The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2017, 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”).
The Center sent an email in Chinese and English to the Parties on September 20, 2017 regarding the language of the proceeding. The following day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 2, 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 a retailer that operates nearly 12,000 stores and e-commerce sites in more than 30 countries. The Complainant has operated in mainland China since 1995, where by the end of 2013 it operated 236 large-scale integrated supermarkets in 73 cities. The Complainant owns various trademark registrations for CARREFOUR, including International trademark registration number 1010661 registered from April 16, 2009, and Chinese trademark registration number 8696287 registered from November 7, 2011, both specifying services in class 35. Those trademark registrations remain effective. The Complainant has also registered multiple domain names, including registered from October 25, 1995 and registered from June 17, 2004. The Complainant uses its domain names in connection with websites where it provides information about itself and its goods and services.
The Respondent is allegedly an organization located in China. It is associated with over 76,000 domain names, including the disputed domain name, which was registered on March 23, 2017. The disputed domain name does not resolve to an active website but rather is passively held. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s CARREFOUR trademark. The disputed domain name reproduces that trademark, combined with a mere geographical term, separated by a hyphen. The generic Top-Level Domain (“gTLD”) suffix is irrelevant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way nor has it been authorized or licensed by the Complainant to use and register its CARREFOUR trademark or to seek registration of any domain name incorporating that trademark. The disputed domain name resolves only to an inactive webpage.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is well-known throughout the world, including in China. The disputed domain name is too similar to the Complainant’s trademark and own domain name for the Respondent not to have known of the Complainant at the time that it registered the disputed domain name. The Respondent is associated with over 76,000 domain name registrations, some of which incorporate third party trademarks like the disputed domain name. It is more likely than not that the Respondent’s primary motive as regards the disputed domain name is to try to capitalize on or otherwise take advantage of the Complainant’s trademark rights through the creation of initial interest confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that it has no knowledge of Chinese and that translation of the Complaint would cause undue delay and substantial expense, and that the disputed domain name includes only Latin characters. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. Having received notice of the Complaint in Chinese and English, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the CARREFOUR trademark.
The disputed domain name incorporates the Complainant’s CARREFOUR trademark in its entirety as its only distinctive element.
The disputed domain name contains the additional element “china” which is a country name and a hyphen. As a mere geographical term, the additional element “china” is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768. The addition of the hyphen is mere punctuation and too minor a difference to dispel confusing similarity.
The disputed domain name also contains the gTLD suffix “.com” but a gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of assessing confusing similarity. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain name does not resolve to any active website. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and there is no evidence on the record of any preparations to use it in this way. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
As regards the second circumstance above, the Respondent’s name is recorded in the Registrar’s WhoIs database as “Wuxi Yilian LLC”, which does not resemble “Carrefour-China” or “Carrefour”. There is no evidence on the record that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the Panel observes that the disputed domain name incorporates the Complainant’s CARREFOUR trademark in its entirety. The Respondent registered the disputed domain name years after the Complainant registered its trademark in China, where the Respondent is located. The Complainant has a strong reputation in its CARREFOUR trademark, including in China, due to the widespread promotion and use of that trademark over many years in association with its stores and e-commerce sites. For example, the Complainant and its stores are the top search results for “carrefour” in the Baidu Internet search engine. The Respondent gives no explanation for its choice of the disputed domain name. Therefore, even though “carrefour” has a dictionary meaning in French, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that it registered the disputed domain name. The Panel finds that the Respondent registered the Complainant’s trademark in the disputed domain name in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has a strong reputation in its trademark through use in connection with stores and e-commerce sites, including through its official Chinese website at . The disputed domain name incorporates the CARREFOUR trademark in its entirety, adding the geographical term “china”, which gives the false impression that the disputed domain name is used in connection with an official Chinese website of the Complainant. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith. The Respondent failed to rebut that case because it did not respond to the Complaint.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: November 4, 2017
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