Complainant is Carrefour, France, represented by Dreyfus & associés, France.
Respondent is Jacob Aurore, France. 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 August 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 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 Complainant on August 7, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 9, 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 Respondent of the Complaint, and the proceedings commenced on August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2019.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 18, 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
Complainant, Carrefour was founded in 1958. It has become a global leader in food retail with its headquarters in France. It has acquired considerable goodwill and renown worldwide, in connection with a wide range of services, including supermarkets and banking and insurance services.
Carrefour operates more than 12,000 stores and e-commerce sites in more than 30 countries, employs more than 360000 people worldwide and generated 84.91 billion euros sales incl. VAT under its banners in 2018.
Every day, Carrefour welcomes around 13 million customers around the world. It was a pioneer in countries such as Brazil in 1975 and China in 1995.
The Group operates on three major markets: Europe, Latin America and Asia.
As a banking subsidiary of the Carrefour group, Carrefour Banque has been offering a wide range of accessible and efficient products for more than 30 years, adapted to the needs of customers and consumers: PASS MasterCard, current account, revolving credit, personal loan, credit redemption, savings, auto and home insurance, complementary health, etc.
Complainant owns CARREFOUR and BANQUE CARREFOUR trademark registrations around the world.
Complainant is in particular the owner of the following Trademark Registrations:
- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed and covering services in class 36;
- French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, and covering services in classes 35, 36, 37, 38, 39, 40, 41, 42;
- European Union trademark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010 and covering services in class 35;
- European Union trademark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38;
- International trademark CARREFOUR No. 1010661, protected in, inter alia, Bulgaria, Egypt, Ghana, Iceland, Mongolia, Russian Federation, Slovenia, Switzerland, Ukraine, Viet Nam, registered on April 16, 2009, duly renewed, and covering services in class 35.
Complainant explains that it operates, among others, domain names reflecting its trademarks in order to promote its services:
- registered on June 23, 2005;
- registered on October 7, 2009.
It also relies on the domain name registered on October 25, 1995, providing a WhoIs extract that does not mention the name of the registrant, for privacy purposes.
The disputed domain name is confusingly similar to Complainant’s trademark CARREFOUR and BANQUE CARREFOUR.
The disputed domain name was created on January 23, 2019.
On January 31, 2019, the domain name was pointing to an inaccessible page.
On February 1st, 2019, Complainant sent a notification to the registrar to request that the domain name be put on status “ClientHold” and be deactivated. No reply was obtained from the Registrar despite several reminders. Following this notification, Complainant noticed that the disputed domain name resolved to an inactive page. 5. Parties’ Contentions A. Complainant
Complainant submits that its trademarks, CARREFOUR and BANQUE CARREFOUR, enjoy a worldwide reputation. Identical or confusingly similar
The disputed domain name is confusingly similar to Complainant’s trademark CARREFOUR and BANQUE CARREFOUR.
Indeed, the disputed domain name reproduces Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR in their entirety.
Complainant’s trademarks have been considered to be “well-known” or “famous” by numerous UDRP previous panels (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).
The disputed domain name is similar to Complainant’s trademark BANQUE CARREFOUR. The only difference is the inverted position of the terms “BANQUE” and “CARREFOUR” and the hyphenation between them.
Previous UDRP panels have concluded that “The inversion of the order of these terms in the domain name at issue does not render the contested domain name dissimilar to the trademark of the Complainant”. Hence, the inversion of the terms “BANQUE” and “CARREFOUR” does not prevent the confusing similarity between Complainant’s trademark BANQUE CARREFOUR and the disputed domain name (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840, Crédit Agricole S.A. contre Marconi Jessica,WIPO Case No. D2017-0492; Crédit Industriel et Commercial S.A. contre Festi Addict/ Sebastien Voiriot, WIPO Case No. D2011-1421; Carrefour v. Kara Turner, WIPO Case No. D2018-0349 and Carrefour v. Maria Gaillard,WIPO Case No. D2018-0315). Furthermore, previous UDRP panels have consistently held that hyphenation in domain names is “insufficient to distinguish the Respondent’s domain names from the Complainant’s mark because the dominant portion of each domain name is the Complainant’s [mark]”. Hence, paragraph 4(a)(i) of the Policy is satisfied (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768and TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER,WIPO Case No. D2012-2001). Finally, the extension “.top” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain, as it is viewed as a standard registration requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Indeed, the mere adjunction of a generic Top Level Domain (“gTLD”) such as “.top” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity (Abbott Laboratories v. Yeyu, WIPO Case No. D2018-2952, and Compagnie Générale des Etablissements Michelin v. Hong Wei Wang, Bei Jing Jutonline techinfo Co., Ltd, WIPO Case No. D2018-2191).
Accordingly, by registering said domain name, Respondent has created a likelihood of confusion with Complainant’s trademarks. It is likely that the domain name could mislead Internet users into thinking that it is, in some way, associated with Complainant. For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the trademarks CARREFOUR and BANQUE CARREFOUR in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled. Absence of rights or legitimate interests
Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks.
Furthermore, Respondent cannot claim prior rights or legitimate interests in the domain name as the CARREFOUR and BANQUE CARREFOUR trademarks precede the registration of the disputed domain name for years.
Respondent is not commonly known by the disputed domain name or the name “CARREFOUR” or “BANQUE CARREFOUR”, in accordance with paragraph 4(c)(ii) of the Policy.
There is simply no evidence that Respondent may be commonly known by the names “CARREFOUR” or “BANQUE CARREFOUR”.
Respondent cannot assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. As described above, the disputed domain name is not resolving to an active website.
The disputed domain name is so confusingly similar to the CARREFOUR and BANQUE CARREFOUR trademarks of that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
Panels found that in the absence of any license or permission from Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Neither can Respondent assert that he has made or is currently 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 trademark or service mark at issue, in accordance with paragraph 4(c)(iii) of the Policy.
As described above, the disputed domain name resolves to an inactive page. Consequently, there is no indication that Respondent is using, or intending to use, the disputed domain name, in a legitimate, non-commercial or fair use manner.
Finally, given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to Complainant’s CARREFOUR and BANQUE CARREFOUR trademarks, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
For all of the above-cited reasons, it is undoubtedly established that Respondent has no rights or legitimate interests in respect to the disputed domain name in dispute under paragraph 4(a)(ii) of the Policy. Bad faith registration and use
Bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name.
Firstly, Complainant is well-known throughout the world, as already recognized in a number of previous UDRP cases.
Prior panels have held that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226; Caixa D´Estalvis iPensions de Barcelona (“La Caixa”)v. Eric Adam, WIPO Case No. D2006-0464).
Given the reputation of the CARREFOUR and BANQUE CARREFOUR trademarks, registration in bad faith can be inferred.
Complainant’s CARREFOUR and BANQUE CARREFOUR trademark registrations significantly predate the registration date of the disputed domain name. In this regard, previous UDRP Panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (WIPO Case No. D2008-0287, Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. S / Michele Dinoia,WIPO Case No. D2007-0077). Under section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain names (Compagnie Gervais Danone v.Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Nike, Inc. v. Ben de Boer,WIPO Case No. D2000-1397).
Trademark searches for “CARREFOUR” and “BANQUE CARREFOUR” would have revealed to Respondent the existence of Complainant and its trademarks. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226). Supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keywords “CARREFOUR” or “BANQUE CARREFOUR” demonstrates that all first results relate to Complainant’s products or news. 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 Complainant and its trademarks, as well as the high level of notoriety of Complainant, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of the disputed domain name.
Consequently, it is established that Respondent registered the disputed domain name in bad faith.
The disputed domain name resolves to an inactive page.
Passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421). See also section 3.3. of the WIPO Overview 3.0.
Previous UDRP Panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondent’s behavior (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In Telstra Corporation Limited v. Nuclear Marshmallows, the Panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because: (1) Complainant’s trademark had a strong reputation and was widely known; (2) Respondent had provided no evidence of any actual or contemplated good faith 14 use by it of the domain name; (3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Here, it should be noted that Complainant and its trademarks CARREFOUR and BANQUE CARREFOUR have a strong reputation and are widely known throughout the world
Given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
All aforementioned circumstances confirm that the disputed domain name is used in bad faith.
Consequently, it is established that Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has submitted evidence of its prior registered CARREFOUR and BANQUE CARREFOUR trademarks in France, in the European Union and as an international registration.
The disputed domain name is composed with the CARREFOUR and BANQUE CARREFOUR trademarks.
It incorporates the CARREFOUR trademark and only reverses the terms of the BANQUE CARREFOUR trademark.
The Panel shall disregard the gTLD “.top”, which, in any event does not prevent a finding a confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s CARREFOUR and BANQUE CARREFOUR trademarks.
The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name .
Respondent is domiciled in France, where Complainant is also domiciled and has its headquarters.
It is not known under the disputed domain name and has not been licensed or authorized to use the CARREFOUR and BANQUE CARREFOUR trademarks or to register the disputed domain name .
There is no indication that Respondent is using, or intending to use, the disputed domain name, in a legitimate, non-commercial or fair use manner.
In the circumstances of this case, the Panel finds that Complainants has established a prima facie case of Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which Respondent has not rebutted. The conditions of paragraph 4(a)(ii) of the Policy have therefore been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the 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 domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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.”
Given the well-known character of the CARREFOUR and BANQUE CARREFOUR trademarks on a worldwide basis, Respondent, who is domiciled in France, was well aware of the rights of Complainant on its trademarks when it registered the disputed domain name.
Therefore, the Panel finds that the disputed domain name was registered in bad faith.
With regard to the bad faith use, the fact that the disputed domain name is not used actively does not prevent a finding of bad faith.
There is a consensus among UDRP panelists that a panel has to look at the totality of the circumstances of the case to determine whether Respondent acted in bad faith.
Factors that have been considered relevant in applying the passive holding doctrine include: (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, and (iv) the implausibility of any good faith use to which the domain name may be put.
The Complainant satisfies all these requirements.
For all the above reasons, the Panel is of the opinion that the circumstances surrounding the registration and use of disputed domain name satisfy the requirement of paragraph (4)(a)(iii) and that the disputed domain name is registered and is being used in bad faith by the Respondent. 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.
Marie-Emmanuelle HAAS
Sole Panelist
Date: October 10, 2019
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