Complainant is Carrefour SA., France, represented by IP Twins, France.
Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Renato Siqueira, Brazil.
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 disputed domain names. On September 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 6, 2021 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 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2021.
The Center appointed Frederick M. Abbott 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 BackgroundComplainant is owner of numerous registrations in various jurisdictions throughout the world for the word, and device/design, trademark CARREFOUR. These include (without limitation) international registration through the Madrid System, registration number 351147, registration dated October 2, 1968, in the international classes (ICs) 1 through 34, covering, inter alia, various food products and textiles; registration number 353849, registration dated February 28, 1969, in ICs 35 through 42, covering, inter alia, advertising and business services, and transport and storage, and; (word and device, CARREFOUR-formative), registration number 1554566, registration dated May 15, 2020, in ICs 5, 29, 30, 31, 32, 33, and 35, covering, inter alia, food products (designating Brazil).
Complainant is a major multinational retail store operator offering for sale a variety of goods, including food products, with more than 12,000 stores in over 30 countries (including a substantial presence in Brazil), employing approximately 385,000 individuals. Complainant also provides travel, banking, insurance, and ticketing services. Complainant is registrant of numerous domain names incorporating its CARREFOUR trademark, including “www.carrefour.com”, and it maintains an online commercial presence.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, Respondent registered the disputed domain names on July 14, 2021.
Complainant has provided evidence that Respondent directed the disputed domain name “www.carrefoursolucoes.site” to a website that is marked as potentially harmful by website security services.1 The disputed domain name “www.cartaocarrefour.site” resolves to a blank webpage. The disputed domain name “www.faturacarrefour.site” does not connect with a webpage. There is no evidence before the Panel of other use by Respondent of the disputed domain names.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions A. ComplainantComplainant alleges that it owns rights in the trademark CARREFOUR and that the disputed domain names are confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent does not own rights in the CARREFOUR trademark, and has not been commonly known by the disputed domain names; (2) Complainant has not licensed or authorized Respondent to use its trademark in the disputed domain names; (3) Respondent has not used or made bona fide preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and; (4) because Complainant’s trademark was registered long prior to Respondent’s registration of the disputed domain names, Respondent bears the burden of establishing rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) Complainant’s trademark is well known and Respondent must have been aware of Complainant’s rights in its trademark when it registered the disputed domain names; (2) Respondent’s choice of the disputed domain names could not have been accidental; (3) Respondent likely chose the disputed domain names to create Internet user confusion and to direct Internet users to Respondent’s websites; (4) Complainant’s registration of its trademark predates Respondent’s registration of the disputed domain names, and; (5) because Respondent registered several disputed domain names incorporating Complainant’s trademark, Respondent has engaged in a pattern evidencing abuse.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsIt is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to the privacy service engaged by Respondent was successfully completed. Courier delivery to Respondent could not be successfully initiated because the physical address in Respondent’s record of registration was materially incomplete. There is no indication in the case file that the email transmissions to Respondent were not completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly SimilarComplainant has provided substantial evidence of rights in the trademark CARREFOUR, including by registration under the Madrid System, and by use in commerce in a substantial number of countries, including Brazil (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant owns rights in the trademark CARREFOUR.
The disputed domain names each directly and fully incorporates Complainant’s distinctive and well-known trademark.2 The Portuguese term “solucoes” is appended at the end of Complainant’s trademark in one of the disputed domain names. That term has the meaning “solutions” in Portuguese. The Portuguese term “cartao” precedes Complainant’s trademark in one of the disputed domain names. That term has the meaning “card” in Portuguese. The Portuguese term “fatura” precedes Complainant’s trademark in one of the disputed domain names. That term has the meaning “invoice” in Portuguese.3 From the standpoint of the Policy, Respondent’s recognizable incorporation of Complainant’s distinctive trademark in the disputed domain names is sufficient to establish a likelihood of confusion. It is not necessary to consider the additional terms. Nonetheless, the Portuguese terms would likely be associated by Internet users with Complainant’s business that includes a wide range of retail products as well as banking and financial services and thus are relevant for consideration under the later elements. The Panel determines that the disputed domain names are each confusingly similar to Complainant’s trademark.
Complainant has established that it owns rights in the trademark CARREFOUR and that the disputed domain names are each confusingly similar to that trademark.
B. Rights or Legitimate InterestsComplainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain names to direct Internet users to potentially dangerous and inoperative webpages does not establish rights or legitimate interests in favor of Respondent in any of the disputed domain names. Moreover, each of the disputed domain names consists of Complainant’s trademark in its entirety, plus a Portuguese term that may be considered descriptive of the Complainant’s services, thereby carrying a risk of implied affiliation to Complainant. Respondent has not suggested any rationale (plausible or not) for use of Complainant’s trademark in the disputed domain names. In light of the prima facie implausibility of a legitimate justifying rationale, the Panel declines to suggest or find any legitimate noncommercial or fair use purpose that might establish rights or legitimate interests.
Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests in the disputed domain names.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad FaithIn order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states 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”. These include that, “(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 (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 online 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”.
Respondent registered the disputed domain names that each incorporate Complainant’s distinctive and well‑known trademark. It is highly unlikely that Respondent inadvertently or accidentally decided upon Complainant’s trademark term.
In the circumstances of this proceeding, the fact that Respondent on the same day registered three disputed domain names directly incorporating Complainant’s distinctive and well-known trademark is sufficient to establish a pattern of conduct evidencing use of the disputed domain names in bad faith. This meets the criteria for a finding of registration and use in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Although not specifically argued by Complainant in this proceeding (although Complainant has made this argument in a substantially contemporaneous proceeding decided by this Panel, Carrefour SA v. Georgy Simonov,WIPO Case No. D2021-2490), the disputed domain names incorporate terms that would reasonably be associated by Internet users with Complainant, its trademark, and the goods and services Complainant provides. As such, if those disputed domain names are used as the sender’s domain in email addresses, sent emails would likely appear to recipients as originating from Complainant. In light of the proliferation of schemes using confusingly similar email addresses to perpetrate fraudulent activities, the Panel does not consider it necessary or advisable to address such conduct only after the fact. The harm to the defrauded party(ies) may well be irreversible. In cases such as this one, where multiple disputed domain names incorporating a distinctive and well-known trademark have been registered by a third party without any plausible legitimate explanation for doing so, the Panel considers it appropriate to make a finding of bad faith registration and use within the meaning of paragraph (b)(iv) of the Policy as a justifiable precautionary measure to protect the public.
In the totality of the circumstances, the Panel finds that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraphs 4(b)(ii) & (iv) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
Frederick M. Abbott
Sole Panelist
Date: October 27, 2021
1 The Panel assumes that Complainant did not attempt to click through to the site identified as potentially dangerous. The Panel did not.
2 In the circumstances of this proceeding the top level domain “.site” is not material to the Panel’s determination on the issue of confusing similarity.
3 Translation initially provided by Complainant. Confirmed by Panel with Google Translate, visited October 27, 2021.