The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Saidoun Noira of Montreuil, France. 2. The Domain Name and Registrar
The disputed domain name is registered with O A/S (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 17, 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 20, 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed William Lobelson as the sole panelist in this matter on December 24, 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
Carrefour is a global leader in food retail and operates originally in France but also on an international scale.
It ranks amongst the top 10 French trademarks in the world, according to BrandZ Top 50 Most Valuable French Brands Report, and owns numerous CARREFOUR trademark registrations, and in particular:
- French trademark CARREFOUR No. 1 487 274, dated September 2, 1988, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41, 42;
- European Union trademark CARREFOUR No. 008 779 498, dated July 13, 2010 that covers services in class 35;
- European Union trademark CARREFOUR No. 005 178 371, dated August 30, 2007, duly renewed and covering goods and services in classes 9, 35, and 36.
The Complainant also owns the domain names registered on October 25, 1995 and registered on June 23, 2005.
The disputed domain name was registered on August 20, 2018 by the Respondent.
At the time when the Complaint was filed, the disputed domain name was resolving to an inactive page, but the Complainant has established that the disputed domain name was previously pointing towards a parking page displaying sponsored links targeting the Complainant and its field of activities as well as the Complainant’s competitors (“Leclerc Catalogue”, “Auchan Promo”).
The Complainant also found that email servers had been configured on the disputed domain name.
On August 30, 2018, the Complainant sent a cease-and-desist letter to the Respondent via its Registrar - which has remained unanswered, as well as a notification to the Email Service Provider in order to request the deactivation of the email servers linked to the said domain name. Despite a lack of response, it was found that the email servers had been deactivated.
The Complainant filed the present Complaint with the Center, which was later amended to reflect the details of the Respondent, after the same were disclosed by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or at least confusingly similar to its earlier trademarks and domain names formed with the word “Carrefour”; that the Respondent does not have any rights or legitimate interests therein; finally, that the Respondent registered and uses the disputed domain name in bad faith for it could not ignore the Complainant’s rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of Proceedings
The Complaint has been filed in English language.
At the time when it was filed, the identity, address or citizenship of the Respondent could not be known by the Complainant, and the Complainant could reasonably believe that the Registration Agreement of the disputed domain name was in English, as it found an English version of said Registration Agreement on the Registrar’s web site.
The Registrar later on disclosed that the Respondent was domiciled in France, and that the language of the Registration Agreement was French.
The Complainant has requested that the proceedings are nevertheless continued in English language.
The Panel observes that:
- The Complainant had no possibility to know, at the time when the Complaint was filed, that the Registration Agreement was in French language and that the Respondent was domiciled in France.
- The Respondent, even though properly notified of the Complaint both in English and French languages on November 26, 2018, has not presented any arguments to contest the Complainant’s assertions and/or justify the registration and/or use of the disputed domain name.
The Panel is of the opinion that continuing the proceedings in English is not likely to deprive the Respondent from a fair trial. The Respondent has received a notification from the Center both in English and French, and thus even if it was not able to understand English, had the possibility to communicate with the Center, or with the Complainant or the Complainant’s representative, both located in France, to raise arguments or seek explanations. The Respondent did not.
On the other hand, deciding that the proceedings are pursued in French language would impose on the Complainant a further burden, in particular in terms of translation costs, which would appear unfair at this stage of the procedure, considering the facts as exposed above.
Consequently, the Panel decides that the proceedings shall be continued in English language. A. Identical or Confusingly Similar
The Complainant owns numerous trademark and domain name registrations worldwide for the trademark CARREFOUR, the reputation of which has already been acknowledged in previous UDRP decisions.
The trademark CARREFOUR is entirely reproduced within the disputed domain name and it is associated with the French word “solde”, which translates as “sales”. Rather than distinguishing the domain name from the Complainant’s trademark, the addition of the term “solde” does in fact affirms the link between the Complainant and the disputed domain name. The Complainant operates in the field of retail, and more precisely as a chain of supermarkets.
Sales are a common and regular practice in the retail area and the public is therefore likely to believe that is a domain name owned and operated by the Complainant, dedicated to a web page specifically intended to offer attractive “sales” discounts.
The disputed domain name, even if not identical to the Complainant’s trademark, clearly appears confusingly similar thereto.
The generic Top-Level Domain (“gTLD”) “.com” should typically be ignored when assessing confusing similarity, as established by prior UDRP decisions.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark and finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Panel further finds that the Respondent is not making a bona fide offering of goods and services as the disputed domain name was resolving to a parking page displaying commercial links including those of the Complainant and its competitors, which are likely to generate revenues. Such use in connection with a domain name, which is confusingly similar to the Complainant’s trademark, cannot provide the Respondent with any rights or legitimate interests in the domain name.
The Respondent has not denied any of the Complainant’s assertions and has not brought any element showing that it has a right or legitimate interest 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 Registration in bad faith
From the case record, it appears that the Respondent at the time of registration of the disputed domain name had declared a residence in France, where the Complainant’s trademark CARREFOUR benefits from an indisputable reputation and notoriousness.
The Panel cannot believe that the Respondent could not be unaware of the Complainant’s rights in the trademark CARREFOUR, when it sought to register the disputed domain name.
It further finds that association of the Complainant’s mark CARREFOUR with the French term “solde” (“sales”), which is strongly related to the Complainant’s retail services, is a further hint of the Respondent’s intention to organize a misleading diversion and taking unfair advantage of the Complainant’s reputation
The Panel is convinced therefore that the Respondent had the Complainant’s trademark in mind when it registered the domain name, and thus acted in bad faith. Use in bad faith
Even after receiving a cease-and-desist letter from the Complainant (sent out through the Registrar of the disputed domain name), notifying its earlier proprietary rights in the trademark CARREFOUR, the Respondent did not grant back the disputed domain name to its legitimate owner.
The Panel regards this unjustified retention of the disputed domain name as bad faith.
Furthermore, the disputed domain name resolved to a parking page displaying commercial links including those of the Complainant and its competitors.
The use of the disputed domain name in connection with the parking website establishes on the balance of probabilities that the Respondent has sought to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Complainant’s trademark CARREFOUR.
Such a use of a well-known trademark to attract Internet users to a website for commercial gains constitutes an exploitation in bad faith.
Finally, the Complainant has established that an email server has also been configured on the disputed domain name, thus inducing a likelihood that the Complainant might have contemplated to use the domain name for phishing purposes, i.e. personal and bank detail information.
Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are 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.
William Lobelson
Sole Panelist
Date: January 2, 2019
Full & Egal Universal Law Academy