Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama / Domink Tamasi of Bay Shore, New York, Republic of Serbia. 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 August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 August 28, 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 August 31, 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 Respondent of the Complaint, and the proceedings commenced on September 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2018.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 3, 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 is a leading retailer, operating its stores throughout Europe and elsewhere internationally. Complainant holds numerous CARREFOUR trademark registrations in many jurisdictions around the world:
- European Union Trade Mark CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38;
- 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.
Complainant operates, among others, the following domain names reflecting its trademark in order to promote its services:
- registered on October 25, 1995;
- registered on June 23, 2005.
Respondent has registered the disputed domain name on May 8, 2018, using a privacy service. The disputed domain name previously resolved to a website displaying Complainant’s trademark and logo, inviting Internet users to download a mobile application with a chance to win a EUR 500 gift card for use in any of Complainant’s retail stores. The disputed domain name currently resolves to an inactive page. 5. Parties’ Contentions A. Complainant
Complainant contends that:
- The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
- Complainant and its trademark CARREFOUR enjoy a worldwide reputation.
- The disputed domain name incorporates Complainant’s trademark CARREFOUR in its entirety. The only additional element in the disputed domain name is the Top-Level Domain (“TLD”) suffix “.gift”.
- It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with Complainant, as the latter has used the trademark CARREFOUR in connection with a wide variety of products and services around the world and the public has learnt to perceive the goods and services offered under this mark as being those of Complainant.
- Respondent is neither affiliated with Complainant in any way nor has he been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark.
- Respondent has no prior rights or legitimate interest in the disputed domain name, as the registration of the trademark preceded the registration of the disputed domain name for years.
- 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. Consequently, Respondent fails to show any intention of noncommercial or fair use of the disputed domain name.
- The disputed domain name previously, resolved towards a page displaying Complainant’s logo and a link to download a Carrefour application (Annex 1). During the proceedings, it resolves to an inactive page (Annex 1).
- Hence, it is most likely that Respondent has no legitimate interest or rights in the disputed domain name.
- Additionally, Respondent never answered to Complainant’s letter despite Complainant’s reminders. UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to a complainant, it can be assumed that respondents have no rights or legitimate interests in the disputed domain name.
- It also seems that Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting him.
- As bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interests, in view of the circumstances, it is impossible to infer that Respondent did not have Complainant’s trademark and activities in mind when registering the disputed domain name.
- Given the reputation of Complainant’s trademarks, registration in bad faith can be inferred. A quick trademark search on “CARREFOUR” would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith.
- Also, Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the disputed domain name in response to Complainant’s cease-and-desist letter.
- Respondent’s passive holding of the disputed domain name satisfied the requirement of paragraph 4(a)(iii) that the disputed domain name was being used in bad faith by Respondent because: (1) Complainant’s trademark had a strong reputation and was widely known; (2) Respondent had provided no evidence of any actual or contemplated good faith use by it of the disputed domain name; (3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
- It is likely that Respondent registered the disputed domain name to prevent Complainant from using its trademark in the said disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Under the Policy, Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
According to the evidence presented by Complainant supporting its contentions, the Panel finds that Complainant holds rights in the trademark CARREFOUR.
This Panel finds that the disputed domain name is identical to Complainant’s registered trademark CARREFOUR as the disputed domain name reproduces Complainant’s trademark CARREFOUR in its entirety and without alteration or addition.
Further, the disputed domain name reproduces the trademark CARREFOUR with the addition of the TLD suffix “.gift”. However, a TLD suffix may generally be disregarded in the comparison of a domain name with a trademark for the purposes of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
For all the reasons above, the Panel finds that the disputed domain name is identical to the trademark CARREFOUR and that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under the second element of the Policy, Complainant has to make at least a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
If Complainant makes that showing, the burden of production shifts to Respondent, see WIPO Overview 3.0, section 2.1. This Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by Respondent, as he did not reply to Complainant’s contentions.
Complainant contends that Respondent is neither affiliated with Complainant in any way nor has he been authorized or licensed by Complainant to use and register its trademark CARREFOUR or to seek registration of any domain name incorporating the aforesaid trademark. Moreover, as it results from WhoIs records and Registrar’s responses Respondent is not known by the name of CARREFOUR.
Besides, 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. Respondent also fails to show any intention of noncommercial or fair use of the disputed domain name. The disputed domain name previously resolved towards a page displaying Complainant’s logo and a link to download the Carrefour application. Respondent was not authorized to carry out such activity, and Respondent’s use of the disputed domain name misleads Internet users as to the source of the application offered on Respondent’s website. During the proceedings, it resolves to an inactive page.
Additionally, Respondent never answered to Complainant’s cease-and-desist letter despite Complainant’s reminders. UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to a complainant, it can be assumed that respondents have no rights or legitimate interests in the disputed domain name.
It also seems that Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent Complainant from contacting him.
As noted, the contentions of Complainant had not been rebutted by Respondent, and the Panel agrees with Complainant that the registration and use of such a well-known trademark in a domain name cannot be considered as bona fide activities.
Therefore, Complainant has demonstrated that Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
In its submissions Complainant indicates different circumstances which the Panel considers relevant evidence for the bad faith of Respondent in registering and using the disputed domain name.
According to WIPO Overview 3.0, section 3.2.1, bad faith has already been found in UDRP practice where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel notes that Complainant’s trademark CARREFOUR has been considered to be “well-known” or “famous” by previous panels (Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook,WIPO Case No. D2014-1425; Carrefour v. Yujinhua,WIPO Case No. D2014-0257; Carrefour v. Karin, Krueger,WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre,WIPO Case No. D2011-2248; Carrefour v. groupe Carrefour,WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois,WIPO Case No. D2007-0067). It is clear that the CARREFOUR trademark is recognizable and misleads Internet users into thinking that the disputed domain name, in some way, associated with Complainant, as the latter has used the trademark CARREFOUR in connection with a wide variety of products and services around the world and the public has learnt to perceive the goods and services offered under this mark as being those of Complainant.
Thus, given the reputation of CARREFOUR trademark, registration in bad faith can be inferred. Moreover, Respondent’s use of the disputed domain name to purport to offer Complainant’s mobile application for download as outlined above, and Respondent’s subsequent passive holding of the disputed domain name in connection to the Complainant’s trademark strong reputation, not rebutted by any other evidence of any actual or contemplated good faith use by it of the disputed domain name is a further indication of bad faith. Passive holding does not preclude a finding of bad faith. See WIPO Overview 3.0, section 3.3.
Accordingly, Complainant has demonstrated that Respondent registered and used in bad faith the disputed domain name and therefore, the third element of paragraph 4(a) of the Policy is established. 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.
Dr. Beatrice Onica Jarka
Sole Panelist
Date: October 17, 2018
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