The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., 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 October 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 25, 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 26, 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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2018.
The Center appointed Alexandre Nappey as the sole panelist in this matter on December 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
The Complainant is the French company CARREFOUR, one of the world’s most relevant actors in food retail which operates more than 12,300 stores and e-commerce sites in more than 30 countries.
As a banking subsidiary of the Carrefour group, Carrefour Banque has been offering a wide range of accessible and efficient products for more than 30 years. More than 2.2 million customers today benefit from exclusive services and benefits and save money on their daily shopping.
The Complainant provides evidence of numerous trademarks containing the word “CARREFOUR” in various countries around the world in connection with its business, among which:
- European Union Trademark CARREFOUR No. 005178371, filed on June 20, 2006 and 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. 563304 registered on November 6, 1990, duly renewed and covering services in classes 1 to 42;
- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, covering goods in classes 1 to 34.
At the time of the drafting of the decision, the disputed domain name does not appear to be active.
According to the Complainant, the disputed domain name used to lead to a website displaying information of the Complainant and its competitors, reproducing the Complainant’s trademarks and logos “CARREFOUR” and “BANQUE CARREFOUR” and containing a “Contact” section in which Internet users are asked to provide their name and email address. 5. Parties’ Contentions A. Complainant
First, the Complainant claims that the disputed domain name reproduces the Complainant’s trademark CARREFOUR in its entirety.
Previous panels have furthermore considered the CARREFOUR trademark to be “well-known” or “famous”.
The disputed domain name reproduces entirely the Complainant’s trademark CARREFOUR with the association of the terms “mon” and “compte”, intersected by hyphens.
In this type of combination, it is clear that the CARREFOUR trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Numerous UDRP decisions have established that adding a generic or descriptive term to the Complainant’s mark doesn’t influence the similarity between a trademark and a domain name.
The extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name.
Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark: the public would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that it is related to the Complainant.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect to the disputed domain name:
- the Respondent has no prior rights or legitimate interests in the domain name;
- the Respondent is neither affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark;
- the registration of the CARREFOUR trademark preceded the registration of the disputed domain name for years;
- the Respondent did not demonstrate use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name;
- on the “Contact” section of the litigious website, Internet users are encouraged to provide their name and email address;
- email servers have been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme;
- the Respondent never answered to the Complainant’s letter despite the Complainant’s reminders;
- the Registrant has registered the disputed domain name first with a privacy shield service to hide its identity and prevent the Complainant from contacting him or her, and then by giving a fake address to the proxy service in order to not be identifiable;
- the Respondent has been involved in another UDRP case in which he had registered the domain name reproducing the Complainant’s trademark CARREFOUR.
Third, the Complainant asserts that the disputed domain name was registered and used in bad faith.
- Registered in bad faith
It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name as CARREFOUR is a well-known trademark throughout the world.
Several panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the said trademark.
The disputed domain name resolves towards a page which displays information on the Complainant as well as its competitors and reproduces the Complainant’s logo.
Hence, it is impossible to infer that the Respondent did not have the Complainant’s trademark and activities in mind when registering the disputed domain name.
A quick trademark search on CARREFOUR would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith.
The Respondent registered the disputed domain name through a privacy shield service to hide his identity and contact details, thus, preventing the Complainant from contacting him.
The Respondent intentionally used a proxy service to hide his identity and provided a fake address to the proxy service.
Furthermore, the Respondent has been involved in an UDRP case in which he had registered a similar domain name reproducing the Complainant’s trademark CARREFOUR.
- Used in bad faith
The disputed domain name leads to a website displaying information of the Complainant and its competitors. The page also reproduces the Complainant’s trademarks and trademark CARREFOUR and BANQUE CARREFOUR.
Moreover, on the “Contact” section, Internet users are encouraged to provide their name and email address. Such use of the disputed domain name was not authorized by the Complainant.
The use of the disputed domain name only serves to increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant.
It is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name.
Email servers have been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme.
All these circumstances confirm that the disputed domain name is used in bad faith. As a consequence, the Complainant requests that the disputed domain name be transferred. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii the 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in CARREFOUR (which also predate the registration of the disputed domain name).
The Panel holds that the disputed domain name is identical or confusingly similar to the CARREFOUR (trademark owned by the Complainant, given that it reproduces it in its entirety with the mere addition of the French) term “mon compte” and two hyphens.
Therefore, the Panel finds the disputed domain name is likely to confuse the Internet users (especially the Internet users in France).
See in recent similar cases:
Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Jose Gaudet,WIPO Case No. D2018-2145, and Société Française du Radiotéléphone - SFR v. Robin Manix,WIPO Case No. D2011-1258.
The addition of a generic Top-Level Domain (“gTLD”) name such as “.com” is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy and then the burden shifts to the respondent to demonstrate its rights or legitimate interests.
See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its CARREFOUR trademark.
The Respondent offered no reason for selecting the disputed domain name and it results from the circumstances that the Respondent does not own any right on the trademark CARREFOUR or is commonly known by the disputed domain name.
The Complainant provides screenshots showing that the disputed domain name resolves to an active website containing information about Carrefour but there is nothing on the website to indicate that the Respondent is in fact unaffiliated with the Complainant. Moreover, the prominent use of the Complainant’s CARREFOUR and BANQUE CARREFOUR trademarks on the website may lead to Internet user confusion. Such use does not give rise to rights or legitimate interests for the purposes of the Policy.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Since CARREFOUR is a well-known and distinctive trademark and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name.
See for example:
Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578WIPO Case No. D2018-2203
Moreover:
- the Complainant submitted printouts showing that the website operated under the disputed domain name includes information about the Complainant and reproduces the Complainant’s trademarks, but nothing on the website indicates that the Respondent is unaffiliated with the Complainant;
- the Respondent, has been involved in other UDRP cases in which he had registered similar domain names reproducing the Complainant’s trademark CARREFOUR;
- the Complainant submitted printouts showing that on the “Contact” section of the website operated under the disputed domain, Internet users are encouraged to provide their name and email address: the Respondent could then collect personal data thereunder;
- as the Respondent apparently configured email servers to operate with the disputed domain name, this is likely reflective of a future phishing attempt which constitutes an illegitimate use of the disputed domain name.
It appears therefore that the Respondent, by making reference to the CARREFOUR trademark, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to websites on which third parties, including the Complainant’s competitors are promoting their own competitive products.
The Panel finds that the Respondent’s use of the disputed domain names cannot therefore constitute use of the disputed domain names in the bona fide offering of the goods.
Conversely, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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.
Alexandre Nappey
Sole Panelist
Date: December 23, 2018
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