties' Contentions A. Complainant
The Complainant contends that the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain name is confusingly similar to its trademarks CARREFOUR and CARREFOUR BIO.
The Complainant argues that the disputed domain name reproduces entirely the Complainant's Trademark CARREFOUR with the association of the generic term "bio" corresponding to a category of products sold by the Complainant and imitates the Complainant's Trademark CARREFOUR BIO by merely inversing the mark's sequence.
The Complainant also submits that the disputed domain name is virtually identical to the Complainant's domain name .
The Complainant also states that the generic Top-Level Domain (gTLD) ".com" has generally not to be taken into account when comparing the disputed domain name with a previously registered trademark, as it is insufficient to avoid a finding of confusing similarity.
Moreover, the Complainant states that by registering said the disputed domain name, the Respondent created a likelihood of confusion with the Complainant's trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant affirms that the disputed domain name resolves to an inactive webpage and that the Respondent did not demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant also states that it appears that the only reason why the Respondent has registered the disputed domain name is for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
(iii) The disputed domain name was registered and is being used in bad faith.
Finally the Complainant argues that the Respondent revealed his intention to sell the domain name to gain financial advantages, which is clear evidence of registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The fact that the Respondent has not submitted a response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
The Complainant has been able to demonstrate that it has rights to the trademarks CARREFOUR and CARREFOUR BIO (Annex 5 to the Complaint).
At the same time, the disputed domain name incorporates the whole of the Complainant's registered Trademark CARREFOUR. It differs only in the addition of the descriptive term "bio" and the addition of the gTLD, ".com".
It happens that the term "bio" of the disputed domain name refers, among other meanings, to "biological" or "organic", and thus it does not have distinctiveness as a trademark.
The part ".com" is a mere gTLD suffix.
Therefore, the portions "bio" and ".com" do not constitute essential elements in comparing the disputed domain name and the Complainant's trademarks. Given the analysis above, the prominent portion "carrefour" of the disputed domain name and the Complainant's trademark are identical with each other, and thus the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark CARREFOUR.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant's trademark CARREFOUR BIO, since the mere reversal of the sequence of a trademark in a domain name is not sufficient to remove the likelihood of confusion.
The Panel, therefore, finds that the Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark CARREFOUR or CARREFOUR BIO in a domain name. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S,WIPO Case No. D2000-0011.
The disputed domain name resolves to an inactive webpage. Passive holding of a disputed domain name incorporating a third party well-known mark does not normally amount to a bona fide use. It was established even since the beginning of the UDRP that "inaction" / "passive holding" can, in certain circumstances, constitute bad faith use (see CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242).
Also, the Respondent did not demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
In addition, the fact that the Respondent promptly took the initiative to sell the disputed domain name, as mentioned in greater detail below, reinforces the evidence of a lack of interest in the use of this domain name in the course of trade.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). 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 and use of a 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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 website or location or of a product or service on its website or location.
Taking into consideration the well-known character of the CARREFOUR trademark and that the Complainant has been operating in the Republic of Korea under that name since 1996 and had invested more than 1.5 trillion Won in that country until mid-2006, the Panel finds that it is highly unlikely that the Respondent did not know about the Complainant's rights in the trademark CARREFOUR and that the disputed domain name was confusingly similar to the Complainant's trademarks CARREFOUR and CARREFOUR BIO.
Furthermore, the fact that the Respondent expressed an intention to sell the disputed domain name for a price much higher than what he likely paid for the registration of this domain name, having requested first the sum of USD 1,500 and later USD 1,000, demonstrates that he clearly intended to gain financial advantage.
It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain names can be compelling evidence of bad faith registration and use as per paragraph 4(b)(i)(see The Board of Regents of the University of Nebraska v. Bill Saedlo,WIPO Case No. D2000-0154; Adamovske Strojirny v. Tatu Rautiainen,WIPO Case No. D2000-1394).
Moreover, at the time of drafting the decision, the website at the disputed domain name was still inactive. As previously mentioned, passive holding can, in certain circumstances, evidence bad faith use. In the present case, the Respondent registered a domain name confusingly similar to a third party's well-known trademark.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Nuno Cruz
Sole Panelist
Date: October 14, 2014
Full & Egal Universal Law Academy