The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Jean-Claude Bot of Saujon, France / Albert Pierre of Teulat, France. 2. The Domain Names and Registrars
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J and the disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2017. On May 16, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 17, 2017, the Registrars transmitted by email to the Center their verification responses 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 May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2017.
The Center appointed Isabelle Leroux as the sole panelist in this matter on June 21, 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 an international retailer which operates nearly 12,000 stores and e-commerce sites in more than 30 countries. It owns numerous well-known trademark registrations around the world, and in particular:
- French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, covering services in classes 35 to 42;
- European Union Trade Mark (“EUTM”) CARREFOUR No. 008779498, registered on July 13, 2010, covering services in class 35;
- EUTM CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed, covering goods and services in classes 9, 35 and 38.
The Complainant has also registered a number of domain names which include the trademark CARREFOUR.
The Complainant regularly offers promotional games and contests to its clients whereby opportunities to win several gifts are given. As an example, the contest for its birthday is known in French as “Grand Jeu Carrefour Anniversaire”. It also offers many gift cards also known as “Cartes Cadeaux” in French.
“Anniversaire” and “cadeau” respectively mean “birthday” and “gift” in French.
On May 10, 2017, the Respondent registered the disputed domain names and .
The disputed domain name used to resolve to a page reproducing the Complainant’s logo which contained an online game attempting to fraudulently obtain credit card information from Internet users. After a cease-and-desist letter was sent to the Respondent the domain name resolved to the Complainant’s official website.
The disputed domain name resolves to the parking page of the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain names are identical or at least confusingly similar to the Complainant’s trademark and company name CARREFOUR.
The Complainant explains that it owns several CARREFOUR trademarks. It argues that the disputed domain names reproduce the well-known trademark CARREFOUR in its entirety. Moreover, it considers that the terms “cadeau” and “anniversaire”, meaning “gift” and “birthday” in French, are generic terms, and increase the risk of confusion as they correspond to the Complainant’s promotional operations.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant explains that it did not authorize the use of its trademark by the Respondent who is not affiliated with the Complainant. It argues that, as the disputed domain names are almost identical to the widely known CARREFOUR trademark, the Respondent cannot reasonably pretend it was intending to develop legitimate activity through the disputed domain names.
Moreover, the Complainant states that the disputed domain name used to resolve to a website imitating the official website of the Complainant attempting to fraudulently obtain personal data and credit card information and now currently resolves, without authorization, to the Complainant’s website. Consequently, the Complainant’s argues that the Respondent fails to show any intention of fair use of this disputed domain name.
The disputed domain name resolves to the parking page of the Registrar which can be assimilated to an inactive page.
Finally, the Complainant explains that it tried to reach the Respondent before submitting the Complaint but did not receive any answer.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Complainant considers that the Respondent knew of the Complainant’s trademarks, given the reputation of the Complainant and its trademark CARREFOUR around the world. Moreover, the composition of the disputed domain names entirely reproduces the Complainant’s trademark CARREFOUR with the association of French generic terms which are linked to the Complainant’s promotional marketing operations. Also, the Complainant states that the previous and actual website of the disputed domain name is directly connected to the Complainant and its official websites.
In addition, the Complainant contends that the fact that the disputed domain name is aimed at stealing valuable information such as personal banking information from the Complainant’s customers is evidence of bad faith. The Complainant also argues that the Respondent is likely to have registered the disputed domain names to prevent the Complainant from reflecting its trademark in the disputed domain names, which constitutes evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Consolidation of Respondents
Previous UDRP panels have regularly ruled that consolidation of multiple domain name disputes under paragraph 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve.
Hints of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses (Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281; Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057).
The Panel notes that there are technically two distinct respondents in this case “Jean-Claude Bot” and “Albert Pierre” however the email addresses of the two registrants and of the two administrative contacts are identical.
Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules, and consistent with prior relevant UDRP decisions in this area. The Panel will proceed to a decision on the merits of these disputed domain names. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving each of the following:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence that it owns the CARREFOUR trademark registrations No. 1487274, No. 008779498 and No. 005178371 covering a wide variety of goods and services.
The disputed domain names reproduce identically the CARREFOUR trademark which is the dominant component of the disputed domain names.
The disputed domain names and associate the trademark and company name CARREFOUR with the French dictionary terms “cadeau” meaning “gift” in English and “anniversaire” meaning “birthday” in English, respectively. The Complainant has provided evidence that those terms correspond to its promotional marketing operations consisting of offering gifts or gift cards based on contests or on special occasions like its birthdays.
According to the consensus view of UDRP panels, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
On the contrary, the Panel finds that addition of the descriptive words referring to the Complainant’s commercial operations may enhance the risk of confusion.
The hyphens, between “carrefour” and “cadeau” on the one hand and between “carrefour” and “anniversaire” on the other hand can be considered as irrelevant as regards confusing similarity.
Finally, previous UDRP panels have regularly ruled that the generic Top-Level Domain (“gTLD”) “.com” and “.net” are not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names (The Royal Bank of Scotland Group plc v. Najeeb Alim,WIPO Case No. D2012-1707 and Osram AG v. Alvin Ronaldo, WIPO Case No. D2013-0167).
Therefore the Panel finds that the disputed domain names are confusingly similar to the trademark CARREFOUR to which the Complainant has rights and thus the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use the CARREFOUR trademark and that there is no business relationship existing between the Complainant and the Respondent.
In addition, the disputed domain names are not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain names.
Indeed, the Complainant provided evidence that the website “www.” associated to the disputed domain name used to resolve toward an imitation of the official website of the Complainant attempting to fraudulently obtain sensitive information like personal data and credit card information, and that after a cease-and-desist letter was sent it resolved, without authorization, to the Complainant’s website.
The website “www.” associated to the respective disputed domain name redirects to the hosting company’s webpage.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel finds no indication that any of the circumstances described in paragraph 4(c)(i) to (iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and thus the requirement under paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
It has been proven to the Panel’s satisfaction that the Complainant’s trademark CARREFOUR is well-known, and the Panel accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s activities. In addition, the composition of the disputed domain names entirely reproduces the Complainant’s trademark CARREFOUR with the association of French dictionary terms which are linked to the Complainant’s field of activities and promotional marketing operations.
Moreover, the previous website of the disputed domain name was referring to the Complainant, its logo, promotional offers, activities and official websites.
Also previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. 2008-0226).
The above elements all indicate that the disputed domain names have been registered in bad faith.
The Complainant provided evidence that the disputed domain name used to resolve towards a website imitating the official website of the Complainant attempting to fraudulently obtain personal data and credit card information from the Complainant’s customers. After a cease-and-desist letter was sent, the disputed domain name resolved, without authorization, to Complainant’s website.
Previous UDRP panels have regularly ruled that bad faith may be established when a fraudulent scheme was set up with the help of a domain name containing the trademark of a company, since the customers or Internet users are being misled and deceived into believing that they are dealing with the owner of the trademark (The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 and OLX, Inc. v. J D Mason Singh,WIPO Case No. D2014-1037).
The disputed domain name redirects to the hosting company’s webpage. Customers may believe that this webpage is associated with the Complainant’s official website and may think that it is not functioning properly, thus causing harm to the Complainant’s image.
In addition, it has been recognized that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In the present circumstances, the Respondent’s passive holding does amount to a bad faith use.
Consequently, the Panel finds that the disputed domain names and have been registered and are being used in bad faith, so that the requirement under paragraph 4(a)(iii) of the Policy is met. 8. 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 names, and be transferred to the Complainant.
Isabelle Leroux
Sole Panelist
Date: July 5, 2017
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