The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains by Proxy LLC of Scottsdale, Arizona, United States of America (“First Respondent”) / Nisar Ahmad Zafar of Riyadh, Saudi Arabia (“Second Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Go France Domains, LLC (the “Registrar”). It was registered on June 14, 2016. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2017.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 17, 2017. 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 second largest retailer in the world and the largest in Europe. It operates over 10,000 stores in 34 countries which are either company operated or franchises. Relevantly, given the location of the Second Respondent, the Complainant operates in Saudi Arabia and communicates with its customers in Saudi Arabia via a website located at . It owns a store in Riyadh, which is the city where the Second Respondent resides.
The Complainant operates, among others, the domain names (registered on October 25, 1995), (registered on July 31, 2007) and registered on July 13, 2009.
The Complainant sent a cease-and-desist letter to the First Respondent on October 11, 2016. On October 21, 2016 the First Respondent disclosed the identity of the Second Respondent to the Complainant. The Complainant and Second Respondent then entered into email correspondence. The Second Respondent refused to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its various trade marks for CARREFOUR. In particular the Complainant points to its Community Trade Mark CARREFOUR no 005178371, registered on August 30, 2007 in classes 9, 35 and 36; its Community Trade Mark CARREFOUR no 008779498, registered on July 13, 2010 in class 35; and a number of “Carrefour” logo marks registered in Saudi Arabia since October 18, 2000. The Complainant contends that the disputed domain name “entirely reproduces” the Complainant’s trade mark CARREFOUR, which has been found to be “well-known” in other UDRP decisions.
The Complainant refers to other UDRP decisions in which panels have considered that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark; as well as decisions in which panels have specifically considered that the incorporation of the CARREFOUR trade mark as the sole element of a domain name may be sufficient to find that a domain name is identical or confusingly similar to the Complainant’s CARREFOUR mark. Further, the Complainant contends that the generic Top-Level Domain (“gTLD”) “.store” heightens the confusing similarity between the Complainant’s trade mark and the disputed domain name given that the Complainant is a retailer and operates via numerous physical and online stores. In this regard the Complainant refers the Panel to Carrefour v. Giuseppe Caputo,WIPO Case No. D2015-1928 wherein a panel found that registration by the respondent in that case of a domain name in a new gTLD relating to the Complainant’s activity enhanced the likelihood of confusion with the Complainant’s trade mark.
In relation to the rights/legitimate interests of the Second Respondent in the disputed domain name, the Complainant contends that the Second Respondent has none. It states that the registration of CARREFOUR as a trade mark predated the registration of the disputed domain name by approximately 10 years. The Complainant also contends that as the disputed domain name is similar to its “famous” trade mark CARREFOUR, the Second Respondent “cannot reasonably argue it was intending to develop a legitimate activity through the disputed domain name”. The Complainant states that the Second Respondent is not commonly known by the name CARREFOUR, is not affiliated with the Complainant, nor authorized or licensed to use the trade mark CARREFOUR, or to seek registration of any domain name incorporating that mark. The Complainant refers to other UDRP decisions in which it was found that, in the absence of any licence or permission from the complainant to use a widely known trade mark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. In addition the Complainant contends that the Second Respondent’s actual use of the disputed domain name was not use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. It states that the disputed domain name initially resolved to a parking page displaying commercial links and now resolves to an error page. Further the Complainant contends that the fact that the Second Respondent registered the disputed domain name with a privacy shield service “highlights the fact that the Respondent has no right or legitimate interest in respect of the disputed domain name.”
The Complainant states that the Second Respondent’s email claims that CARREFOUR has a generic meaning in the Second Respondent’s native language Urdu, should not be taken into consideration. This is because the Complainant’s Internet search of an Urdu dictionary showed that the word CARREFOUR has no meaning in Urdu “which is sufficient to prevent any likelihood of confusion with the Complainant’s well-known trade mark where the term “CARREFOUR” is associated with the term “STORE””.
The Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons.
The Complainant contends the disputed domain name was registered in bad faith because “it is implausible that the Respondent was unaware of the Complainant’s trade mark CARREFOUR” when registering the disputed domain name. CARREFOUR has a worldwide reputation and is a well-known trade mark, including in Saudi Arabia, where the Second Respondent is located. The Complainant relies on previous UDRP decisions in which panels have established that knowledge of the Complainant’s intellectual property rights at the time of the registration of the disputed domain name proves registration in bad faith. The Complainant contends that the combination of the well-known trade mark CARREFOUR with the gTLD “.store” “clearly proves that the Respondent was aware of the existence of the Complainant’s trade marks and domain names.” Further the Complainant contends that a quick trade mark search for CARREFOUR would have revealed the existence of the Complainant and its trade mark, and the failure of the Second Respondent to do so is a contributory factor to its bad faith in reliance on Lancome Parfums et Beaute & Cie, L’Oreal v 10. Selling,WIPO Case No. D2008-0226. The Complainant refers to the fact that bad faith can be found when the respondent “knew or at least should have known” of the complainant’s trade mark rights and nonetheless registered a domain name in which they had no legitimate interest (The Gap Inc v Deng Youqian,WIPO Case No. D2009-0113). The Complainant also refers to the fact that the Second Respondent registered the disputed domain name using a privacy service. This is a factor that the Complainant states other UDRP panels have relied on as indicating registration in bad faith.
The Complainant contends that the disputed domain name is being used in bad faith because, although it now resolves to an inactive page, passive holding does not preclude a finding of bad faith (Cleveland Browns Football Company LLC v Andrea Denise Dinoia,WIPO Case No. D2011-0421). In Telstra Corporation Ltd v Nuclear Mashmallows,WIPO Case No. D2000-0003, the panel concluded that the respondent’s passive holding of the disputed domain name in that case was use in bad faith because the complainant’s trade mark was widely known; the respondent had provided no evidence of any actual or contemplated good faith use; the respondent had taken active steps to conceal its identity; and the respondent had provided, and failed to correct, false contact details. The Complainant contends that in these circumstances it is “more likely than not, that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trade mark rights, through the creation of initial interest confusion.” Further, the Complainant contends that it is likely that the Second Respondent registered the disputed domain name to prevent the Complainant from using its trade mark in the disputed domain name; and the Second Respondent has engaged in a pattern of such conduct as he has registered other domain names containing well-known trade marks.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the trade mark CARREFOUR by virtue of its trade mark registrations in Europe for the word mark CARREFOUR and its CARREFOUR logo mark registered in Saudi Arabia. The Panel is also satisfied that the trade mark CARREFOUR is well-known internationally, being present in 33 countries.
The Panel finds that the disputed domain name is identical to the Complainant’s CARREFOUR trade mark. The Complainant’s trade mark is entirely subsumed within the disputed domain name. The inclusion of the gTLD “.store” is insufficient to prevent a finding that the disputed domain name is identical. The Panel accepts the Complainant’s argument that the gTLD in fact increases the likelihood of consumer confusion given that the word “store” is closely related to the Complainant’s business.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not authorized or licensed the Second Respondent’s use of its trade mark and the Second Respondent is not affiliated with the Complainant.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Second Respondent has no rights or legitimate interests in the disputed domain name.
In email correspondence with the Complainant, the Second Respondent contended that “Carrefour” had a meaning in the Second Respondent’s language. The Second Respondent has not responded to the Complaint and therefore this contention has not been repeated. The Panel is prepared to accept the Complainant’s submission that the word “Carrefour” has no meaning in Urdu. However, for the avoidance of doubt the Panel records that even if were the case that “Carrefour” has meaning in Urdu, this by itself is not enough to show that the Second Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, and in the absence of any response from the Second Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online 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 the respondent’s website or location.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) The Second Respondent is located in Saudi Arabia, a country in which the Complainant has a presence. This fact combined with the earlier finding that the CARREFOUR mark is well-known is the foundation for the inference that the Second Respondent would have been aware, or at least should have been aware, of the existence of the Complainant at the time of the registration of the disputed domain name.
(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” The most cursory trade mark or other search or through any online search of existing domain names prior to the Second Respondent registering the disputed domain name would have instantly revealed the Complainant and its trade mark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
(iii) The Second Respondent has registered the domain names , , and . The disputed domain name is the latest in this pattern of behavior. The Panel therefore draws the inference that the Second Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name using the “.store” gTLD, given the fact that the Second Respondent has engaged in a pattern of such conduct.
The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:
(i) In the absence of a response from the Second Respondent, the Panel accepts the Complainant’s contention that the disputed domain name used to redirect to a parking page displaying commercial links. Using the disputed domain name in this manner amounts to intentionally attempting to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the Complainant’s mark. Consumers looking for the Complainant could have mistakenly visited the disputed domain name on the assumption that typing the disputed domain name into a web browser would lead to the Complainant. The Second Respondent will have gained advertising revenue from this.
(ii) The Second Respondent’s current passive holding of the disputed domain name is evidence of use in bad faith, in combinationwith the fact that the Complainant’s trade mark is well known, the Respondent has not responded to the complaint, and has made attempts to conceal his or her identity. In this regard, paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states “The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
The Panel is also entitled to draw adverse inferences from the Second Respondent’s failure to respond to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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.
Andrew Brown Q.C.
Sole Panelist
Date: January 23, 2017
Full & Egal Universal Law Academy