The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is PERFECT PRIVACY, LLC of Jacksonville, Florida, United States of America / Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with EndeavourDomains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 3, 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 October 4, 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 October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 12, 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 Carrefour Group is a leading retailer in Europe, employing more than 380,000 people. It counts more than 11,500 stores in more than 30 countries. The Group operates in Europe, Latin America and Asia, generating more than 53% of its sales outside France.
The Complainant owns the following CARREFOUR trademark registrations:
- French trademark registration No.1487274, registered on September 2, 1988,
- European trademark registration No. 008779498, registered on July 13, 2010,
- European trademark registration No. 005178371, registered on August 30, 2007,
- international trademark registration No. 1010661, registered on April 16, 2009.
In addition, the Complainant operates domain name registered on October 25, 1995.
The disputed domain name was registered on June 17, 2018 and resolves to parking website with sponsored links related to the Complainant’s field of activities.
The Complainant sent a cease-and-desist letter to the Respondent, however no response followed. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name reproduces the Complainant’s well-known trademark in its entirety. Descriptive word “supermercado” and generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with, nor authorized/licensed by the Complainant to use the Complainant’s trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name since the Complainant’s trademark registrations preceded registration of the disputed domain name for years. Capturing the Complainant’s trademark in the disputed domain name precluded any legitimate activity via the disputed domain name. There is no use or preparations to use of the disputed domain name in connection with a bona fide offering of goods and services by the Respondent. The Respondent failed to address the Complainant’s cease and desist letter. An email server was configured on the disputed domain name, which might be a risk that the Respondent is engaged in a phishing scheme. The Respondent was involved in another 30 UDRP cases including one involving the Complainant.
The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s well known trademark while registering the disputed domain name by adding a descriptive term related to the Complainants field of activities. The Respondent failed to provide any arguments in support of its position in response to the Complainant’s cease-and-desist letter. The Respondent was involved in another 30 UDRP cases including one involving the Complainant, thus he knew the Complainant and its trademark when registering the disputed domain name. Unauthorized use of the well known Complainant’s trademark does not provide for any actual or contemplated bona fide or legitimate use of the disputed domain name. The Respondent took undue advantage of the Complainant’s trademark to attract Internet users for commercial gain via pay-per-click sponsored links providing goods and services related to those offered at the Complainant’s website. The Respondent offered the disputed domain name for sale. The Respondent might be engaged in a phishing scheme via use of email address at the disputed domain name. The Respondent’s intent was to capitalize on or otherwise take advantage of the Complainant’s trademark rights through the creation of initial interest of confusion. The disputed domain name was registered to prevent the Complainant from using its trademark in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where 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 disputed domain name includes the Complainant’s trademark, adding descriptive word “supermercado” associated with the Complainant’s business and the gTLD “.com”, which does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Considering the above the Panel believes the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
The Panel further finds that the Respondent is not making a bona fide offering of goods and services as the disputed domain name resolves to a parking website with sponsored links to third-parties’ websites suggesting goods and services related to the Complainant’s field of activities.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Several previous UDRP panels already have had the opportunity to consider the trademark CARREFOUR as a well known trademark worldwide among the retail industry (see, inter alia, Carrefour v. Ali Fetouh, Fasateen,WIPO Case No. D2017-0089; 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). This is also the view of the present Panel. Moreover, the Complainant and the Respondent were previously involved in a similar UDRP dispute (see Carrefour v. Milen Radumilo / United Privacy Corp,WIPO Case No. D2015-1851). This Panel further is of the opinion that the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name, and thereby registered the disputed domain name in bad faith.
The bad faith use of the disputed domain name is clear from the fact that the trademark CARREFOUR is being used by the Respondent with the aim of attracting Internet traffic to its website with the intent of commercial gain. Further evidence of bad faith, as held by previous UDRP panels, is the failure of the Respondent to respond to the cease-and-desist letter sent by the Complainant.
Such conduct clearly falls within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Taras Kyslyy
Sole Panelist
Date: November 14, 2018
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