Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
Respondent is Whois Privacy Protection Service, Inc., Whois Agent of Kirkland, Washington, United States of America / Wawan Kurnia of Madrid, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, 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 12, 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 Complainant on July 16, 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 July 18, 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 Respondents of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on August 8, 2018.1
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 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
Complainant owns many registrations worldwide for its CARREFOUR trademark, including for example European Union Trade Mark Registration No. 005178371, registered August 30, 2007, duly renewed in classes 9, 35 and 38; and French trademark CARREFOUR No. 1487274, registered September 2, 1988, duly renewed, covering services in classes 35, 36, 37, 38, 39, 40, 41 and 42. Complainant also owns the registration for its trademark CARREFOUR PASS, International Trademark No. 719166, registered August 18, 1999, duly renewed, in class 36.
The disputed domain name was registered April 3, 2018. The disputed domain name presently routes to an inactive webpage, however it previously routed to a parking page on which the disputed domain name was offered for sale at an undisclosed price. 5. Parties’ Contentions A. Complainant
Complainant alleges that its CARREFOUR trademark is famous worldwide, citing various UDRP decisions confirming the status of the mark.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar or identical to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
The Complaint also avers that in April 2018 Complainant’s legal counsel sent three written cease and desist letters to the Registrar’s Whois Privacy Protection Service, Inc., to which Respondent did not reply. Complainant also avers having sent a letter to Sedo requesting the disputed domain name be removed from its domain parking service offer for sale, in response to which Sedo’s General Counsel said it was removing the Sedo link to the disputed domain name sale listing.
On the basis of the above, Complainant requests transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent by courier, fax and email to Respondent notification of these proceedings, using the contact information provided by the Registrar. The notifications were not deliverable at the physical address and fax number provided.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules of Decision
The Panel renders its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademarks, as elaborated below.
UDRP panels generally disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Removing the suffix “.com”, the disputed domain name wholly incorporates Complainant’s CARREFOUR and CARREFOUR PASS trademarks. The Panel concludes that the addition of the hyphens and terms “pass” and “service” does not negate the confusing similarity created by Respondent’s complete inclusion of Complainant’s mark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
The Panel holds, therefore, that the Complaint fulfills the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel also agrees that Complainant establishes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant avers that Respondent is not affiliated and has no authorization to use Complainant’s trademarks. The Panel accepts these undisputed allegations.
Complainant also alleges that the fact that the disputed domain name was posted for sale precludes any possibility of making a legitimate, noncommercial or fair use of the disputed domain name in the sense of Policy paragraph 4(c)(iii). Since the record reflects that the website was inactive and not used by Respondent to post any substantive content whatsoever, the Panel is inclined to agree.
Moreover, nothing in the record suggests that Respondent is commonly known by the disputed domain name and the Panel so finds.
Complainant establishes a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
UDRP panels may draw inferences about bad faith registration and use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, whether a respondent is making active use of the disputed domain name, a respondent’s concealment of identity, and whether there is no conceivable legitimate use for the disputed domain name. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant’s CARREFOUR and CARREFOUR PASS marks when Respondent registered the disputed domain name, since the marks had been in existence and widely used well before registration of the disputed domain name.
The Panel finds, therefore that the disputed domain name was registered in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Respondent’s failure to maintain accurate contact details in accordance with his agreement with the Registrar, the lack of substantive content on the website, and his lack of a response to the Complaint are further evidence of bad faith use. E.g., Telstra Corporation Limited, supra; Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632.2
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.3 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.
Jeffrey D. Steinhardt
Sole Panelist
Date: August 25, 2018
1 Further references to “Respondent” or “Respondents” in this Decision signify the individual registrant Wawan Kurnia.
2 It is conceivable that Respondent never received notification of these proceedings. If so, the lack of notification was due to Respondent’s failure to maintain accurate contact information, as required in the registration agreement. That failure is further evidence of bad faith. E.g., Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340).
3 Since the record contains no evidence respecting the price at which sale of the disputed domain name was offered, the Panel declines to embrace Complainant’s invitation to ground its bad faith determination on Policy paragraph 4(b)(i). Having ruled that the Complaint is otherwise sufficient under each element of the UDRP, the Panel also finds it unnecessary to address other allegations respecting bad faith.
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