The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is Telford Foucault, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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 September 26, 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 October 1, 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 October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2019. The Center appointed Alexandre Nappey as the sole panelist in this matter on October 31, 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 the French company Carrefour, a global leader in food retail with its headquarters in France since 1959. Carrefour operates more than 12,000 stores and ecommerce sites in more than 30 countries. Carrefour Banque, a subsidiary of Complainant has been offering various products and services such as the payment card “PASS Mastercard”. The Complainant owns numerous CARREFOUR and CARREFOUR PASS trademark registrations around the world, in particular the following registrations: - French trademark CARREFOUR PASS No. 99780481, registered on March 12, 1999, duly renewed and covering services in class 36; - European Union Trade Mark CARREFOUR No. 005178371, filed on June 20, 2006, and registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35, and 38; - European Union Trade Mark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010, and covering services in class 35; - International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly renewed, and covering services in class 36. In addition, the Complainant operates, among others, the following domain names reflecting its - - - The disputed domain name At the time of the drafting of the decision, the disputed domain name resolves to a website under construction. 5. Parties’ Contentions A. Complainant The Complainant first alleges that the disputed domain name is similar to its earlier trademarks CARREFOUR and CARREFOUR PASS, to the point of creating confusion. The disputed domain name reproduces the Complainant’s trademark CARREFOUR which previous UDRP panels have considered to be “well known” or “famous”. Moreover, the disputed domain name reproduces entirely the Complainant’s trademark CARREFOUR PASS preceded by the term “secure”, with a hyphen between “secure” and CARREFOUR PASS. This adjunction of the term “secure” is insufficient to avoid confusing similarity between the disputed domain name and the Complainant’s trademarks. On the contrary, the full inclusion of the Complainant’s trademarks CARREFOUR and CARREFOUR PASS in the disputed domain name Second, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has he been authorised or licensed by the Complainant to use and register its trademarks CARREFOUR and CARREFOUR PASS, or to seek registration of any domain name incorporating the aforesaid trademarks. The Respondent has no prior rights or legitimate interests in the disputed domain name as the CARREFOUR and CARREFOUR PASS trademarks precede the registration of the disputed domain name by years. The Respondent is not commonly known by the disputed domain name or the name “Carrefour” or “Carrefour PASS”. Moreover, the Respondent cannot assert that, before any notice of this dispute, it was using, or had made 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 or services. Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith. - Registered in bad faith: Firstly, the Complainant alleges that CAREFFOUR and CARREFOUR PASS are well known throughout the world and that, given the reputation of these trademarks, registration in bad faith of the disputed domain name can be inferred. Secondly, the Complainant alleges that the composition of the disputed domain name, which entirely reproduces not only one but two of its trademarks and associates them to the term “secure”, thus making reference to the Complainant’s “Carrefour PASS” card, confirms that the Respondent was very much aware of the Complainant and its trademarks. Additionally, the Complainant’s CARREFOUR and CARREFOUR PASS trademark registrations significantly predate the registration date of the disputed domain name. Furthermore, it is to be noted that the Respondent “Telford Foucault” is involved in another ongoing UDRP proceeding filed by the Complainant (WIPO Case No. D2019-2308) concerning the domain names Hence, the Respondent registered not only one, but four domain names reproducing the Complainant’s trademarks CARREFOUR and CARREFOUR PASS. This cannot be a coincidence and therefore the Respondent must have known the Complainant and its trademarks at the time of registration of the disputed domain name. Finally, the Complainant submits that given the Complainant’s goodwill and renown, and the nature of the disputed domain name, the Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users. - Used in bad faith: According to the Complainant, given the Complainant’s renown and goodwill worldwide and the nature of the disputed domain name itself, which reproduces and imitates the Complainant’s famous CARREFOUR and CARREFOUR PASS trademarks, there simply cannot be any “actual or contemplated good faith use” of the disputed domain name by the Respondent or any third party. Indeed, it results from the composition of the disputed domain name that its use in good faith by an unauthorized third party is in no way plausible, since the disputed domain name entirely reproduces the Complainant’s famous trademarks CARREFOUR and CARREFOUR PASS, combined with the word “secure” relating to a field of activity where the Complainant is active, that is, banking services. In view of the notoriety of the Complainant, no possible use in good faith is conceivable. Moreover, email servers are configured on the disputed domain name and thus, there is a risk that Respondent is engaged in a phishing scheme. The use of an email address with the disputed domain name presents a significant risk that the Respondent could have aimed at stealing valuable information, such as credit cards information, from the Complainant’s clients or employees. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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. However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following: A. Identical or Confusingly Similar The Panel is satisfied that the Complainant owns exclusive trademark rights in CARREFOUR and CARREFOUR PASS which predate the registration of the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the registered CARREFOUR and CARREFOUR PASS trademarks owned by the Complainant. Indeed, the disputed domain name incorporates the entirety of the Complainant’s CARREFOUR and CARREFOUR PASS trademarks with the mere addition of a hyphen and the dictionary term “secure”. The disputed domain name incorporates the Complainant’s trademark CARREFOUR PASS in its entirety; the addition of the term “secure” with the accompanying hyphen does not avoid a finding of confusing similarity. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the Respondent of the dispute, the Respondent’s use of, or 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 or services; or (ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is 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. Considering the difficulty to demonstrate a negative, UDRP panels consistently find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465. Here, the Complainant has stated that it has not authorized, licensed, or consented to the Respondent any use of its CARREFOUR and CARREFOUR PASS trademark. It results from these circumstances that the Respondent does not own any right in the trademarks CARREFOUR or CARREFOUR PASS or is commonly known by the disputed domain name. In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Since CARREFOUR is a well-known and distinctive trademark and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name. See for example Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578, WIPO Case No. D2018-2203. Moreover, it appears that the Respondent is already involved in another pending UDRP proceeding filed by the Complainant (WIPO Case No. D2019-2308) concerning the domain names Hence, the Respondent acquired not only one, but four domain names incorporating the Complainant’s trademarks CARREFOUR and CARREFOUR PASS. In addition, the Complainant submitted printouts showing that an email server has been configured with regard to the disputed domain name by the Respondent. This is likely reflective of a future phishing attempt which further supports a finding of bad faith registration and use of the disputed domain name by the Respondent. It results from the above that the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights. Accordingly, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy. In these circumstances the Panel holds that the disputed domain name was registered and is being used in bad faith. The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy. 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 Alexandre Nappey
above-mentioned trademarks in order to promote its services:
Sole Panelist
Date: November 14, 2019
Full & Egal Universal Law Academy