The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is null of Berkeley, California of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Eranet International Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2018, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 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;
European trademark CARREFOUR with registration number 005178371, filed on June 20, 2006 and registered on August 30, 2007, duly renewed and covering services in classes 9, 35 and 38;
French trademark BANQUE CARREFOUR with registration number 3585968, registered on July 2, 2008, covering services in class 36.
The disputed domain name was registered by the Respondent on January 17, 2018. 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 more than 30 countries. The Complainant is a multi-local, multiformat and omni-channel retail group that employs more than 380,000 people worldwide. In 2016, the Complainant generated total sales of 103.7 billion euros. Every day, the Complainant welcomes 13 million customers around the world.
With 11,935 stores in more than 30 countries, the Complainant is a major player in global retail with strong roots in its local communities. Currently operating in mainland France and its overseas territories, in Europe, Latin America, Asia, as well as in North Africa and the Middle East, the Complainant relies on a network of integrated and franchised stores, along with the stores it runs with local partners.
As a banking subsidiary of the Carrefour group, Carrefour Banque has for more than thirty years offered a wide range of products that are accessible and efficient, adapted to the needs of customers and consumers: MasterCard PASS card, current account, revolving credit, personal loan, car, and home insurance, complementary health, etc. The Complainant is using the domain name and has more than 2.5 million customers.
When the Complainant became aware of the Respondent’s registration of the disputed domain name it resolved to a webpage, which most likely was used for fraudulent practices and phishing activities. On January 18, 2018, the Complainant sent a cease-and-desist letter to the Respondent, requesting transfer of the disputed domain name and the immediate cessation of its further use.
However, no response was received from the Respondent. On the same date, January 18, 2018, notifications were also sent by email to both the hosting providers and to the Registrar in order to request them to immediately block the access to the website on the disputed domain name . Following the letter sent by the Complainant, the website to which the disputed domain name resolved, was deactivated.
The disputed domain name reproduces the Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR in their entirety. The disputed domain name is confusingly similar to the trademarks CARREFOUR and BANQUE CARREFOUR in which the Complainant has rights.
The Complainant’s trademark CARREFOUR has been considered “well-known” or “famous” by numerous previous panels (WIPO 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 Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized or licensed by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademarks CARREFOUR and BANQUE CARREFOUR. The Respondent is not known by the name of CARREFOUR nor BANQUE CARREFOUR. In addition, the Respondent has no prior right or legitimate interest in the disputed domain name. The registration of the CARREFOUR and BANQUE CARREFOUR trademarks preceded the registration of the disputed domain name for years, even decades.
The 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, the Respondent was using the disputed domain name for operating a fraudulent website created for phishing valuable information from Internet users. In addition, the Respondent failed to provide the Complainant with a response following the reception of the cease-and-desist letter.
The Complainant argues that the Respondent has no right or legitimate interest in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
The Complainant is well-known throughout the world and its trademark CARREFOUR is registered worldwide, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademarks CARREFOUR and BANQUE CARREFOUR. Furthermore, the Respondent was deliberately trying to impersonate the Complainant’s identity, which means that the Respondent was very familiar with the Complainant’s activities. It is impossible that the Respondent did not have the Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR and activities in mind while registering and using the disputed domain name.
The Complainant argues that the Respondent registered and used the disputed domain name in bad faith. 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 trademarks CARREFOUR and BANQUE CARREFOUR. The disputed domain name incorporates the Complainant’s trademark CARREFOUR in its entirety. Furthermore, the disputed domain name incorporates the Complainant’s trademark BANQUE CARREFOUR in its entirety with the addition of a hyphen between the words. The mere addition of the hyphen to the trademark does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusingly similar test.
Having the above in mind, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show 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 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 the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make 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.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks CARREFOUR and BANQUE CARREFOUR in connection with the disputed domain name
, which is confusingly similar to the Complainant’s trademarks.
The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name. Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. There is no evidence in the case record indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence in the case record 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 trademark.
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 that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also satisfied 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 without limitation:
(i) circumstances indicating 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 disputed domain name, provided there is 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 attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s trademark registrations CARREFOUR and BANQUE CARREFOUR predate the registration of the disputed domain name . The Panel notes that the Complainant operates nearly 12,000 stores and employs over 380,000 people in more than 30 countries worldwide, including United States of America where the Respondent resides. Given the circumstances in the case, 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 trademarks.
It has been argued by the Complainant that the disputed domain name originally resolved to a potentially fraudulent website connected with phishing activities. The website, to which the disputed domain name resolved, was similar to another phishing case where the Complainant’s customers were targeted using a similar domain name. The Complainant has submitted screenshots of the Respondent’s website, as it appeared prior to being blocked by the concerned hosting provider.
An additional factor casting doubt on the Respondent’s bona fides is the circumstance that the Respondent never responded to the Complainant’s cease and desist letter in order to explain the use of the Complainant’s trademark in the disputed domain name. Thus, the evidence in the case before the Panel indicates 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, be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: April 26, 2018
Full & Egal Universal Law Academy