The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0153830825, Canada / Milen Radumilo, Romania. 2. The Domain Name and Registrar
The disputed 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 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 8, 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 July 11, 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 July 15, 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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2019.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 14, 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 1958 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 sales for
EUR 88,24 billion. 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 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 also offers financial and insurance services. As a banking subsidiary of the group, Carrefour Banque has been offering a wide range of products for more than 30 years, such as PASS MasterCard, bank accounts, revolving credits, personal loans, credit redemptions, savings, auto and home insurance, complementary health, etc.. The Complainant also offers to its customers online banking services.
The Complainant, is the owner, inter alia,of the following trademarks:
- CARREFOUR, French trademark 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 Union Trade Mark registration No. 008779498, filed on December 23, 2009 and registered on July 13, 2010, for services in class 35;
- CARREFOUR, European Union Trade Mark 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; and
- CARREFOUR, International trademark registration No. 1010661, registered on April 16, 2009, for services in class 35.
The Complainant is also the owner of various domain names including the trademark CARREFOUR, such as , registered on October 24, 1995, and , registered on June 23, 2005.
The disputed domain name was registered on January 31, 2019, and resolves to a web page containing various commercial links, and has an active email server.
The Complainant tried to solve the dispute amicably by contacting both the Registrar and the email service provider. On February 4, 2019, the Complainant sent a letter to the Registrar, requesting that the disputed domain name be put on status “ClientHold” and be deactivated. On the same day, the Complainant also sent a letter to the email service provider asking for the deactivation of the email server. Following this letter, the Complainant noticed that the email service provider had changed. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows.
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark.
According to the Complainant, the disputed domain name is confusingly similar to the trademark CARREFOUR because it fully incorporates this trademark followed by the generic term “finance”. As the dominant element of the disputed domain name lies in the trademark CARREFOUR, the adjunction of the term “finance” cannot prevent the confusing similarity. On the contrary, this term increases the confusing similarity with the Complainant’s trademark, because it refers to the financial services offered by the Complainant. Moreover, the hyphen between the trademark CARREFOUR and the word “finance”, and the generic Top-Level Domain (“gTLD”) “.com”, are insufficient to avoid a finding of confusing similarity to the Complainant’s trademark.
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain name, for a number of reasons.
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. Moreover, the Respondent is not commonly known by the disputed domain name.
The Respondent is using the disputed domain name to lead to a parking page containing commercial links from which the Respondent or a third party is deriving financial gain. In view of the reputation of the Complainant’s trademark, said use cannot amount to a bona fide offering of goods and services, nor to a noncommercial or fair use of the disputed domain name without intent, for commercial gain, to misleadingly divert consumers, or to tarnish the Complainant’s trademark.
Furthermore, an email server was initially configured on the disputed domain name and thus, the Respondent could engage in a phishing scheme.
Finally, considering the renown of the CARREFOUR trademark, and the fact that the disputed domain name refers to one of the Complainant’s activities, no conceivable legitimate use of the disputed domain name is possible, as any use would inevitably result in a misleading diversion of the Complainant’s potential consumers, and in taking unfair advantage of the Complainant’s rights.
(iii) The registration and use of the disputed domain name in bad faith.
With respect to registration in bad faith, the Complainant’s notes that in view of the high reputation of the Complainant’s trademark, the Respondent registered the disputed domain name in order to take unfair advantage of the attractiveness and reputation of its trademark and to divert traffic to its website.
With respect to use in bad faith, the Complainant notes that the disputed domain name leads Internet users to a parking page containing pay-per-click links. Accordingly, the Respondent is using the disputed domain name for commercial gain. The Respondent is therefore taking unfair advantage from the Complainant’s trademark to generate profits.
An additional evidence of registration in bad faith lies in the fact that an email server has been configured on 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.
Lastly, considering the Complainant’s goodwill and reputation and the nature of the disputed domain name, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name. Rather, said use would inevitably 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 A. Identical or Confusingly Similar
The Panel agrees with the Complainant that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the trademark CARREFOUR followed by the dictionary word “finance”. Both elements of the disputed domain name are separated by a hyphen.
It is generally considered that whenever a third party’s trademark is recognizable within a domain name, the addition of a dictionary term is not sufficient to 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”). In the instant case, the Complainant has provided evidence that it also offers various types of financial services to its customers.
Thus, also bearing in mind that the hyphen placed between the trademark CARREFOUR and the word “finance” is deprived of distinctive character, likewise the gTLD “.com”, the Panel is satisfied that the first condition under paragraph 4(a) of 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 Complainant has not licensed or otherwise allowed the Respondent to use its CARREFOUR trademark or to register the disputed domain name incorporating its trademark. The Respondent does not appear to have been commonly known by the name “carrefour-finance”.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of the Complainant. Rather, the disputed domain name leads to a pay-per-click parking site, redirecting Internet users to a variety of third parties’ websites offering services in competition with those offered by the Complainant. Therefore, the Respondent is taking unfair advantage of the goodwill and reputation of the Complainant’s trademark for its own profit.
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 paragraph 4(a) of 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 earlier UDRP panels have already found that the trademark CARREFOUR enjoys reputation (see Carrefour v. Jane Casares, NA,WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook,WIPO Case No. D2014-1425; Carrefour v. Yujinhua,WIPO Case No. D2014-0257; Carrefour v. Karin Krueger,WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe carrefour,WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067).
Given the reputation of the Complainant’s trademark, and the nature of the disputed domain name, it is not conceivable that the Respondent was not aware of the Complainant’s trademark at the time of registration of disputed domain name. Not only has the Respondent registered a domain name incorporating the well-known trademark CARREFOUR, but it has also added the word “finance”, which directly refers to the Complainant’s activities, thus evidently trying to draw all possible advantages from the confusing similarity of the disputed domain name with the Complainant’s trademark and activities, despite not being authorized to do so. Internet users, when facing the disputed domain name would be mislead about its origin, and would be induced to believe that it leads to a website where the Complainant illustrates all its financial services.
In view of the foregoing, the Panel finds that the disputed domain name was registered in bad faith.
With respect to use in bad faith, at the time of the filing of the Complaint, the disputed domain name resolved to a web page containing pay-per-click links to third parties’ websites offering services in competition with those of the Complainant. Accordingly, the Respondent or a third party generates profits each time an Internet user clicks on the links appearing on the webpage of the disputed domain name. As the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its parking page by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s parking page, said use amounts to a use in bad faith. Thus, the Respondent is taking an unfair economic advantage from the goodwill and reputation of the Complainant’s trademark and activities (see, among others, Koninklijke Douwe Egberts B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / argy hery,WIPO Case No. D2019-0916; Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens,WIPO Case No. D2016-0909).
Moreover, the disputed domain name appears to be associated with an email server. 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 Internet users as to the origin of the email address illegitimately associated with the disputed domain name.
As a last important consideration, the Panel notes that the Respondent has been involved in numerous other UDRP cases for having registered domain names in conflict with third parties’ well-known trademarks. Among these cases, many refer to domain names incorporating the Complainant’s trademark CARREFOUR, or a misspelling of said trademark. The UDRP panels dealing with these cases, have always established that the Respondent acted in bad faith and ordered the transfer of the domain names to the Complainant. See in this respect, Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo,WIPO Case No. D2019-0670 (); Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578,WIPO Case No. D2018-2203 (); Carrefour v. PERFECT PRIVACY, LLC / Milen Radumilo,WIPO Case No. D2018-2201 (); Carrefour S.A. v. Perfect Privacy, LLC / Milen Radumilo,WIPO Case No. D2018-2818 (); Carrefour v. Contact Privacy Inc. Customer 0151722284 / Milen Radumilo,WIPO Case No. D2018-2662 (); Carrefour v. Perfect Privacy, LLC / Milen Radumilo,WIPO Case No. D2018-2652 (); Carrefour v. Contact Privacy Inc. Customer 0153822170 / Milen Radumilo,WIPO Case No. D2019-0762 (); Carrefour v. Milen Radumilo / United Privacy Corp,WIPO Case No. D2015-1851 (); Carrefour v. Contact Privacy Inc. Customer 1243050775 / Chauvin,WIPO Case No. D2019-0614; Carrefour v. Domain Admin, Privacy Protect, LLC (PrivacyP) / Eliana Maria Lima,WIPO Case No. D2017-2468 (); Carrefour v. WhoisGuard Protected, WhoisGuard, Inc. / Gaudet Jose,WIPO Case No. D2018-2413 ().
It is therefore evident that the Respondent has engaged in a pattern of registering domain names in conflict with the Complainant’s or third parties’ trademarks and that it has targeted the Complainant’s trademark in various previous occasions.
From all circumstances highlighted above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, in particular to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s parking page, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s parking page. 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 28, 2019
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