The Complainant is Carrefour of France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama / Luke Ying of China. 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 February 23, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, 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 March 6, 2018 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 March 9, 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 the Respondent of the Complaint, and the proceedings commenced on March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2018.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 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
The Complainant has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for CARREFOUR, including the following:
International trademark CARREFOUR with registration number 1010661, registered on April 16, 2009, covering services in class 35;
Chinese trademark CARREFOUR with registration number 8696287, registered on November 7, 2011, covering services in class 35.
The disputed domain name was registered by the Respondent on August 3, 2017. 5. Parties’ Contentions A. Complainant
The Complainant, Carrefour, is a global leader and a reference in food retail and operates nearly 12,000 stores and e-commerce sites in over 30 countries. The Complainant is a multi-local, multiformat and omni-channel retail group that employs more than 380,000 people worldwide. Every day, the Complainant welcomes 13 million customers around the world. The Complainant generated total sales of 103.7 billion euros in 2016.
A pioneer in countries such as Brazil in 1975 and China in 1995, the Complainant now operates on three major markets: Europe, Latin America, and Asia. With a presence in more than 30 countries, the Complainant generates over 53 percent of its sales outside of France. In 1995, the Complainant entered the Chinese mainland market and established in Beijing. As of the end of 2013, the Complainant operated 236 large-scale integrated supermarkets in over 73 Chinese cities with more than 60,000 employees.
The disputed domain name resolves to a Chinese website that is related to a random draw with prizes to be won. The website contains references to the Complainant and to toothpaste. The Complainant’s investigations revealed that several email servers have been created with the disputed domain name. Consequently, there may be a risk of phishing and valuable information, such as customer’s credit card details, may be at risk.
The Respondent has registered the disputed domain name using a privacy shield to hide his identity and to prevent the Complainant from contacting him. On August 24, 2017, the Complainant sent a cease and desist letter to WhoisGuard, Inc. and requested the true identity of the registrant to be revealed and that the disputed domain name should be transferred to the Complainant. WhoisGuard, Inc. revealed that the registrant is Luke Ying. On September 5, 2017, the Complainant sent anther cease and desist letter to the Respondent, requesting a transfer of the disputed domain name. Despite several reminders, the Respondent did not reply to the Complainant.
The Complainant’s trademark CARREFOUR has been considered “well-known” or “famous” by numerous previous panels (seeWIPO Case No. D2017-0089, Carrefour v. Ali Fetouh, Fasateen,WIPO Case No. D2015-0962, Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0769, Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2014-1425, Carrefour v. Park KyeongSook,WIPO Case No. D2014-0257, Carrefour v. Yujinhua,WIPO Case No. D2013-2002, Carrefour v. Karin Krueger,WIPO Case No. D2011-2248, Carrefour S.A. v. Patrick Demestre;WIPO Case No. D2008-1996, Carrefour v. groupe Carrefour;WIPO Case No. D2007-0067 Carrefour SA v. Eric LangloisWIPO Case No. D2017-0586, Carrefour v. Jan Everno, The Management Group II).
The disputed domain name combines the Complainant’s trademark CARREFOUR in its entirety with the term “darlie”. The addition of the term “darlie” increases the likelihood of confusion since it refers to a toothpaste brand sold by the Complainant in Asia, more precisely in Indonesia. Hence, Internet users are more likely to believe that the disputed domain name is endorsed by the Complainant and is linked to the Complainant’s activities in Asia. The addition of a merely generic and descriptive term to the trademark is insufficient in itself to avoid confusing similarity. The Top-Level Domain (“TLD”) “.life” shall not be considered when examining the identity or similarity between the Complainant’s trademark and the disputed domain name.
The Complainant has used the trademark CARREFOUR in connection with a wide variety of products and services around the world, including “DARLIE” toothpaste. Consequently, the public has learnt to perceive the goods and services offered under this trademark as being those of the Complainant. The public would reasonably assume that the disputed domain name would belong to the Complainant or at least assume that it is related to or in some way associated with the Complainant.
The Complainant’s trademark registrations for CARREFOUR predates the registration of the disputed domain name . The Respondent is not affiliated with the Complainant in any way and has not been authorized to use the Complainant’s CARREFOUR trademark or to register any domain name incorporating the trademark.
Given the Complainant’s worldwide reputation, it is unlikely that the Respondent was not aware of the Complainant’s propriety rights in the CARREFOUR trademark. A simple search online in any search engine would have revealed the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributing factor to its bad faith.
As the disputed domain name is confusingly similar to the Complainant’s trademark, a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website.
The Respondent’s primary motive in registering and using the disputed domain name is to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in 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 Complainant is, according to the submitted evidence, the owner of the registered trademark CARREFOUR. The disputed domain name incorporates the Complainant’s trademark CARREFOUR in its entirety with the addition of the term “darlie” which is the brand of toothpastes and toothbrushes manufactured by a third-party, i.e., the Hawley & Hazel Group. When a domain name consists of a complainant’s trademark, the addition of a third-party trademark is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) paragraph 1.12. Furthermore, it is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark CARREFOUR and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made 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 prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it 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.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark CARREFOUR in connection with the disputed domain name , which is confusingly similar to the Complainant’s trademark.
Furthermore, there is no evidence in the case file indicating that 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 Complainant’s trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name .
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name . Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant’s trademark registration CARREFOUR predates the registration of the disputed domain name . Given that the website, to which the disputed domain name resolves, contains direct references to the Complainant, the Panel finds it unlikely to believe that the Respondent did not have the Complainant in mind when registering and using the disputed domain name and concludes that the Respondent knew or should have known of the existence of the Complainant’s trademark.
The Complainant is concerned that the disputed domain name may be used in a phishing scheme. The submitted evidence indicates that the Respondent is directing the disputed domain name to a commercial website that offers a lottery where participants are encouraged to purchase toothpaste from the Complainant and to provide personal details. The addition of the term “darlie” to the disputed domain name does not diminish but rather reinforces the confusing similarity with the Complainant’s trademark, as the Complainant is offering DARLIE toothpaste for sale in Asia. Internet users may falsely believe that the Complainant is in some way associated with the Respondent, the Respondent’s website or the disputed domain name.
Thus, based upon the submitted material, the Panel concludes that the disputed domain name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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, shall be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: April 24, 2018
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