The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama / Gaudet Jose of Gourfaleur, France. 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 July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2018, the Registrar transmitted by email to the Center its verification 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 July 12, 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 July 17, 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 July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2018.
The Center appointed Martine Dehaut as the sole panelist in this matter on August 15, 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 following facts were duly established by the Complainant:
The Complainant is the French entity Carrefour, one of the world’s most relevant actors in food retail. Carrefour operates, under the brand CARREFOUR, nearly 12,000 stores and e-commerce sites in over 30 countries. Its operations started in France in the early 1960s, and to date the group employs over 380,000 people around the globe and generates sales beyond EUR 103 billion.
The presence of the Complainant in France is particularly relevant. This is the home country of the Complainant, where its first store was opened. It operates there over 5,000 stores and is the first private employer in the country.
The Complainant operates in particular retail banking activities dedicated to its customers, under the brand CARREFOUR BANQUE.
The Complainant relies on the following trademark registrations, over the word mark CARREFOUR, as a basis for its complaint.
• International trademark CARREFOUR No. 1010661, registered on April 16, 2009, covering services in class 35;
• International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, covering goods in classes 1-34;
• European Union trade mark CARREFOUR No. 005178371, filed on June 20, 2006, and registered on August 30, 2007, duly renewed and covering services in classes 9, 35, and 38;
• European Union trade mark CARREFOUR No. 008779498, filed on December 23, 2009, and registered on July 13, 2010, and covering services in class 35.
The disputed domain name was registered on March 7, 2018, using initially a privacy shield service based in Panama, WhoisGuard, Inc. The Complainant sent a cease and desist letter to the registrant of the disputed domain name on March 12, 2018. As this letter remained unanswered, the Complainant decided to bring this Complaint before the Center.
After the Complaint was filed, the Registrar informed to the Center and to the Complainant that the disputed domain name was actually held by Mr. Jose Gaudet, with an address in Gourfaleur, France.
No information is available on the file regarding the activities of the Respondent. As indicated by the Complainant, the address of Mr. Gaudet provided by the Registrar in the city of Gourfaleur does not exist.
The disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
Regarding the first element of the Policy, the Complainant indicates that the trademark CARREFOUR is wholly reproduced in the disputed domain name . It claims that the addition of the expression “mon compte”, which in French means “my account”, is generic and does not prevent a risk of confusion between the Complainant’s trademarks and the disputed domain name. Finally, it adds that the generic Top-level Domain (“gTLD”) “.com” is not to be taken into consideration when evaluating the confusing similarity.
Regarding the second element of the Policy, the Complainant adduces in particular that the “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 trademarks CARREFOUR Respondent is not known by the name of CARREFOUR. In addition, Respondent has no right or legitimate interest in the domain name. The registration of CARREFOUR trademarks preceded the registration of the disputed domain name for years, even decades”. The Complainant also highlights several circumstances that confirm a lack of rights or legitimate interests in the disputed domain name, such as the reputation of the earlier trademarks, the fact that the disputed domain name resolves to an inactive page, or the initial registration of the disputed domain name using a privacy shield service.
Finally, regarding the third element of the Policy, the Complainant’s arguments make a distinction between the registration and the use of the disputed domain name. On the bad faith registration, the Complainant claims that “[i]t is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Bad faith can be found where respondent ʻknew or should have knownʼ of Complainant’s trademark rights and, nevertheless registered domain name in which he had no right or legitimate interest”. Regarding the bad faith use, the Complainant relies on the doctrine of bad faith passive holding as developed in Testra (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(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 respect of 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
As indicated in the statement of facts, for the purpose of this case the Complainant relies on a number of word marks CARREFOUR registered in several jurisdictions. This word is fully and identically reproduced in the disputed domain name .
The addition of the expression “mon compte”, which means “my account” in French, does not prevent a finding of confusing similarity. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that “[w]here 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.”
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is well established from prior UDRP decisions that the Complainant has simply the burden of making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If the Complainant is successful in doing so, the burden of production shifts to the Respondent to rebut the Complainant’s prima facie case. The Panel finds that the Complainant has established such a prima facie case here and, failing any rebuttal from the Respondent, this Panel will accept the allegations made by the Complainant.
As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trademark in a domain name or otherwise.
Instead, “mon compte” refers to the accounts that customers of the Complainant may hold. The Complainant seems to believe that these would be bank accounts and confirms that it operates retail banking services. This panel is satisfied that this is a plausible explanation of how the domain name can be perceived. But beyond that, the expression “mon compte” could also be perceived as a reference to client accounts with the retail stores of the Complainant. As any other major retailer, Carrefour administers a number of e-services such as loyalty programs and the reference to “mon compte Carrefour” / “my account Carrefour could also be perceived as an access to dedicated e-services. Be it as it may, the association of the expression “mon compte” to the well-known trademark Carrefour can solely create a likelihood of confusion in the mind of the public.
Besides, this Panel rules-out any possible claim of use of the word “carrefour” in the disputed domain name in a generic way.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complaint focuses largely on the global presence and reputation of Carrefour worldwide, and highlights that the Respondent knew, or should have known, of the existence of this major brand. That makes sense irrespective of the fact that the initial Respondent was the provider of a privacy shield service, based in Panama.
As a result of the information provided by the Registrar when the Complaint was filed, we know that the actual Respondent is an individual domiciled in France. And very likely this person speaks French, as the disputed domain name is construed in that language. This is an important element because a French individual domiciled in France (indeed in Europe) can hardly ignore the existence, longstanding use and outstanding reputation of the brand CARREFOUR, for food retail and many other products and services. Besides, in his capacity as domain name holder the Respondent is familiar with the Internet world, and arguably he is aware that any search conducted online on the word “carrefour” in France solely provides results connected with the Complainant. As the disputed domain name was registered in 2018, long after the Complainant registered its CARREFOUR trademark, the Panel finds that the Respondent registered the disputed domain name in bad faith.
The Respondent has knowingly and intentionally created confusion with the famous trademark CARREFOUR by reproducing it and associating it to the expression “mon compte”, which means “my account” and will be perceived by the public and customers as a reference to accounts – whether for banking, e-commerce, or otherwise – that they hold in connection with the Complainant’s activities and services.
By doing so, the Respondent has acted in bad faith.
This is confirmed by the fact that it initially used the services of a privacy shield service, and provided an address in France which actually does not exist.
The Panel notes that the disputed domain name has not been used by the Respondent. This will not prevent a finding of bad faith, though. In this case all the Telstra (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) criteria are met, namely in bad faith by Respondent because: (1) the Complainant’s trademark CARREFOUR has a strong reputation and is widely known, all the more so in Europe and especially France; (2) the Respondent had not provided any evidence of any actual or contemplated good faith use of the domain name; (3) the Respondent has taken active steps to conceal its true identity, by using initially a privacy shield service; and, (4) the Respondent has provided false contact details, in breach of its registration agreement.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied. 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.
Martine Dehaut
Sole Panelist
Date: August 29, 2018
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