The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & Associés, France.
The Respondent is Contact Privacy Inc. Customer 0151662948 of Toronto, Canada / Lucas Montanaro, Paris, 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 October 30, 2018. On October 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 31, 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 November 5, 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 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.
The Center appointed Alexandre Nappey as the sole panelist in this matter on December 10, 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 Group, leading retailer in Europe and second-largest retailer in the world.
The Complainant operates more than 12,300 stores and e-commerce sites in more than 30 countries.
Every day, Carrefour welcomes around 1.3 million customers around the world.
Carrefour Banque, a subsidiary of Carrefour offers to its client a payment card called “Carrefour Pass”.
The Complainant owns numerous CARREFOUR and CARREFOUR PASS trademark registrations around the world.
The Complainant is in particular the owner of the following trademark registrations:
- French trademark CARREFOUR No. 1487274, registered on September 11, 1978, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41, 42;
- European trademark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010 and covering services in class 35;
- European trademark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38.
- International trademark CARREFOUR PASS, No. 719166, registered on August 18, 1999, duly renewed, covering services in class 36.
The disputed domain name was registered by the Respondent on May 24, 2018.
At the time of the drafting of the decision, the website at the disputed domain name points to a parking page.
According to the Complainant, the disputed domain name first resolved to an online store under construction, then directed towards an unavailable webpage and finally it resolved towards a parking page displaying commercial links related to the Complainant’s field of activities. 5. Parties’ Contentions A. Complainant
The Complainant first alleges that the disputed domain name is similar to its earlier trademarks CARREFOUR and CARREFOUR PASS, to the point of creating confusion.
The disputed domain name reproduces the Complainant’s trademark CARREFOUR which previous panels have considered to be “well-known” or “famous”.
Moreover, the disputed domain name reproduces entirely the Complainant’s trademark CARREFOUR associated with the terms “service” and “pass” while simultaneously imitating the Complainant’s trademark CARREFOUR PASS, intersected by hyphens. The addition of the terms “pass” and “service” further enhances the likelihood of confusion since the Complainant offered the service of “Carte Pass” to monitor all operations and personal finance carried out using the payment card.
Second, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is neither affiliated with the Complainant in any way nor has he been authorised or licensed by the Complainant to use and register its trademarks CARREFOUR and CARREFOUR PASS, or to seek registration of any domain name incorporating the aforesaid trademarks.
The Respondent has no prior rights or legitimate interests in the disputed domain name.
The registrations of CARREFOUR and CARREFOUR PASS trademarks preceded the registration of the disputed domain name for years.
In addition, 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.
Moreover, the Respondent never answered to the Complainant’s letter despite several reminders.
Finally, the Complainant claims that the disputed domain name were registered and are being used in bad faith. - Registered in bad faith:
Firstly, the Complainant alleges that CAREFFOUR and CARREFOUR PASS are well-known throughout the world and that, given the reputation of these trademarks, registration in bad faith of the disputed domain name can be inferred.
Secondly, the Complainant alleges that the composition of the disputed domain name is too similar to the Complainant’s CARREFOUR and CARREFOUR PASS trademarks that it is impossible that the Respondent had not these trademarks in mind while registering the disputed domain name. - Used in bad faith:
The Complainant alleges that, as previous Panels have considered, in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
As initially the disputed domain name resolved towards a page related to an online store under construction, then after the Complainant’s intervention, the said domain name directed towards an inaccessible webpage which in fact, has been reactivated and currently resolves towards a parking page displaying commercial links related to the Complainant’s field of activities, it shows that the Respondent’s primary motive was to prevent the Complainant from using its trademarks in the disputed domain name, which constitutes evidence of the Respondent’s bad faith.
According to the Complainant, his use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the lack of a formal response from 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 and CARREFOUR PASS which predate the registration of the disputed domain name .
The Panel finds that the disputed domain name is confusingly similar to the registered CARREFOUR and CARREFOUR PASS trademarks owned by the Complainant.
Indeed, the disputed domain name incorporate the entirety of the Complainant’s CARREFOUR and CARREFOUR PASS trademarks with the mere addition of an hyphen and the terms “service” and “pass”. See in similar cases Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Jose Gaudet,WIPO Case No. D2018-2145; Société Française du Radiotéléphone - SFR v. Robin Manix,WIPO Case No. D2011-1258.
The dominant part of the disputed domain name is the Complainant’s trademark CARREFOUR, and the addition of the terms “service” and “pass” with the accompanying hyphen does not avoid confusing similarity.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under 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 name.
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 and CARREFOUR PASS trademark.
It results from the circumstances that the Respondent does not own any right on the trademark CARREFOUR or CARREFOUR PASS or is commonly known by the disputed domain name.
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 from the available record that the second element of 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 0151725578,WIPO Case No. D2018-2203.
Moreover, the Complainant submitted printouts showing that the website operated under the disputed domain name resolved to a page featuring pay-per-click advertising.
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 name cannot therefore constitute use of the disputed domain name in the bona fide offering of the goods.
Conversely, the Panel finds that the Respondent registered the disputed domain name 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 24, 2018
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