Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States of America / Eliana Maria Lima of Belem, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2017. On December 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2017, 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 Complainant on January 2, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 4, 2018.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on February 16, 2018. 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
Carrefour is a global retailer operating nearly 12,000 stores and e-commerce sites in more than 30 countries. Carrefour has over 380,000 employees worldwide. In 2016, the group generated EUR 103.7 billion in total sales. In 1975, the Carrefour Group arrived in Brazil.
Complainant owns, inter alia, the following trademark registrations:
- International trademark CARREFOUR, registration No. 351147, registered on October 2, 1968, renewed, covering goods in classes 1-34;
- International trademark CARREFOUR, registration No. 1010661, registered on April 16, 2009, covering services in class 35;
- European Union Trademark CARREFOUR, registration No. 005178371, registered on August 30, 2007, renewed and covering services in classes 9, 35 and 38;
- Brazilian Trademark CARREFOUR, registration No. 006314716, registered on May 10, 1976, renewed covering services in class 35;
- Brazilian Trademark CARREFOUR, registration No. 813480035, registered on September 19, 1989, renewed, covering services in class 40.
Complainant and its affiliates operate websites at, inter alia, its domain names , registered on October 25, 1995, and , registered on January 18, 1997.
The disputed domain name was registered on July 3, 2017, and resolves to a website with pay-per-click links. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s trademark CARREFOUR because it reproduces Complainant’s trademark CARREFOUR that previous panels have considered well-known or famous.Moreover, the disputed domain name links the well-knowntrademark CARREFOUR of Complainant to the generic term “central” separated by ahyphen. This generic term suggests it is the central store of the CARREFOUR stores, which does not prevent the confusion. On the contrary, since this generic term corresponds to Complainant’s field of activity it increases the likelihood of confusion.
Respondent has no right or legitimate interest in respect of the disputed domain name. Respondent is not affiliated with Complainant in any way nor has he been authorized or licensed by Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark CARREFOUR. Respondent is not known by the name of “carrefour”. In addition, Respondent has no prior right or legitimate interest in the disputed domain name. The registration of CARREFOUR trademarks preceded the registration of the disputed domain name for years, even decades. The disputed domain name is confusingly similar to Complainant’s well-known trademark CARREFOUR such that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. In previous UDRP decisions, panels found that in the absence of any license or permission from complainant to use a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Furthermore, Respondent did not demonstrate, use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Indeed, Respondent has configured an email server on the disputed domain name, which represents a severe risk of phishing activities associated with the domain name. Such use of disputed domain name cannot reasonably be deemed as bona fide.
Respondent failed to reply to Complainant’s cease-and-desist letter despite several reminders. Panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainant, it can be assumed that respondents have no right or legitimate interest in the domain name (See AREVA v. St James Robyn Limoges,WIPO Case No. D2010-1017 and Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The disputed domain name resolves to a webpage with sponsored links to hypermarkets, which are likely to generate revenue via pay-per-click. Hence, it cannot be inferred that Respondent is making a legitimate, noncommercial or fair use of the disputed domain name (Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268 and Société nationale des télécommunications: Tunisie Telecom v. Ismael Levist, WIPO Case No. D2009-1529).
Lastly, it seems that the Respondent has registered the disputed domain name with a privacy shield service to hide its identity and prevent Complainant from contacting him or her. Such behavior highlights the fact that Respondent has no rights or legitimate interests with respect to the disputed domain name.
The domain name was registered and used in bad faith. It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Firstly, Complainant is well-known throughout the world and its well-known trademark CARREFOUR is registered worldwide. Secondly, several prior UDRP panels have mentioned its worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the trademark CARREFOUR.
Bad faith has already been 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. Reiner Stotte,WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303). Given the reputation of the CARREFOUR trademark, registration in bad faith can be inferred.
Respondent might be engaged in a phishing scheme since email servers are configured on the disputed domain name which indicates that Respondent is probably aiming at Complainant’s consumers. Therefore, the possible use of email addresses with the disputed domain name present a significant phishing risk where Respondent could aim at stealing valuable information from customers or employees who are directly related to Complainant and its business activities. A previous UDRP panel has found that configuration of email server on the disputed domain name constitutes a use in bad faith since it represents a real risk that Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with Complainant.
Respondent is using the disputed domain name in a webpage displaying pay-per-clicks links in one of Complainant’s field of activities i.e., hypermarkets, which are likely to generate revenue. UDRP panels have held that the use of domain names in webpages with revenue through clicks evidences bad faith. Respondent is taking undue advantage of Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gain constitutes a use in bad faith pursuant to the Policy. Such use of the disputed domain name demonstrates Respondent’s intention abusively to benefit from Complainant’s trademark and reputation to obtain commercial gains. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it has trademark rights in the CARREFOUR trademark. See section 4 above.
The Panel notes that in the disputed domain name the mark CARRFOUR is incorporated in its entirety, just adding a hyphen and the, descriptive term “central”. It is well established that such kind of additions are inapt to distinguish a domain name from the incorporated mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the mark CARREFOUR, in which Complainant has rights. B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated with Complainant in any way nor has he been authorized or licensed by Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark CARREFOUR. The Panel notes that there is no evidence indicating the contrary. In addition, the registration of CARREFOUR trademarks preceded the registration of the disputed domain name for years, even decades. The disputed domain name is so similar to Complainant’s well-known trademark CARREFOUR that the Panel considers Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Complainant also contends that Respondent is not known by the name of “Carrefour”. In this regard, the Panel notes that according to the WhoIs record for the disputed domain name the Respondent is Eliana Maria Lima, while the privacy shield was Domain Admin, Privacy Protect, LLC (PrivacyP). This circumstance makes Policy paragraph 4(c)(ii) inapplicable.
Complainant says that Respondent has configured an email server on the disputed domain name, which represents a severe risk of phishing activities associated with the domain name. The Panel agrees with Complainant that such use of the disputed domain name entails the risk that Internet users receiving an email from a “@” address might reasonably believe it was sent from the well-known store, and thus be ready to provide valuable personal information to a sender engaged in a phishing scheme. However, the Panel notes that there is no evidence that any such emails were received or sent.
In addition, says Complainant, the disputed domain name resolves to a webpage with sponsored links, which are likely to generate pay-per-click revenue. Hence, it cannot be inferred that Respondent is making a legitimate, noncommercial or fair use of the disputed domain name.
Complainant underlines that Respondent failed to reply to Complainant’s cease-and-desist letter despite several reminders. Since Respondent did not avail itself of its rights to respond to Complainant, one can assume that Respondent has no right or legitimate interest in the disputed domain name. Lastly, the Respondent has registered the disputed domain name with a privacy shield service and prevented Complainant from contacting him or her, which suggests that Respondent has no rights or legitimate interests in the disputed domain name.
In the Panel`s opinion, the available evidence supports Complainant’s contentions. In particular, the use of the disputed domain name in a website just listing “related links” presumably generating click-through income for Respondent is neither a use in connection with a bona fide offering under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii). Thus, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent should have come forward to provide this Panel at least with an explanation for its reasons to register and use the disputed domain name as described. Since Respondent failed to do so, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that at least two of Complainant’s registrations for the CARREFOUR trademark - in particular the Brazilian registration in 1976 - predate the registration of the disputed domain name by over three decades. See section 4 above.
The Panel agrees with prior UDRP panels that the CARREFOUR mark is well-known (see Carrefour v. Jean-Claude Bot / Albert Pierre,WIPO Case No. D2017-0969), well-known throughout the world (see Carrefour v. Milen Radumilo / United Privacy Corp,WIPO Case No. D2015-1851, Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0962 and Carrefour v. Karin Krueger,WIPO Case No. D2013-2002), and that this mark enjoys notoriety (see Carrefour v. Giuseppe Bottos,WIPO Case No. D2017-0587).
In particular, the trademark CARREFOUR has been held to be well-known in Brazil, the country of residence of the Respondent. See Carrefour v. Domain Admin, Privacy Protect, LLC (PrivacyP) / Aurelio Lima Cruz,WIPO Case No. D2017-2197 (“The Complainant's CARREFOUR mark is well-known in Brazil where the Respondent is located, and it is not at all plausible that the Respondent registered the disputed domain name without any knowledge of the Complainant and its trade mark.”) Moreover, a simple search on the Internet would have returned Complainant`s mark, company name and services in the first places. The Panel concludes that Respondent must have known of Complainant and the CARREFOUR mark, and had them in mind, at the time of registering the disputed domain name.
As shown by Complainant, until recently the website at the disputed domain name consisted in a series of “related links” entitled “Carrefour Market Drive”, “Express Drive”, “Lelclerc Drive”, “Rrefour Drive”, etcetera, presumably generating click-through income for Respondents. Accordingly, the Panel finds that Respondent, by using the disputed domain name as shown, has intentionally attempted to attract, for commercial gain (via click-through income) Internet users to the website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. This is a circumstance of registration and use in bad faith according to Policy paragraph 4(b)(iv).
Presently, the disputed domain name does not appear to direct to any active website. This current lack of active use suggests that Respondent does not contemplate using the disputed domain name other than as shown, i.e., in bad faith. The fact that Respondent did not submit any reply to Complainant`s contentions, and provided incomplete or false contact details - thus preventing the physical delivery to the latter of the Notice of the Complaint - reinforces the Panel`s overall impression that Respondent is acting in bad faith.
Accordingly, the Panel finds that the third element of the Policy is met. 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 Complainant
Roberto Américo Bianchi
Sole Panelist
Date: March 2, 2018
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