The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is WhoisGuard, Inc., Panama / Jes Madsen, Denmark. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2020, 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 April 20, 2020 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 April 24, 2020. On April 30, 2020, the Complainant submitted the remaining annexes to the Complaint. 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 May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020. The Center appointed Theda König Horowicz as the sole panelist in this matter on June 10, 2020. 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 worldwide leader in retail. It is known for its hypermarkets which bear the name “Carrefour” which are operated in France and in many other countries. The Complainant additionally offers travel, banking, insurance and ticketing services. The Complainant has been the owner since decades of numerous trademark registrations worldwide for its CARREFOUR trademark, including: - International trademark No. 351147, registered on October 2, 1968, in classes 1 to 34; The trademark CARREFOUR has been recognized as a well-known trademark by several UDRP decisions, in particular, Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam,WIPO Case No. D2019-2895 and Carrefour v. Perfect Privacy, LLC / Milen Radumilo,WIPO Case No. D2019-2610. The Complainant is also the owner of many domain names incorporating its well-known CARREFOUR trademark, including The Complainant’s trademark has been widely used since decades for its hypermarkets and on the Internet. As a matter of fact, the Complainant operates a Facebook page. The disputed domain name was registered on April 7, 2020. At the time of filing of the Complaint, the disputed domain name pointed to a website in French promoting a lottery to win a game console. In case Internet users win, they are invited to provide their details (name, surname, address, phone number, email address, and credit card details) and pay the amount of EUR 1.95 in order to get the game console. At the time of the Decision, the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant Firstly, the Complainant invokes being the owner of many trademark registrations worldwide for its CARREFOUR brand which is used for retail services more specifically hypermarkets. The Complainant submits that the disputed domain name is confusingly similar to its earlier trademark registrations. Its trademark CARREFOUR is contained in its entirety in the disputed domain name and is followed by the dictionary term “concours”. The term “concours” can be translated in English as “competition”. The public may assume that the disputed domain name originates from the Complainant while it is not the case. In this frame, the Complainant underlines that panels in several UDRP decisions considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. Based on the above, the Complainant concludes that the disputed domain name is identical or confusingly similar to the Complainant’s earlier trademarks. Secondly, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons: 1) According to searches made by the Complainant, the Respondent does not own trademarks bearing the name “Carrefour”. 2) The Complainant has found no evidence that the Respondent would be known by the disputed domain name which was registered only a few weeks before the filing of the present Complaint. 3) The Complainant did not grant a trademark license to the Respondent or authorized him by any other mean to use its protected trademark for the disputed domain name. 4) The Respondent has not, before the filing of the Complaint, used or prepared to use the disputed domain name in relation to a bona fide offering of goods or services. On the contrary, the disputed domain name points to a website pretending to be a lottery to win a game console by falsely using the Complainant’s CARREFOUR trademark. Thirdly, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent could not ignore the Complainant’s earlier rights in the well-known trademark CARREFOUR, well-known character which has been recognized by many UDRP panels for years, for example Carrefour v. rabie nolife,WIPO Case No. D2019-0673, Carrefour S.A. v. Patrick Demestre,WIPO Case No. D2011-2248, and Carrefour SA v. Eric Langlois,WIPO Case No. D2007-0067. The choice to register the disputed domain name with the Complainant’s trademark was thus not accidental. In any event a simple search by the Respondent on the Internet would have shown him that the trademark CARREFOUR is protected. Furthermore, the Complainant alleges that the Respondent most likely chose the disputed domain name because of its confusing similarity with the Complainant’s trademark in order to reach Internet users searching for the Complainant’s services and products. The Complainant also underlines that its well-known trademark significantly predates the registration of the disputed domain name. In addition, the use of the Complainant’s trademark and logo on the website linked with the disputed domain name further wrongly gives the impression of an association which is made in bad faith by the Respondent for financial gain and defrauding Internet users. Finally, the use of a privacy service is another element of evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant showed that it has trademark rights in CARREFOUR through several international registrations designating many countries notably within the European Union. Based on the case file, the Panel finds that the said trademark, which is widely used in many countries for hypermarkets and other services, is a well-known trademark. The Complainant has provided sufficient evidence in this regard. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) , section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. The disputed domain name comprises the Complainant’s well-known trademark in its entirety. The mere addition in the disputed domain name of the dictionary term “concours” does not prevent a finding of confusing similarity with the Complainant’s trademark. See WIPO Overview 3.0, section 1.8. Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests Paragraph 4 (c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; or (iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. The Complainant makes several statements showing that it never allowed the Respondent to use the trademark CARREFOUR by any means whatsoever. The Complainant also points out to the fact that the disputed domain name is linked to a website proposing a lottery to win a game console and wrongly associates itself with the Complainant by using its well-known CARREFOUR trademark. Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifted to the Respondent. The Respondent has chosen not to reply. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or there is any evidence showing a bona fide offering of goods or services nor any legitimate noncommercial or fair use of the disputed domain name. The Panel notes that the website linked to the disputed domain name used to be in French. It is notorious that the headquarters of the Complainant are in France where it is particularly active. The fact that the website linked to the disputed domain name used to be in French and that it reproduced the name and logo of the Complainant indeed created the impression of an association between the Complainant and the Respondent. Consequently, it would mislead the consumers, a way of doing which is obviously not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that its CARREFOUR trademark is registered and is widely used worldwide by the Complainant for retail, hypermarkets and other services. As stated by several panels in past UDRP decisions, CARREFOUR can be considered as a well-known trademark. Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2). The disputed domain name was linked to a website proposing a lottery to win a game console. In case of a win, an Internet user would be required to provide his/her details (name, surname, address etc.) and would be then invited to provide credit card information. Actually, in order to potentially get the game console, the Internet user would first have to pay EUR 1.95. To render its business model more attractive and credible, the Respondent used the Complainant’s well-known trademark and logo on the website in order to attract the consumer, for potential commercial gain, by creating a likelihood of confusion with the Complainant. The consumer might wrongly be led into believing that the website linked to the disputed domain name was an official website of the Complainant. Such use of the disputed domain name is obviously not a bona fide use. The Panel further notes that the Respondent has chosen to remain silent within these proceedings which is a further indication of bad faith. In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service linked with the fact that the Respondent has used false or incomplete contact details to register the disputed domain name, in the context of this case, is an indication that the Respondent wanted to hide the identity and use the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6). In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) 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 Theda König Horowicz
- International trademark No. 353849, registered on February 28, 1969, in classes 35 to 42.
Sole Panelist
Date: June 26, 2020
Full & Egal Universal Law Academy