The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Ernest Medina of Virginia, United States of America / Domains By Proxy, LLC, DomainsByP, of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2016. On April 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2016 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2016.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2016.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 30, 2016. 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 leading retailer in Europe and the second-largest retailer in the world, employing more than 380,000 people with more than 11,900 stores in 35 countries and more than 12,5 million customers around the world, offering them a wide range of products and services.
Details of International Registration No 1010661 and European Community Registration No. 008779498 of the Complainant’s CARREFOUR trademark have been submitted to the Panel.
The disputed domain name was registered on April 5, 2016. The website at the disputed domain name resolves to an inactive website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its CARREFOUR trademark, with a mere transposition of the “a” and “e” of the Complainant’s CARREFOUR trademark.
The Complainant alleges that the Respondent is neither commonly known by the name “Cerrafour”, nor is in any way affiliated with the Complainant, nor is it authorized or licensed to use the CARREFOUR trademark, or to seek registration of any domain name incorporating said mark.
The Complainant alleges that the disputed domain name was registered in bad faith. Although the disputed domain name is not currently in use, the Complainant argues that it should be regarded as being used in bad faith as it poses an obvious risk to the Complainant’s business. The Complainant has drawn the Panel’s attention to an email sent to an employee of the Complainant, purportedly on behalf of an immediately recognizable senior official of the Complainant company, “signed” with the name of that senior official “@”, which the Complainant alleges to be clearly fraudulent, and a phishing attempt. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 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
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
In the Panel’s opinion, the Complainant has demonstrated clear rights to its CARREFOUR trademark, and the Panel recognises it to be well-known. The disputed domain name incorporates the Complainant’s CARREFOUR trademark in its entirety, with the mere transposition of the letters “a” and “e”. In English and other European languages such as French, the effect of this transposition would be to alter the pronunciation, the initial “c” of CARREFOUR being produced as a “hard c”, whereas the initial “c” of “cerrafour” would be pronounced as a “soft c”. However, in the Panel’s opinion, pronunciation plays a lesser role in keyboard communications than in normal commercial business, where the role of the human voice plays a greater part in transactions. The Panel also regards this pronunciation difference as merely fortuitous, as he is of the view that the disputed domain name was clearly designed to be confused with the Complainant’s mark. The Complainant’s mark and the disputed domain name are identical in the number of letters they respectively contain, and, in the Panel’s opinion, the overall impression between CARREFOUR and CERRAFOUR is sufficiently similar for the Complainant’s mark and the disputed domain name to be regarded as being confusingly similar to each other, which he so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity provide by these proceedings to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainants’ well-known trademark was incorporated in its entirety, with a mere transposition of two letters and the legally irrelevant “.com” gTLD indicator, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
In connection with use in bad faith, the Panel agrees with the UDRP panel’s reasoning in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, that the apparent lack of so-called active use does not prevent a finding of bad faith use, and in the circumstances of the present case, can find no plausible alternative reason for the adoption of the disputed domain name to a deliberate attempt to illegitimately profit from the reputation of the Complainant’s CARREFOUR trademark.
Further, in the Panel’s opinion, the attempt to use the disputed domain name in the email above mentioned to impersonate a senior official of the Complainant company demonstrates the extent to which the Complainant’s legitimate interests could be unfairly damaged by the continued ownership of the disputed domain name by its current owner. The Panel, accordingly, finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy.
Further, noting the fraudulent email scheme the Panel is convinced that the registration of the disputed domain name poses a real threat to the legitimate interests of the Complainant’s trademark CARREFOUR. The Panel, therefore, finds that the disputed domain name is being used in bad faith and that, accordingly, the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) 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.
George R. F. Souter
Sole Panelist
Date: June 13, 2016
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