The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., Panama / Robert Amandin, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 April 5, 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 April 10, 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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on May 15, 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 is a French multinational retailer with its headquarters in France. The Complainant was founded in 1958 and today is one of the largest hypermarket chains in the world with 12,300 stores and e-commerce websites in more than thirty countries and regions all over the world. The Complainant also offers banking and insurance services. Being the banking subsidiary of the Carrefour Group, Carrefour Banque (is present, among others, in Italy) offers a wide range of accessible and efficient products for more than thirty years, adapted to the needs of customers.
The Complainant is the owner of many CARREFOUR and BANQUE CARREFOUR trademarks registrations (the “CARREFOUR and BANQUE CARREFOUR Trademarks”) around the world, among which are:
Trademark
Country/Register
Registration No.
Registration Date
International Class
BANQUE CARREFOUR
France
3585968
July 2, 2008
36
CARREFOUR
European Union
005178371
August 30, 2007
9, 35, 38
CARREFOUR
European Union
008779498
July 13, 2010
35
CARREFOUR
Benelux, Czech Republic, Estonia, Spain, Croatia, Hungary, Italy, Liechtenstein, Latvia, Morocco, Monaco, Montenegro, North Macedonia, Serbia, Slovenia, Slovakia, San Marino
353849
February 28, 1969
35, 36, 37, 38, 39, 40, 41, 42
The Complainant operates, among others, domain names reflecting its CARREFOUR and BANQUE CARREFOUR Trademarks for promotion of its services:
- registered on October 25, 1995;
- registered on June 23, 2005;
- registered on October 7, 2009.
The Disputed Domain Name was registered on January 7, 2019. At the date of this decision the Disputed Domain Name is inactive and has an indication “502 Bad Gateway”. However, on the date of filing of the Complainant the Disputed Domain Name resolved towards a parking page with pay-per-click links related to the Complainant’s industry (Annex 1 to the Complainant). 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Disputed Domain Name is confusingly similar to the Complainant’s CARREFOUR Trademark in view of it incorporates the Complainant’s Trademark in its entirety; and is confusingly similar to the Complainant’s BANQUE CARREFOUR Trademark. The only difference is the inverted position of the terms “banque” and “carrefour” and the hyphenation between them.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its Trademarks, or to seek registration of any domain name incorporating the said Trademarks. Also, the Respondent cannot claim prior rights or legitimate interests in the Disputed Domain Name as the CARREFOUR and BANQUE CARREFOUR Trademarks precede the registration of the Disputed Domain Name for years. The Complainant also alleges that the Respondent is not commonly known by the Disputed Domain Name or the names “Carrefour” and/or “Banque Carrefour”; there is no indication that the Respondent is using, or intending to use, the Disputed Domain Name, in a legitimate, noncommercial or fair use manner.
The Complainant also asserts that the Respondent is taking unfair advantage of the Complainant’s rights. The Respondent is capitalizing on the reputation and goodwill of the Complainant’s Trademarks by misleadingly diverting Internet users to its own website and Internet users are likely to believe that the Disputed Domain Name is endorsed by the Complainant.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith by the Respondent in view of the following:
- the Complainant is well-known throughout the world and many UDRP panels have previously acknowledged the Complainant’s reputation worldwide, so it is unlikely that the Respondent was not aware of the Complainant’s rights in the said Trademarks;
- the Complainant’s CARREFOUR and BANQUE CARREFOUR Trademark registrations significantly predate the registration date of the Disputed Domain Name;
- the Disputed Domain Name resolves towards a parking page with pay-per-click links related to the Complainant’s industry (Annex 1 to the Complainant). The Respondent’s operations are such that he is trying to benefit from the fame of the Complainant’s Trademarks;
- an email server was previously associated to the Disputed Domain Name and thus, there was a risk that the Respondent was engaged in a phishing scheme. Indeed, the use of an email address with the Disputed Domain Name presented a significant risk where the Respondent could send phishing emails to the Complainant’s employees in order to obtain personal and financial information from them;
- given the Complainant’s goodwill and renown worldwide, and that the Disputed Domain Name is confusingly similar to the Complainant’s Trademarks, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the Disputed Domain Name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must demonstrate to the Panel 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.
Pursuant to paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The Complainant has a protection for its CARREFOUR and BANQUE CARREFOUR Trademarks in many jurisdictions and, following on from the evidences provided by the Complainant it is obvious that its CARREFOUR Trademark is well-known. Previous UDRP panels have acknowledged the CARREFOUR Trademark as well-known, see e.g., Carrefour v. Kara Turner,WIPO Case No. D2018-0349; Carrefour v. Whois Agent, Whois Privacy Protection Service Inc. / Andres Saavedra,WIPO Case No. D2016-0608; Carrefour v. Patrick Demestre,WIPO Case No. D2011-2248.
The Panel also notes that the Complainant’s CARREFOUR Trademark, due to its worldwide notoriety, is constantly a subject to abusive domain name registrations.
The Disputed Domain Name reproduces the Complainant’s CARREFOUR Trademark in its entirety and the Complainant’s BANQUE CARREFOUR Trademark with inverted position of the words “banque” and “carrefour”, combining with a hyphen and generic Top-Level Domain (“gTLD”) “.icu”. Interchange of the position of the words “banque” and “carrefour” with a hyphen between them is not enough to avoid confusing similarity between the Disputed Domain Name and the Complainant’s Trademarks. The use of the hyphen in the Disputed Domain Name is irrelevant in finding of confusing similarity, see e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”). Therefore, the Internet users, accessing the Disputed Domain Name, would likely presume that it refers to the Complainant and its business in the banking sector.
Also, it is well accepted that a domain name that wholly incorporates a well-known trademark in a recognizable manner will be deemed confusingly similar to that trademark, see e.g., Revlon Consumer Products Corporation v. IONE Inc.,WIPO Case No. D2010-1000; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
In view of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Trademarks in which the Complainant has rights. Respectively, paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel considers the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in view of the Respondent is not commonly known by the Disputed Domain Name, it does not have any registered trademarks or trade name corresponding to the Disputed Domain Name. Moreover, the Respondent registered the Disputed Domain Name more than fifty years after the CARREFOUR Trademark had been registered and had obtained world notoriety.
The Panel finds that that no permission of any kind has been given by the Complainant to the Respondent to use the CARREFOUR and BANQUE CARREFOUR Trademarks. At the same time, the Respondent is not obviously using the Disputed Domain Name in connection with a bona fide offering of goods and services, or a legitimate, noncommercial or fair use of the Disputed Domain Name.
In accordance with the evidences presented by the Complainant (Annex 1 to the Complaint), after sending the notification to the Registrar by the Complainant the website under the Disputed Domain Name started to resolve towards a parking page with pay-per-click links related to bank and insurance. Section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The way of use of the Disputed Domain Name could not evidence the rights or legitimate interests in respect of it. At the date of this decision, the Disputed Domain Name is inactive. Accordingly, the Panel concludes that the Disputed Domain Name has been registered and has been used by the Respondent with the sole intention of obtaining the benefit from the Complainant’s reputation.
Moreover, taking into account that the CARREFOUR Trademark is highly distinctive and well-known, the Panel also finds that the Disputed Domain Name could not legitimately be registered except for creating an impression of the association with the Complainant.
In view of the foregoing, the Panel finds that the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that 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 owner of the trademark or service mark from reflecting the 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.”
Taking into consideration the statements submitted in this case, the Panel considers it is clear that the Disputed Domain Name was registered and is being used in bad faith in view of incorporating the well-known Complainant’s CARREFOUR Trademark in the Disputed Domain Name in order to intentionally attract the Internet users for commercial gain. Moreover, incorporating the BANQUE CARREFOUR Trademark in the Disputed Domain Name, under which the Complainant conducts its financial business, gives to the Panel the ground to conclude that the Disputed Domain Name was registered with the purpose to mislead the Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s financial services that is not true. Accordingly, there is no evidence of bona fide use of the CARREFOUR and BANQUE CARREFOUR Trademarks by the Respondent.
In accordance with section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s well-known CARREFOUR Trademark and was obviously registered to primarily intend to disrupt the Complainant’s business.
Tha Panel finds that the fact of use of an email address with the Disputed Domain Name (Annex 1 to the Complaint) is indicative of a risk that the Respondent could be engaged in a phishing scheme, namely a risk of sending phishing emails to the Complainant’s employees for the purpose of obtaining their personal and financial information.
The Panel finds that the Complainant’s registration for the CARREFOUR Trademark predates the registration of the Disputed Domain Name by 50 years, respectively, it is more than likely that the Respondent was well aware of the Complainant and its reputation in the CARREFOUR Trademark at the time the Disputed Domain Name was registered. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
According to the evidences provided by the Complainant (Annex 1 to the Complaint) on the date of filing the Complainant the Disputed Domain Name resolved towards a parking page with pay-per-click links related to the Complainant’s industry, that also demonstrates that the Respondent was aware of the Complainant at the time of registration.
Finally, the Respondent did not file any response and did not take any efforts for justification of its actions with respect to the Disputed Domain Name registration and use.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith and the paragraph 4(a)(iii) of the Policy is satisfied by the Complainant. 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.
Mariya Koval
Sole Panelist
Date: May 29, 2019
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