The Complainant is Carrefour of Massy, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 1243050775 of Toronto, Ontario, Canada / Chauvin of Draguignan, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, 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 March 22, 2019 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 March 26, 2019.
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 March 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 29, 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 following facts were duly established by the Complainant:
The Complainant is the French entity Carrefour, one of the world’s most relevant actors in food retail. Carrefour operates, under the brand Carrefour, over 12,000 stores and e-commerce sites in more than 30 countries. Its operations started in France in the early 1960s, and to date the group employs over 370,000 people around the globe and generates sales beyond EUR 88 billion in 2017. The presence of the Complainant in France is particularly relevant. This is the home country of the Complainant, where its first store was opened. It generates 47% of its sales in this country alone.
The Complainant operates in particular banking and financial services, including credit services offered under the brand Carrefour Pass.
The Complainant relies on the following trademark registrations, over the word mark CARREFOUR and CARREFOUR PASS, as a basis for its Complaint.
International trademark CARREFOUR No. 1010661, registered on April 16, 2009, covering services in class 35;
European Union trademark CARREFOUR No. 005178371, filed on June 20, 2006, and registered on August 30, 2007, duly renewed and covering services in classes 9, 35, and 38;
European Union trademark CARREFOUR No. 008779498, filed on December 23, 2009, and registered on July 13, 2010, and covering services in class 35;
International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, covering financial services in class 36.
The disputed domain name was registered on August 6, 2018. It resolved for some time to an inactive webpage, and was subsequently used, as of January 2019, to a webpage entitled “JALBOOT”, written in Arabic and Latin letters, which requested a username and a password. At present, the disputed domain name resolves again to an inactive website.
After the Complaint was filed, the Registrar notified to the Center and to the Complainant that the disputed domain name was actually held by “Chauvin”, with an address in Draguignan, France.
No information is available on the file regarding the activities of the Respondent. 5. Parties’ Contentions A. Complainant
As a preliminary remark, the Complainant indicates that the trademark CARREFOUR was considered “well-known”, or “famous”, by numerous UDRP decisions, and quotes a number of supporting precedents.
Regarding the first element of the Policy, the Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks CARREFOUR and CARREFOUR PASS. It indicates that the omission of the letter “r” (at the end of the term “carrefour”) and the addition of the letter “e” (at the end of the term “pass”) do not significantly affect the appearance or pronunciation of the disputed domain name.
Regarding the second element of the Policy, the Complainant adduces in particular that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the CARREFOUR and CARREFOUR PASS trademarks precede the registration of the disputed domain name for years. The Complainant also adds that the disputed domain name is not being used in connection with a bona fide offering of goods and services.
Finally, regarding the third element of the Policy, the Complainant’s arguments make a distinction between the registration and the use of the disputed domain name. On the bad faith registration, the Complainant indicates in particular that its trademark is well-known worldwide and that the composition of the disputed domain name imitating not one but two of the Complainant’s trademarks, CARREFOUR and CARREFOUR PASS, indicates that the Respondent knew about the Complainant. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. It is most likely to be believed that the Respondent registered the disputed domain name based on the notoriety and attractiveness of the Complainant’s trademark to divert Internet traffic to its website. On the bad faith use, the Complainant argues that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, in accordance with paragraph 4(b)(iv) of the Policy”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is obviously confusingly similar to the Complainant’s trademark CARREFOUR PASS. It shares the same words in the same order, with very minor alterations. It is even similar to the trademarks CARREFOUR, as this element is placed in attack position in the disputed domain name, and is identifiable per se. As mentioned in numerous prior UDRP decisions, CARREFOUR is a well-known trademark in France and elsewhere. Therefore, any declination based on the element CARREFOUR is likely to be connected by the public to the Complainant and its activities.
The deletion of the end letter “r” of “Carrefour”, and the addition of the additional letter “e” after the element “pass”, do not modify these findings. These are typical instances of typosquatting, a phenomenom specifically aimed at attracting and deceiving the public. As outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark”. Actually, this Panel did not notice the modifications when reading the disputed domain name for the first time, as these changes are not noticeable immediately and without attention. The trademark CARREFOUR was already subject to various instances of typosquatting in the past, for example in the form (Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578,WIPO Case No. D2018-2203) or (Carrefour v. 1&1 Internet Inc. / Gregory Mayer,WIPO Case No. D2017-0528).
The disputed domain name is therefore confusingly similar to the trademarks of the Complainant, in accordance with the standards of the Policy. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trademark in a domain name or otherwise.
Likewise, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Actually, this Panel rules out any possible claim of use of the sign “carrefoupasse” in the disputed domain name in a generic way: this sign has no meaning and can solely be perceived as a misspelling of the combination of the words “Carrefour” and “pass”.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complaint focuses largely on the global presence and reputation of the brand Carrefour worldwide, and highlights that the Respondent knew, or should have known, of the existence of this major brand. That makes sense because the Complainant ignored the true identity of the Respondent when filing the Complaint.
As a result of the information provided subsequently by the Registrar, it appears that the actual Respondent is an individual domiciled in France. This is an important element because a French individual domiciled in France can hardly ignore the existence, longstanding use and outstanding reputation of the brand Carrefour, for food retail and many other products and services. Likewise, the Respondent is most certainly familiar with the brand Carrefour Pass, as it has registered a domain name comprising these two elements, in the same order, with a couple of typo errors in order to confuse the public.
Besides, in his capacity as domain name holder the Respondent is familiar with the Internet world, and arguably he or she is aware that any search conducted online on the elements “carrefour” or “carrefour pass” in France solely provides results connected with the Complainant.
Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
On the use of the disputed domain name, the Panel does not give much weight to the short period of use of the disputed domain name as a mere login page under the title “JALBOOT”. The Panel however finds that the Respondent’s overall conduct amounts to disruption of the activities of the Complainant, as the public may be confused and reach any webpage hosted under the disputed domain name, while believing that it accedes to a webpage controlled by the Complainant. Indeed, as outlined already the Complainant’s trademark CARREFOUR has a strong reputation and is widely known, all the more in France. And over a million users access the webpages of the Complainant daily, with therefore accrued risks of cybersquatting. Besides, the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain name; and has taken active steps to conceal its true identity, by using a privacy shield service. A finding of passive domain name holding was made by the learned panel in a very similar case involving the domain name (Carrefour v. Hamdi Math,WIPO Case No. D2018-2653)
Therefore, the Panel also finds that the disputed domain name is used by the Respondent in bad faith.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also 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.
Benjamin Fontaine
Sole Panelist
Date: May 6, 2019
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