The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondents are WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / Robert Jurek of Eagan, Minnesota, United States of America (“United States”) and Katrin Kafut, Purchasing clerk, Starship Tapes & Records of Hollywood, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 the Complainant on December 28, 2017 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 December 29, 2017.
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 the Respondents of the Complaint, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 25, 2018.
The Center appointed Sir David Williams QC as the sole panelist in this matter on February 1, 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
The Complainant is a food retailer with almost 12,000 stores across 30 countries in Europe, Latin America, and Asia. The Complainant’s trademark operates under the trademark CARREFOUR, which is registered across a number of classes dating from September 2, 1988, December 23, 2009, and June 20, 2006.
On August 31, 2017, the domain name in dispute, , was registered with the Registrar NameCheap, Inc. It incorporates the Complainant’s trademark intersected with a hyphen. The domain name redirects users to the Complainant’s official website.
The Complainant has presented as fact that “several” email servers have been configured using the domain name . As the Respondents have not provided evidence to the contrary, the Panel accepts this as true.
The domain name was registered under a privacy shield called WhoisGuard, Inc. Following a cease and desist letter from the Complainant to the privacy shield, it was revealed that the actual registrant of the domain name was Purchasing clerk, Starship Tapes & Records, Katrin Kafut. Following the submission of the complaint by the Complainant, the Center was informed by the Registrar that an individual named Robert Jurek was listed as the registered owner of the disputed domain name. The Complainant thereby amended the Complaint to include Robert Jurek as a respondent in this dispute. Accordingly, WhoisGuard Inc., Robert Jurek, and Purchasing clerk, Starship Tapes & Records, Katrin Kafut, are each Respondents in the present dispute.
The Respondents have not submitted any response to the Complaint. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Complainant argued that there was a likelihood of confusion, noting in particular the global reputation of Carrefour and the associated CARREFOUR trademark. It submitted that the public has become accustomed to associating the goods and services of Carrefour with the trademark CARREFOUR. Therefore, the incorporation of that trademark into the disputed domain name is likely to mislead consumers into believing there was a connection with the Complainant. The Complainant considered that the use of a hyphen was not sufficient to distinguish the Complainant’s mark and the disputed domain name, which similarity and subsequent confusion was exacerbated by the fact that the disputed domain name redirected users to the Complainant’s official website.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant noted that there was no connection between the Complainant and the Respondents and that it had not given authorization for the latter to incorporate its trademark into the disputed domain name. The Complainant argued that the Respondents could not suggest that they had any intention to develop legitimate activity using the disputed domain name, evidenced by the popularity of the CARREFOUR trademark and further by the invisible redirection to the Complainant’s website. The Complainant contended that the email servers configured under the disputed domain name suggested a risk of a phishing scheme, and that registration under a privacy shield suggested that the Respondents were hoping not to be contacted. Both of these, to the Complainant, indicated that the Respondents did not have a bona fide interest in the trademark. The Complainant added that the Respondent’s failure to respond to its communications could be interpreted as indicating a lack of legitimate interest in respect of the disputed domain name.
(c) The domain name was registered and is being used in bad faith.
The Complainant submitted that it was “implausible that Respondents were unaware of Complainant when he [sic] registered the disputed domain name”. The CARREFOUR trademark is so well known that the Respondents must have known of its existence, and evidence of such knowledge might be imputed from the invisible redirection from the disputed domain name to the Complainant’s official website. In any event, the Respondents should have conducted a sufficient search (which would have demonstrated the Complainant’s reputation) as is their duty under Section 2 of the UDRP, which requires any person registering a domain name to guarantee that its registration will not infringe third party rights. The Complainant argued that registration through a privacy shield and the Respondents’ lack of responses also demonstrated bad faith registration. It further contended that the trademark was used in bad faith as evidenced by the redirection to the Complainant’s website and the email servers configured on the disputed domain name, which together appear to be an attempt to take advantage of the Complainant’s goodwill. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must show three elements to succeed in its claim:
i. “The domain name registered by the Respondent 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 domain name; and
iii. The domain name has been registered and is being used by the Respondent in bad faith” A. Identical or Confusingly Similar
The Panel finds no issue with the Complainant’s ownership of the trademark CARREFOUR, and notes that it holds several registrations across a number of classes.
The disputed domain name reproduces the Complainant’s trademark in full, intersected only by a hyphen. The Complainant submitted that a hyphen cannot sufficiently separate the disputed domain name from the Complainant’s domain name (TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER,WIPO Case No. D2012-2001; see also Standard Life Employee Services Limited v. Shen Zhong Chao,WIPO Case No. D2017-1114). The Complainant further argued that the generic Top-Level Domain (“gTLD”) “.online” does not ameliorate any potential confusion generated by the disputed domain name. It added that the gTLD can generally be ignored for the purpose of assessing similarity or confusion (see UNIQA Insurance Group AG v. Heinz Hayderer,WIPO Case No. D2016-0082; Star Stable Entertainment AB v. WhoisGuard Protected / WhoisGuard, Inc. / Victor Arreaga,WIPO Case No. D2015-2312). The Panel therefore agrees that the trademark and the disputed domain name are confusingly similar.
The Panel finds that the disputed domain name is confusingly similar to the CARREFOUR trademark, thereby satisfying the first criterion at paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant noted that there was no affiliation between the Complainant and the Respondents, nor had the Complainant authorised the registration of the disputed domain name using the Complainant’s trademark. It is also relevant that the Respondents registered the disputed domain name several years after the registration of the CARREFOUR trademark.
In the light of the CARREFOUR trademark’s reputation, the creation of a domain name bearing that same mark created a high burden for the Respondents to indicate that any legitimate business activity was planned (see e.g. Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188). The Respondents have not provided any evidence to the contrary. The apparent lack of rights or legitimate interests in the disputed domain name is supported by the invisible redirection to the Complainant’s official website, indicating there is very likely no connection with a bona fide offering of goods and services.
The Complainant also pointed out the risk of the Respondents being involved in a phishing scheme, based on the configuration of email servers on the disputed domain name, and reinforced by the disputed domain name’s redirection to the Complainant’s website. This idea, accompanied by the fact that the disputed domain name was registered with a privacy shield service, paints a picture against any rights or interests held by the Respondents.
The Complainant has made out a prima facie case that the Respondents do not have any rights or legitimate interests in the domain name. Given that the Respondents have not challenged the Complainant’s position as to their rights in the disputed domain name, the Panel is entitled to accept the Complainant’s position as true (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; AREVA v. St James Robyn Limoges,WIPO Case No. D2010-1017; paragraph 14(b) of the Rules).
As such, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
For bad faith to be made out, paragraph 4(a)(iii) of the Policy requires the Claimant to demonstrate both that the disputed domain name was registered in bad faith and, subsequently, used in bad faith.
Registered in Bad Faith
The standard to make out bad faith requires that the Respondents “knew, or […] should have known”of the Complainant’s trademark rights and proceeded to register a domain name that they did not have rights or legitimate interests in (The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
The Complainant has demonstrated that its trademark is sufficiently well-known amongst consumers that another similar or identical mark would be likely to cause confusion. In support of its reputation, the Complainant cited several WIPO UDRP decisions which concerned the trademark CARREFOUR, each of which refer to the trademark as “well-known” (see e.g. Carrefour v. Jan Everno, The Management Group II,WIPO Case No. D2017-0586; Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; and Carrefour v. Tony Manchini, USDIET Whoisguard, Inc,WIPO Case No. D2015-0962), and, some, “famous” (see e.g. Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0769). The Panel agrees with this position.
The Complainant submitted that the disputed domain name was registered in bad faith because the “worldwide reputation”of the Complainant meant that knowledge of its existence could be imputed. In any event, the Respondents have incorporated the Complainant’s mark into the disputed domain name in full, and the disputed domain name has an invisible redirection the Complainant’s website. The Panel is of the view that these factors combined indicate that it was highly likely, if not certain, that the Respondent knew of the Complainant’s existence and, therefore, its rights in the CARREFOUR trademark.
The Complainant further argued that bad faith can be inferred where the trademark used in a domain name is well-known and the registrant has no connection to the trademark (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464). The Panel agrees that this inference applies to the present situation.
The Panel also shares the Complainant’s view that even if the Respondents were not aware of the Complainant’s trademark, they were under a duty to conduct a search prior to the registration of the disputed domain name, in order to ensure that registration would not infringe the rights of any third party (ICANN Policy, Section 2; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). Such a search (even an informal one) would have indicated the existence of the Complainant and its trademark.
Previous Panels have considered that concealing identity and contact information may point to bad faith in itself (see e.g. Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729). This concept applies to the present case, as the Respondents registered the disputed domain name through a privacy shield service. The lack of response by the Respondents further allows the Panel to infer that the disputed domain name was, more likely than not, registered in bad faith.
Use in bad faith
The Panel finds that the invisible redirection from the disputed domain name to the Complainant’s official website reinforces potential for confusion. Internet users are likely to consider the disputed domain name was in some way endorsed by or connected with the Complainant, particularly taking into consideration the global reputation of the CARREFOUR mark.
In light of the Panel’s finding regarding the likelihood of confusion of the disputed domain name with the Complainant’s trademark, it is reasonable to suggest that the confusion leads to bad faith use. This confusion is exacerbated by the invisible redirection from the disputed domain name to the Complainant’s site. The Complainant contended, and the Panel agrees, that this appears to be an attempt to take advantage of the Complainant’s goodwill.
The Panel also considers that the Respondents’ activities appear to be calculated to obtain an illegitimate benefit from the Complainant’s goodwill. This is inferred from both the email servers configured on the disputed domain name, and the invisible redirection from the disputed domain name to the Complainant’s website. As the Complainant pointed out, this presents a risk that the Respondents are engaged in a phishing scheme. The consequences of such a scheme can be detrimental not only to the company whose goodwill has been taken advantage of, but to third party staff and customers who may entrust what appears to be the Complainant with sensitive information such as credit card details.
Accordingly, the Panel finds that the registration and subsequent use of the disputed domain name were in bad faith. The Complainant therefore succeeds in its claim. 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.
Sir David Williams QC
Sole Panelist
Date: February 14, 2018
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