The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is Jason host LLC, United States of America (the “United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2019, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 9, 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 company, founded in 1959 and it operates in the food retail field. The Complainant operates more than 12,300 stores and e-commerce websites in more than 30 countries and employs more than 375,000 people worldwide. In 2017, the Complainant generated sale for 88.24 billion Euros. The Complainant welcomes every day approximately 104 million customers worldwide, while the Complainant’s websites are visited by 1.3 million people per day. The Complainant was a pioneer in Brazil, where it first accessed the market in 1975, and in China, where it established its presence in 1995. Nowadays, the Carrefour group operates in three major markets: Europe, Latin America and Asia, 53% of its sales is being made out of France.
The Complainant, is the owner, inter alia, of the following trademarks:
- CARREFOUR, French registration No. 1487274, of September 2, 1988, duly renewed, for services in classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;
- CARREFOUR, European registration No. 008779498, filed on December 23, 2009 and registered on July 13, 2010, for services in class 35;
- CARREFOUR, European registration No. 005178371, filed on June 20, 2006 and registered on August 30, 2007, duly renewed, for goods and services in classes 9, 35 and 38;
- CARREFOUR, International registration No. 1010661, registered on April 16, 2009, duly renewed, for services in class 35.
The Complainant is also the owner of various domain names including the trademark CARREFOUR, such as , registered on October 25, 1995, and , registered on June 23, 2005.
The disputed domain name was registered on November 19, 2018 and initially resolved to an “error page”. The Complainant sent a cease and desist letter to the Registrar on November 21, 2018, with a copy to the Respondent, requesting it to deactivate the disputed domain name, to which the Complainant did not receive any reply. On the same day, the Complainant also sent a communication to the email provider requesting the deactivation of the email server set up for the disputed domain name. However, also this request remained unanswered. Notwithstanding the lack of formal answers, the Complainant noticed that the direction of the disputed domain name had changed and that the disputed domain name resolved towards a page displaying the following notice: “This account has been suspended. Contact your hosting provider for more information”.
On February 4, 2019, the Complainant sent a cease-and-desist letter to the Respondent, asserting its trademark rights and asking the Respondent to transfer the disputed domain name. The Respondent failed to reply to this letter. 5. Parties’ Contentions A. Complainant
The Complainant’s assertions may be summarized as follows:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark CARREFOUR, since it reproduces this trademark in its entirety, followed by the generic term “supply”, which suggests the commercial activities of the Complainant and refers to the Complainant’s supply chain information system. As the hyphen between the trademark CARREFOUR and the word “supply”, and the generic Top-Level Domain (“gTLD”) “.com” are insufficient to avoid a finding of confusing similarity, the disputed domain name is confusingly similar to the Complainant’s trademark.
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not affiliated with the Complainant, and the Complainant did not authorize, nor license, the Respondent to use and register its trademark CARREFOUR or to seek registration of any domain name incorporating the aforesaid trademark. The Respondent is also not commonly known by the disputed domain name, and before any notice of this dispute the Respondent was not using, nor was making demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. An email server was initially configured on the disputed domain name and thus, the Respondent could engage in a phishing scheme.
Considering the renown of the CARREFOUR trademark, the Respondent could not reasonably pretend that it was intending to develop a legitimate activity through it.
(iii) The registration and use of the disputed domain name in bad faith.
In view of the fact that the Complainant’s trademark is well known, it is clear that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark in order to take unfair advantage of the confusing similarity with the Complainant’s trademark.
With respect to use in bad faith, the Complainant notes that passive holding of the disputed domain name does not prevent a finding of bad faith. In the present case, considering the international renown of the trademark CARREFOUR and the nature of the disputed domain name, which consists of the well-known trademark CARREFOUR followed by the term “supply”, that relates to the Complainant’s activity, actual or contemplated good faith use of the disputed domain name is simply not possible, as any use would result in misleading diversion and unfair advantage of the Complainant’s rights. An additional evidence of registration in bad faith lies in the fact that initially an email server was associated with the disputed domain name. The use of said email address could result in a fraudulent, and thus bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark since the trademark CARREFOUR is fully reproduced in the disputed domain name and is followed by the dictionary term “supply”. The addition of the dictionary term “supply”, to the Complainant’s trademark, in the disputed domain name does not avoid a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The term “supply” refers to the Complainant’s activity, consisting of the exercise and management of supermarket activities, thus also including the supply of the relevant goods. Moreover, the term “supply” is descriptive of the Complainant’s supply chain information system. As far as the hyphen placed between the trademark CARREFOUR and the dictionary term “supply” is concerned, it is deprived of distinctive character and therefore does not impact on the confusing similarity of the disputed domain name with the Complainant’s trademark, likewise the gTLD “.com”, which is a mere technical requirement.
Therefore, the Panel finds that the first condition under the Policy is met. B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name.
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. As such, where a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that the Respondent is not authorized to reflect the Complainant’s trademark in the disputed domain name, and that the Respondent does not appear to have been commonly known by the name “carrefour-supply”.
At the time of the initiation of the dispute leading to this UDRP case, the disputed domain name did not resolve to an active webpage, but an email server was set for the disputed domain name. The Panel finds that the set up of an email server associated with a domain name corresponding to a third party’s well-known trademark cannot amount to demonstrable preparations of use of the domain name in connection with a bona fide offering of goods and services, nor to a legitimate, noncommercial or fair use of the domain name without intent, for commercial gain, to misleadingly divert consumers or to tarnish the third party’s trademark.
In view of the above, and in the absence of any contrary argument by the Respondent, the Panel is satisfied that also the second condition under the Policy is met. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and is using the disputed domain name in bad faith.
As far as registration in bad faith is concerned, the Panel notes that given the reputation of the Complainant’s trademark, and the type of domain name that the Respondent decided to register, it is not conceivable that the Respondent was not aware of the Complainant’s trademark at the time of the registration of the disputed domain name. The Complainant’s trademark is not only highly reputed in the supermarket field, but it is also inherently distinctive, especially for a native English speaker like the Respondent appears to be. Therefore it is very plausible that the Respondent knew very well the Complainant’s trademark and activities at the time it decided to register the disputed domain name. This is confirmed also by the type of domain name that the Respondent sought to register, namely a domain name incorporating the trademark CARREFOUR, followed by the dictionary term “supply”, which refers to the Complainant’s activity.
With respect to use in bad faith, the Panel notes that the disputed domain name has never resolved to an active website. Notwithstanding, the disputed domain name appears to be associated with an email server set up by the Respondent or under the Respondent’s responsibility. The presence of an email server linked with a domain name reproducing a well-known third party’s trademark generates a risk of illegitimate use of the disputed domain name by falsely impersonating the Complainant, thus misleading potential consumers as to the origin of the email address illegitimately associated with the disputed domain name.
Moreover, it is worth pointing out that passive holding of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding”. While UDRP panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include (without limitation): (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In the instant case, the Panel notes that: (i) the CARREFOUR trademark is highly distinctive and enjoys substantial reputation in the supermarket field. Consequently, no plausible good faith use of the disputed domain name can be foreseen; (ii) the Respondent appears to have associated an email server with the disputed domain name, so that it would have been possible to send emails capable of misleading potential consumers as to the source of origin of these emails; (iii) the Respondent failed to reply at least to the cease and desist letter and the reminders sent by the Complainant directly to the Respondent; (iv) the Respondent failed to reply to the Complaint.
From all circumstances highlighted above, the Panel concludes that the disputed domain name was registered to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In view of the above, the Panel is satisfied that also the third condition under the Policy is met. 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.
Angelica Lodigiani
Sole Panelist
Date: August 18, 2019
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