The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is IceNetworks Ltd of Reykjavik, Iceland. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 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.
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 of the Complaint, and the proceedings commenced on December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 17, 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, Carrefour, is a multinational retailer established in France. The Complainant was founded in 1958 and has since grown to an international supermarket chain employing over 375,000 people in more than 12,300 stores in over 30 countries worldwide.
The Complainant is the holder of a multitude of trade- and service mark registrations across various jurisdictions throughout the world for and relating to the mark CARREFOUR, which it uses in connection with its retail and supermarket business. The Complainant’s trademark portfolio includes, inter alia, the following trade- and service mark registrations:
- CARREFOUR, word mark registered with the French National Intellectual Property Institute (“INPI”) under No. 1487274 on September 2, 1988 in classes 35, 36, 37, 38, 39, 40, 41, and 42;
- CARREFOUR, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 005178371 on August 30, 2007 in classes 9, 35 and 38;
- CARREFOUR, word mark registered with the EUIPO under No. 008779498 on July 13, 2010 in class 35.
The Disputed Domain Name was registered by the Respondent on September 17, 2018. The Disputed Domain Name currently does not resolve to an active webpage. Before filing the Complaint, the Disputed Domain Name used to refer to a website written in French, displaying the Complainant’s trademarked logo and offering for sale goods, such as smartphones and perfume, at heavily discounted prices in exchange for “bonus points” offered by the Complainant. When an Internet user clicked on such an offer, he was referred to a webpage prompting the user to input his name, email address and credit card information. Accordingly, the Disputed Domain Name appears to have been used for fraudulent purposes, and specifically for phishing and/or identity theft.
Before initiating UDRP proceedings, the Complainant attempted to contact the Respondent and the Registrar on October 25, 2018 and October 26, 2018 respectively, providing notice of the Complainant’s trademark rights and the infringing conduct of the Respondent, and demanding the voluntary transfer or the blocking of the Disputed Domain Name. The Registrar responded by stating that it did not find any phishing or content infringing the Complainant’s trademark on the website associated with the Disputed Domain Name and that it encouraged the Complainant to resolve such disputes by filing a UDRP complaint. The Respondent did not reply to the Complainant’s communication. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use as the website previously connected to the Disputed Domain Name displayed the Complainant’s trademarked logo and was used to engage in fraudulent activities. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with or authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent has used the Disputed Domain Name for phishing, identity theft and other fraudulent purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s CARREFOUR mark has been registered and used in connection to its retail and supermarket products and services.
The Disputed Domain Name incorporates the Complainant’s CARREFOUR trademark in its entirety, merely adding a hyphen and the non-distinctive suffix “pointsbonus”.
The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not prevent a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168). The term “pointsbonus” does not add to the distinctiveness of the Disputed Domain Name as it is a combination of the common French (and English) words “points” and “bonus”.
Additionally, it is well established that hyphens and the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Accordingly, the Panel finds the Disputed Domain Name to be confusingly similar to the Complainant’s CARREFOUR trademark and the Complainant has thus made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0).
While the Disputed Domain Name currently does not resolve to an active webpage, it used to refer to a website bearing the Complainant’s trademarked logo and offering for sale goods, such as smartphones and perfume, at heavily discounted prices in exchange for “bonus points” offered by the Complainant. For example, the purported “crazy discounts” on the website previously connected to the Disputed Domain Name advertised the sale of expensive smartphones for the price of a one Euro or only the shipping costs if the Internet user had sufficient bonus points. The evidence of the case clearly shows that the Respondent used the website previously connected to the Disputed Domain Name to deceive Internet users in providing their identity and contact details, as well as their credit card information for fraudulent purposes. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to assert and explain his purported rights or legitimate interests but did not do so.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s trademark in its entirety with the addition of the descriptive terms “points” and “bonus”. Additionally, the website previously connected to the Disputed Domain Name displayed the Complainant’s trademarked logo and referred to the Complainant’s “bonus point” loyalty program. As a result, it is undisputable that the Respondent had the Complainant in mind when registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith.
By copying the Complainant’s logo and by offering for sale goods disproportionately below market value in exchange for “bonus points” obtained through the Complainant’s loyalty program, the Respondent intentionally aimed to attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location and of the products advertised on the website (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan,WIPO Case No. D2014-2227). The Respondent clearly intended to profit from this confusion through identity theft and/or phishing. Such behavior is manifestly considered evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0). The fact that the Disputed Domain Name currently does not resolve to an active webpage does not preclude the fact that the Respondent can at any time resume the previous bad faith use of the Disputed Domain Name.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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.
Flip Jan Claude Petillion
Sole Panelist
Date: January 23, 2019
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