The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is 张丹丹 of Harbin, Heilongjiang, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Beijing Zhuoyue Shengming Technologies Company Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 15, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 15, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 16, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 in English and Chinese of the Complaint, and the proceedings commenced on November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on December 18, 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 a multi-local, multi-format and omni-channel retail Group that employs more than 380,000 people worldwide. With more than 12,300 stores and e-commerce sites in more than 30 countries, it generated revenues of EUR 88.24 billion under its banners in 2017. With its head office based in France, it generates more than 53 percent of its sales outside France. The Complainant entered the Chinese market and established its first store in 1995. In March 2017, the Complainant open its 27th Carrefour Easy Store in Shanghai.
The Complainant trades under the name 家乐福(CARREFOUR) in China. It has a large portfolio of trade mark registrations for the mark CARREFOUR globally including in China and for the Chinese trade mark 家乐福 in China. These include Chinese trade mark registration no. 788489 for CARREFOUR, registered on November 7, 1995 and Chinese trade mark registration no. 949102 for 家乐福, registered on February 21, 1997 (“the Trade Mark”).
The Complainant operates, among others, the domain name which reflects the Trade Mark to promotes its services. It was registered on October 25, 1995.
The Domain Name was registered on February 8, 2017. It was connected to a website which bears the CARREFOUR Logo and photograph of a store bearing the CARREFOUR trade mark (the “Website”). The Website does not appear to be active at the time of writing this decision.
On February 27, 2018, the Complainant’s representatives sent a cease-and-desist letter to the then registrant of the Domain Name, “张长红”, to request the transfer of the Domain Name to the Complainant. Despite several reminders the registrant did not respond but instead transferred the Domain Name to a new registrant, “刘西锟”, who then transferred the Domain Name to the Respondent. All the registrants have the same email address and the same fax number which indicates common control of the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should in English for the following reasons:
1. The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter;
2. English is the primary language for international relations and one of the working languages of the Center.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Name contains the Complainant’s trade mark in its entirety together with the descriptive term, “超市” which means “supermarket” and corresponds to the Complainant’s field of activity. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) which in this case is “.商城” which means “mall”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Trade Mark or the Domain Name. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark. There is no evidence of any use or demonstrable preparation to use the Domain Name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy, as the Respondent has used the Domain Name to host a website that misleadingly displays the Complainant’s marks and does not explain the relationship, or lack thereof, between the Respondent and the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Name comprising a trade mark with which it has no connection. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since the Trade Mark is well known.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. It resolved to the Website which displayed the CARREFOUR Logo and photograph of a store bearing the CARREFOUR trade mark. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to its Website for commercial gain. Using the Domain Name to intentionally attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy.
From the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith and the Complainant has succeeded in proving the third element. 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: December 29, 2018
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