The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0151522304 of Toronto, Ontario, Canada / Lucas Montanaro of France. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 5, 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 September 7, 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 September 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on November 1, 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 is an international retailer that operates nearly 12,300 stores and e-commerce sites in more than 30 countries. The Complainant welcomes 1.3 million customers a day around the world across its websites.
The Complainant owns numerous trademark registrations in France and other jurisdictions around the world, and in particular:
- French Trademark CARREFOUR No. 1487274, registered on September 2, 1988, and duly renewed, designating goods and services in classes 35 to 42;
- European Union Trademark CARREFOUR No. 008779498, registered on July 13, 2010, and duly renewed, designating goods and services in class 35;
- European Union Trademark CARREFOUR No. 005178371, registered on August 30, 2007, and duly renewed, designating goods and services in classes 9, 35 and 38.
In addition, the Complainant and affiliates own, among others, the following domain name:
- registered on October 25, 1995.
According to the information provided by the Registrar, the disputed domain name was registered on May 11, 2018, by a privacy company located in Canada through a privacy service offered by the Registrar, and the final beneficiary appears to be an individual located in Paris, France.
The disputed domain name used to resolve to a default page of webhost.
The disputed domain name is active and currently resolves to a parking page with sponsored links related to the Complainant’s field of activities such as retail and banking services. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the disputed domain name is confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces identically the CARREFOUR trademark in which the Complainant has rights.
The Complainant further submits that the addition of the generic term “secure” would not prevent the risk of confusion, and that the Top-Level Domain (“TLD”) “.com” should not be taken into consideration.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent is not affiliated with the Complainant, nor authorized or licensed by the Complainant to use its trademarks.
Besides, the Complainant contends that the Respondent does not make any use of the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant also contends the lack of response to the Complainant’s pre-Complaint letters to be additional proof of the lack of rights or legitimate interests of the Respondent.
(iii) The Complainant contends that the disputed domain name was registered in bad faith. The Complainant submits that its trademarks are well-known throughout the world and the Respondent knew or should have known the existence of the Complainant’s rights.
The Complainant further submits that the disputed domain name is being used in bad faith, as the website to which it resolves is offering sponsored links providing services related to the Complainant’s field of activities.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s prima facie case meets the requirements of paragraph 4(a) of the Policy, as follows:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Those elements will be examined in turn below. 6.2 Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
The Complainant provided evidence that it has rights in CARREFOUR trademarks, well before the Respondent registered the disputed domain name. This satisfies the Panel that the Complainant has registered trademark rights in the CARREFOUR marks for the purposes of the Policy.
According to Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
In this case, the relevant part shall therefore be “carrefoursecure” composed of the term “carrefour” which is the exact reproduction of the Complainant’s trademark CARREFOUR and the additional suffix “secure”.
The Complainant provided evidence that the associated term “secure” describes its activities in the field of banking services.
In this regard, previous UDRP panels have found that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element, especially for the descriptive term “secure”. See, Credit Industriel et Commercial S.A. v. Sarah Morine,WIPO Case No. D2018-1492, and AXA SA v. Oghenejokwo Buhari, Sjbuhari Ltd.,WIPO Case No. D2016-2178, .
For the above reasons, the Panel finds that the addition of “secure” to the trademark CARREFOUR does not prevent a finding of confusing similarity.
Thus, the Panel finds that the disputed domain name is confusingly similar to the trademark CARREFOUR in which the Complainant has rights, and the requirements under paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
The Complainant provided evidence that the Respondent has not been authorized by the Complainant to use its trademarks and that there is no business relationship existing between the Complainant and the Respondent.
In addition, the Complainant provided evidence that the website associated to the disputed domain name resolves to a parking website displaying sponsored links that refer directly to the Complainant’s activities by using the name of the Complainant and its trademark CARREFOUR.
Accordingly, the Panel finds that the Respondent makes use of the value of the CARREFOUR trademark and the likelihood of confusion with the trademark of the Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
Thus, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant provided evidence that the CARREFOUR trademarks are well-known in France and in other jurisdictions around the world.
The Panel therefore accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s trademarks and activities.
Previous UDRP panels have regularly ruled that bad faith was found 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. See LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre,WIPO Case No. D2017-0969.
Given the above elements, the Panel finds that the disputed domain name was registered in bad faith.
Finally, based on the evidence provided by the Complainant, the disputed domain name is active and currently resolves to a parking website on which several sponsored links refer directly to the Complainant’s activities by using the name of the Complainant and its trademark CARREFOUR.
The above element indicates that the Respondent possibly registered the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website, see MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765.
By not submitting a Response, the Respondent offered no information that might have led the Panel to question the Complainant’s arguments that the Respondent is using the disputed domain names in bad faith.
Under the circumstances described above, this Panel finds that the intention of the Respondent to take undue advantage of the Complainant’ trademark rights has been demonstrated.
For the above reasons, the Panel finds the Respondent registered and is using the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been 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.
Isabelle Leroux
Sole Panelist
Date: November 15, 2018
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