The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., Panama / Mamadou Paulo, France. 2. The Domain Name and Registrar
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 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 9, 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 11, 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 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 12, 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 generated 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. It is also worth noting that every day the Complainant receives 1.3 million unique visitors across all its websites, including .
The Complainant operates in particular banking and financial services, through its subsidiary Carrefour Banque. These services, which include credit cards, personal loan, auto and home insurance, etc. have been offered for over 30 years. To date the Complainant has over 2 million clients using its financial services, under the main brand CARREFOUR BANQUE.
The Complainant relies in particular on the following trademark registrations, over the word marks CARREFOUR and BANQUE CARREFOUR, as a basis for its Complaint:
French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, covering in particular financial services in class 36;
French trademark CARREFOUR No. 1487274, registered on September 2, 1988, covering in particular financial services in class 36;
The Complainant also offers its services online, through a webpage hosted at .
The disputed domain name was registered on January 23, 2019. It resolved initially to a parking page, which offered per-per-click links, in particular under the headings “car insurance”, “credit card”, “life insurance”. Some time thereafter the disputed domain name redirected to the webpage of a Libanese restaurant. Finally, at present the disputed domain name resolves to an inactive website.
After the Complaint was filed, the Registrar notified the Center that the disputed domain name was actually held by an individual, Mr. Mamadou Paulo, with an alleged address in the city of Saint Agnan, France.
No information is available on the file regarding the activities of the Respondent. 5. Parties’ Contentions A. Complainant
On the first element of the Policy, the Complainant indicates that the disputed domain name imitates its earlier trademarks BANQUE CARREFOUR. The disputed domain name simply inverses the sequence of terms of the earlier trademarks as registered. Besides, the disputed domain name reproduces the word mark CARREFOUR, with the mere addition of a generic term, “banque”. The Complainant argues that, as per current practice, the reproduction of the trademark in its entirety is sufficient for a finding of confusing similarity.
On the second element of the Policy, the Complainant indicates in particular that “Respondent is neither affiliated with Complainant in any way nor has he been authorized or licensed by Complainant to use and register its trademarks CARREFOUR and CARREFOUR BANQUE or to seek registration of any domain name incorporating the aforesaid trademark. Respondent has no prior rights or legitimate interest in the disputed domain name. The registrations of CARREFOUR and BANQUE CARREFOUR preceded the registration of the disputed domain name for years”. It also stresses that the Respondent does not make a legitimate, noncommercial or bona fide use of the disputed domain name. Actually, no legitimate use of the disputed domain name can be contemplated here, as it reproduces a widely known trademark without any permission from the Complainant. The Complainant highlights, finally, that there exists in this case a strong risk of a phishing scheme, as email servers have been configured on the disputed domain name .
On the third element of the Policy, the Complainant asserts that the disputed domain name was registered and used in bad faith. Regarding the registration in bad faith, it claims that it is implausible that the Respondent was unaware of the Complainant when it registered it. Indeed, the trademark CARREFOUR of the Complainant enjoys a considerable goodwill, in particular in France where Respondent is domiciled. Besides, the disputed domain name is closely connected to the Complainant’s trademark CARREFOUR, as it associates it with the generic word “banque”, which corresponds to one of its activities in France. Regarding the use in bad faith, the Complainant asserts in particular that a likelihood of confusion, resulting in the diversion of Internet traffic from the Complainant’s legitimate website, is presumed here. It refers also to the doctrine of passive holding and the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). It also mentions the potential phishing scheme as mentioned above regarding the test of fair use. Finally, when the identity of the underlying registrant was disclosed, the Complainant amended its Complaint and added that the Respondent was already involved in prior UDRP proceedings concerning highly similar domain names, and , which were subject to an order of transfer by the panel (Carrefour v. WhoisGuard, Inc. / Mamadou Paulo,WIPO Case No. D2019-0758 and Carrefour v. WhoisGuard, Inc. / Mamadou Paulo,WIPO Case No. D2019-0815). It also indicated that the Respondent provided a false address, in breach of its obligations. 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.
It is important to highlight that this is the third case brought by the Complainant against the same Respondent, in a very short time, regarding highly similar domain names: and (WIPO Case No. D2019-0758 andWIPO Case No. D2019-0815 cited ut supra). The circumstances of this case are highly similar, and there are no reasons to depart from the findings of the previous UDRP panels. A. Identical or Confusingly Similar
The Complainant has established the existence of trademark rights over CARREFOUR and BANQUE CARREFOUR, as indicated above in the factual background.
The disputed domain name imitates both trademarks. It reproduces in first position the trademark CARREFOUR, which is immediately identifiable and isolated from the other elements with a dash sign. The addition of the element “banque” does not prevent 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”). It is also confusingly similar to the trademark BANQUE CARREFOUR: the mere inversion of these terms produces no significant impact on the public.
The disputed domain name is therefore confusingly similar to the trademarks of the Complainant. 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.
On the contrary, the association of the well-known trademark CARREFOUR, to the generic word “banque”, can only be perceived as a reference to the Complainant’s trademarks and activities. No legitimate fair use of the disputed domain name can be foreseen. The displaying of pay-per-click links or the promotion of a restaurant, for some time, is not a proper bona fide use, which would legitimate in any way the adoption of this specific disputed domain name by the Respondent.
And the Respondent, who chose not to respond to the Complaint, has not made any such claim anyway.
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) 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 Respondent has engaged in a pattern of registering a series of domain names which imitate closely the Complainant’s well-known trademarks: , , , and maybe more. This activity is of course likely to disrupt the activities of the Complainant, particularly in a very sensitive aspect of its business, that of providing financial services. The Respondent clearly targeted the Complainant’s trademark and this shows registration in bad faith.
The Respondent has used the disputed domain name in particular to host a pay-per-click scheme. It did so by taking advantage of the confusion created by the close imitation of the Complainant’s trademark. This evidences use in bad faith. In addition, the elements provided by the Complainant suggest that the Respondent intended to create a phishing scheme on the basis of the disputed domain name as indeed email servers were configured on its basis.
Other elements in the file confirm the finding of bad faith registration and use: the Respondent used a privacy service to conceal its true identity, and provided a false contact address.
Accordingly, the third element 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: August 19, 2019
Full & Egal Universal Law Academy