The Complainant is Carrefour SA., France, represented by IP Twins, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ben Luis, France.
2. The Domain Names and RegistrarsThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2021, 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 September 6, 2021.
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 September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on October 14, 2021. 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 BackgroundGiven that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is a multinational retail company headquartered in France.
The Complainant is the owner of several trade marks for CARREFOUR including in France where the Respondent appears to be based. The Complainant’s CARREFOUR trade marks include the following:
- International Trade Mark registration No. 351147 for CARREFOUR, registered on October 2, 1968.
The Complainant is also the owner of several domain names reflecting its CARREFOUR trade mark.
The Domain Name
The Complainant contends that the Domain Names are confusingly similar to the CARREFOUR trade mark in which the Complainant has rights, as the Domain Names incorporate the entire CARREFOUR trade mark with the mere addition of a hyphen “-” followed by, respectively, the term “client” for one Domain Name and the term “clients” for the other Domain Name, and that such additions do not prevent the confusing similarity between the Domain Names and the Complainant’s trade mark. The Complainant also contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the Domain Names being connected to the Complainant’s CARREFOUR trade mark.
The Complainant asserts that the Respondent has no rights in “carrefour” and that the Respondent is not commonly known by the Domain Names. The Complainant contends that the Respondent is not authorised by the Complainant to use its CARREFOUR trade mark. Furthermore, the Complainant contends that the Respondent has not, before the original filing of the Complaint, used or made preparations to use either of the Domain Names in relation to a bona fide offering of goods or services as the Domain Names trigger a security alert for malicious content. The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant contends that the Respondent has registered and used the Domain Names with full knowledge of the Complainant’s CARREFOUR trade mark and the Complainant refers to prior UDRP panels finding that the Complainant’s CARREFOUR trade mark is well-known. The Complainant submits that the Respondent acquired and is using the Domain Names to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier registered trade mark. The Complainant also points to a separate pending case under the Policy against the Respondent to conclude that there is a pattern of abusive domain name registrations. The Complainant concludes that the Domain Names have been registered and are being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met for each Domain Name, namely:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.
A. Identical or Confusingly SimilarIn light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in the CARREFOUR trade mark, which is reproduced in its entirety in the Domain Names.
The second point that has to be considered is whether the Domain Names are identical or confusingly similar to the CARREFOUR trade mark in which the Complainant has rights.
At the second level, the Domain Names incorporate the Complainant’s CARREFOUR trade mark in its entirety with the mere addition of a hyphen “-” followed by, respectively, the term “client” for one Domain Name and the term “clients” for the other Domain Name. The Panel finds that the mere addition of a hyphen “-” followed by, respectively, the term “client” for one Domain Name and the term “clients” for the other Domain Name does not prevent the finding of confusing similarity arising from the incorporation of the Complainant’s exact CARREFOUR trade mark in the Domain Names.
Then there is the addition of the gTLD “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Names are confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] 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) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark 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 trade mark or service mark at issue.”
Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Names.
The Complainant has stated that the Respondent has no rights in the Domain Names and that it has not licensed or otherwise authorised the Respondent to make any use of its CARREFOUR trade mark. There is no indication that the Respondent is commonly known by either of the Domain Names.
The Domain Names incorporates the Complainant’s CARREFOUR trade mark entirely, suggesting sponsorship or endorsement by the Complainant, and as such the risk of implied affiliation cannot constitute fair use. Moreover, the absence of use or rather the apparently malevolent underlying use of the Domain Names and associated websites, as suggested by the security warnings triggered when the Panel tried to access the websites associated with the Domain Names cannot be considered bona fide, legitimate, or fair.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
“(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark 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 trade mark 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 [the respondent’s] 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 circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Names were registered in bad faith.
The Domain Names reproduce the exact CARREFOUR trade mark of the Complainant and this cannot be a coincidence. The Complainant has provided ample evidence of the substantial renown of the CARREFOUR trade mark, so the fact that the Respondent decided to register the Domain Names reproducing this term strongly suggests that the Respondent had the Complainant’s CARREFOUR trade mark in mind and targeted it specifically.
This is even more likely given (i) the fact that the Respondent appears to be based in France where the Complainant is headquartered and where its renown is probably higher than anywhere else, (ii) the choice of generic terms appended to the Complainant’s CARREFOUR trade mark in the Domain Names, and (iii) the fact that the Domain Names were registered relatively recently and many years after the registration of the Complainant’s CARREFOUR trade mark.
Thus, the Panel finds that the Domain Names were registered in bad faith.
As for use of the Domain Names in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the websites associated with the Domain Names, the Panel is satisfied that the Domain Names are used in bad faith.
As the Panel was able to confirm, the websites associated with each Domain Name trigger a security warning. This type of malevolent use of the Domain Names can only be seen as use in bad faith of the Domain Names.
In any event, passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the renown of the Complainant’s CARREFOUR trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default.
Furthermore, the current use of the Domain Names constitutes a cybersecurity threat hanging over the Complainant and the Complainant’s customers or potential customers.
The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Names are used in bad faith.
As for the fact that another two cases under the Policy, Carrefour SA. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Ben Luis,WIPO Case No. D2021-2633 and Carrefour SA v. Privacy service provided by Withheld for Privacy ehf / Ben Luis,WIPO Case No. D2021-2670, were decided against the Respondent on October 5 and 7, 2021, and also targeted the Complainant’s CARREFOUR trade mark, the Panel finds that this is sufficient to constitute the beginning of a pattern of abusive domain name registrations on the part of the Respondent. This circumstance further supports the Panel’s finding that the Domain Names were registered and are used in bad faith.
Thus, the Panel finds that the Domain Names are being used in bad faith.
Accordingly, the Complainant has met its burden of showing that the Domain Names were registered and are being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names
Vincent Denoyelle
Sole Panelist
Date: October 29, 2021