The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0151722284 of Toronto, Ontario, Canada / Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “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 November 21, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 23, 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 28, 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 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2018.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 4, 2019. 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 operates more than 12,300 stores and e-commerce sites in more than 30 countries in its major markets in Europe, Latin America and Asia. In 2017, the Complainant generated EUR 88.24 billion in sales. Every day, the Complainant welcomes around 1.3 million customers around the world.
The Complainant is the owner of the following trade mark registrations of the mark CARREFOUR (hereafter together the “Trade Mark”):
- European Union Trademark CARREFOUR No. 005178371, filed on June 20, 2006 and registered on August 30, 2007, duly renewed;
- European Union Trademark CARREFOUR No. 008779498, filed on December 23, 2009 and registered on July 13, 2010;
- International trademark CARREFOUR No. 1010661, registered on April 16, 2009, designating inter alia, Japan, Turkey, Turkmenistan, Ghana, Syrian Arab Republic.
The Domain Name was registered in the name of the Respondent on May 31, 2018.
The Domain Name resolves to a parking page containing sponsored links with sponsored links related to the Complainant’s field of activities (“Retail Group”, “Online Storefront”, “Goods Online” etc.,) where it is also offered for sale.
On June 5, 2018, Complainant sent a cease-and-desist letter to the Respondent privacy shield service via registered letter and email requesting that the Respondent provides the identity as well as the contact details of the registrant and to transfer the Domain Name to the Complainant free of charge.
No response was obtained from the privacy shield service despite several reminders. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to the Trade Mark, as it reproduces the Trade Mark in its entirety. According to the Complainant, in many UDRP panels have considered the Trade Mark to be “well-known” or “famous” and that the incorporation of a well-known trademark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to the trade mark.
Furthermore, the Complainant points out that the Domain Name contains the generic term “grupo” which in Spanish means “group” and that in its view the addition of a generic term to a well-known trademark does not prevent the risk of confusion between the Trade Mark and the Domain Name. Finally, the Complainant contends, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Trade Mark and the Domain Name as it is a functional element and insufficient to avoid a finding of confusing similarity.
The Complainant states that the Respondent has no right or legitimate interests in the Domain Name as it is neither affiliated with the Complainant, nor has it been authorized by the Complainant to use and register the Trade Mark, or to seek registration of any domain name incorporating the Trade Mark. Furthermore, the Complainant submits, the Respondent cannot claim prior rights or legitimate interest in the Domain Name as the Trade Mark precedes the registration of the Domain Name by many years. In addition, the Complainant states that the Respondent is not commonly known by the Domain Name and there is no evidence that the Respondent may be commonly known by the name “Carrefour”.
According to the Complainant, the Respondent’s use of the Domain Name to resolves to a parking page displaying sponsored links related to Complainant’s field of activities. Furthermore, it is also offered for sale on the parking page. Consequently, the Complainant states, there is no indication that the Respondent is using, or intending to use, the Domain Name in a legitimate noncommercial or fair manner.
Finally, the Complainant points out, given the Complainant’s goodwill and renown worldwide, and the nature of the Domain Name which is confusingly similar to the Trade Mark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights in the Trade Mark.
The Complainant states that it is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name, since the Complainant is well-known throughout the world, making it unlikely that the Respondent was not aware of Complainant’s rights in the Trade Mark, while the composition of the Domain Name, reproducing the Trade Mark, also indicates that the Respondent knew the Complainant.
The Complainant also points out that the Complainant’s trademark registrations significantly predate the registration date of the Domain Name. As the Respondent under paragraph 2 of the ICANN Policy, when registering the Domain Name, represents and warrants to the registrar that, to his knowledge, the registration of the Domain Name will not infringe the rights of any third party, it was the Respondent’s duty to verify prior to the registration of the Domain Name that registration thereof would not infringe the rights of any third party. A quick trademark search or a simple search via Google or any other search engine for “Carrefour” would have revealed to the Respondent the existence of the Complainant and the Trade Mark and the Respondent’s failure to do so is a contributory factor to its bad faith, the Complainant contends.
The Complainant submits that the Respondent is using the Domain Name in bad faith as, by using the Domain Name, which is similar to the Trade Mark, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. In particular, the Complainant submits, the use of the Domain Name to direct Internet users to a parking page displaying commercial links targeting the Complainant and its services, from which the Respondent or a third party is obtaining financial gain, is evidence of bad faith as the Respondent is taking undue advantage of the Trade Mark to generate profits. According to the Complainant, the fact that the sponsored links are (or were) “automatically” generated, as per the disclaimer appearing on the website, is irrelevant as the Respondent cannot disclaim responsibility for content appearing on the website associated with the Domain Name.
Furthermore, the Complainant contends, the Respondent’s failure to respond to the Complainant’s cease and desist letter and follow-up reminders is, in the circumstances of this case, an additional strong indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Mark.
The Domain Name is confusingly similar to the Trade Mark as it incorporates the mark CARREFOUR, of which the Trade Mark consists, in its entirety. The addition of “grupo”, which in Spanish means “group” and therefore is a generic word, does not avoid a finding of confusing similarity (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 and, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and Philip Morris USA Inc. v. 1&1 Internet Limited / Mehjabeen Neesa,WIPO Case No. D2017-1451).
The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Mark as part of the Domain Name, is not commonly known by the Domain Name, has no connection or affiliation with the Complainant and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name in the present case for a website containing a parking page with sponsored links related to the Complainant’s field of activities, falsely suggests an affiliation with the Complainant and excludes any finding of a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Mark, since:
- the Respondent’s registration of the Domain Name occurred more than ten years after the earliest registration of the Trade Mark;
- the Trade Mark is famous throughout the world;
- the element CARREFOUR of which the Trade Mark consists, is incorporated in its entirety in the Domain Name;
- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Mark.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the Panel considers the fact that the Domain Name resolved to a website containing a parking page with sponsored links related to the Complainant’s field of activities, to be a clear indication that the Domain Name was being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that this, together with the following circumstances, warrants a finding of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Mark;
- the fact that there is no disclaimer on the website to which the Domain Name resolves with respect to the non-existing relationship between the Respondent and the Complainant;
- the lack of a response to the cease and desist letter of June 5, 2018 and of a formal Response of the Respondent.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith. 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.
Wolter Wefers Bettink
Sole Panelist
Date: January 17, 2019
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