Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
Respondent is Alessandro NAciff, NA, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 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 Complainant on July 13, 2020 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 July 16, 2020. 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 July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 7, 2020. On August 8, 2020, the Center received an online Response filed by a third party. On August 20, 2020, the third party replied to the Center’s request for clarification, indicating that it is a web hosting company currently controlling the disputed domain name. The third party expressed willingness to settle the dispute. On September 1, 2020, the Center sent an email to the Parties, the third party and the Registrar, enquiring about the availability of the disputed domain name for the Complainant’s registration in view of the circumstances. The Center did not hear from the Registrar or the Parties despite a reminder sent on September 22, 2020. On September 22, 2020, the Center received an email communication from the third party, insisting on transferring the disputed domain name to Complainant. On September 24, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 19, 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 Complainant is a multinational retail company with over 384,000 employees that sells food products and offers travel, banking, insurance, and ticketing services under the CARREFOUR trademark (“CARREFOUR Mark” or “Complainant’s Mark”). Complainant operates more than 12,000 stores in more than 30 countries worldwide that are visited by approximately 1.3 million people on a daily basis. Complainant generated between EUR 76 billion in 2018 and is listed on the index of the Paris Stock Exchange. It owns various national and international trademark registrations for the CARREFOUR Mark, including International Registration numbers 351147 (registered on October 2, 1968), 353849 (registered on February 2, 1968) and 1554566 (registered on May 15, 2020, designating, among other countries, Brazil). At least two other UDRP panels have determined that the CARREFOUR Mark is well-known or famous. See Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam,WIPO Case No. D2019-2895; Carrefour v. Perfect Privacy, LLC / Milen Radumilo,WIPO Case No. D2019-2610. The disputed domain name was registered on May 24, 2020. It resolves to a webpage warning Internet visitors that access to the website has been restricted because it poses potential security risks. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s CARREFOUR mark because it reproduces identically the CARREFOUR mark. Complainant argues that the addition of the generic term “ofertinhas," the Portuguese word for “offers,” in the disputed domain name is insufficient to distinguish it from Complainant’s Mark. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it falsely suggests an affiliation with Complainant and because access to the disputed domain name has been restricted over concerns of illegal activity. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the CARREFOUR mark given its worldwide notoriety and the existence of its active international trademark registrations at the moment the disputed domain name was registered. Complainant further argues that Respondent’s inability to use the disputed domain name due to it being restricted over data security concerns should not prevent a finding of bad faith. According to Complainant, the restriction of access to the disputed domain name due to concerns of illegal activity and Respondent’s failure to submit any evidence of actual or contemplated good-faith use is sufficient to establish that the disputed domain name is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the CARREFOUR mark through its various national and international registrations. With Complainant’s rights in the CARREFOUR mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s CARREFOUR Mark is fully and identically incorporated in the disputed domain name. The inclusion of the dictionary term “ofertinhas” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s CARREFOUR mark. 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 domain name. Once such a prima facie case is made, the respondent carries the burden of production 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. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice 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 (as an individual, business or other organization) 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. The Panel finds that Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the CARREFOUR mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor making legitimate noncommercial or fair use of the disputed domain name because it does not resolve to any active website. Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint,WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320. Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the CARREFOUR Mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the CARREFOUR trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the CARREFOUR Mark and merely adds the dictionary term “offertinhas,” meaning that bad faith registration and use of the disputed domain name can be presumed. Furthermore, the Panel finds likely that Respondent selected the disputed domain name with the intention to take advantage of Complainant’s reputation by registering a domain name fully containing Complainant’s Mark with the intent of ultimately using the disputed domain name for illegitimate purposes, such as attracting Internet users to the online location to steal their information for Respondent’s commercial gain. See e.g. Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / "Madonna.com",WIPO Case No. D2000-0847). Access to the disputed domain name was already restricted due to concerns that it was being used to conduct a phishing scam at the time the present Complaint was filed. Furthermore, the complete incorporation of Complainant’s well-known CARREFOUR Mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, Respondent’s concealment of his or her identity, and the implausibility of any conceivable good faith basis to which the disputed domain could be put by Respondent further supports a finding that the disputed domain name was intended to be used for nefarious purposes. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b) 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 Brian J. Winterfeldt
Sole Panelist
Date: November 2, 2020
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