Complainant is Carrefour, France, represented by Dreyfus & associés, France.
Respondent is WhoisGuard, Inc., WhoisGuard Protected / Mamadou Paulo, France. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 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 Complainant on August 19, 2019, 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 August 19, 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2019.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on September 26, 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
Complainant, Carrefour, was founded in 1958. It has become a global leader in food retail with its headquarters in France. It has acquired considerable goodwill and renown worldwide, in connection with a wide range of services, including supermarkets and banking and insurance services.
Carrefour operates more than 12,000 stores and e-commerce sites in more than 30 countries, employs more than 360000 people worldwide and generated EUR 84.91 billion sales incl. VAT under its banners in 2018.
Every day, Carrefour welcomes around 13 million customers around the world. It was a pioneer in countries such as Brazil in 1975 and China in 1995.
The Group operates in three major markets: Europe, Latin America and Asia.
As a banking subsidiary of the Carrefour group, Carrefour Banque has been offering a wide range of accessible and efficient products for more than 30 years, adapted to the needs of customers and consumers: PASS MasterCard, current account, revolving credit, personal loan, credit redemption, savings, auto and home insurance, complementary health, etc.
In 2018, Carrefour ranked amongst the top 10 French trademarks in the world, according to BrandZ Top 50 Most Valuable French Brands Report.
Complainant owns CARREFOUR and BANQUE CARREFOUR trademark registrations around the world.
Complainant is in particular the owner of the following Trademark Registrations:
- International trademark CARREFOUR No. 563304, registered on November 6, 1990, duly renewed, designating, inter alia, Benelux, Switzerland, Germany, Algeria, Egypt, Croatia, Hungary, Portugal, Romania, Slovenia, Slovakia, Ukraine, Russian Federation, and covering goods and services in all classes, from 1 to 42;
- International trademark CARREFOUR (in Cyrillic characters) No. 714916, registered on March 15, 1999, duly renewed, designating Russian Federation, and covering goods and services in classes 3, 9, 11, 16, 20, 25, 28, 29, 30, 31, 32, 33, 42;
- French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, and covering services in classes 35, 36, 37, 38, 39, 40, 41, 42;
- European Union trademark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010 and covering services in class 35;
- European Union trademark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38;
- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed and covering services in class 36;
Complainant explains that it operates, among others, domain names reflecting its trademarks in order to promote its services:
- registered on June 23, 2005;
- registered on October 7, 2009.
It also relies on the domain name registered on October 25, 1995.
The disputed domain name is confusingly similar to Complainant’s trademark CARREFOUR and BANQUE CARREFOUR.
The disputed domain name was created on January 7, 2019, and was resolving to a log in page in Russian which was named “Way Way” related to online forum selling various products including drugs.
On January 11, 2019, Complainant sent a notification via email to the Registrar requesting the deactivation of the disputed domain name, without success. 5. Parties’ Contentions A. Complainant
Complainant submits that its trademarks CARREFOUR and BANQUE CARREFOUR enjoy a worldwide reputation. Identical or confusingly similar
The disputed domain name is confusingly similar to Complainant’s trademark CARREFOUR and BANQUE CARREFOUR.
Indeed, the disputed domain name reproduces Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR in their entirety.
Complainant’s trademark CARREFOUR has been considered to be “well-known” or “famous” by numerous previous panels (Carrefour v. Jose Gaudet,WIPO Case No. D2018-2864; Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook,WIPO Case No. D2014-1425, Carrefour v. Yujinhua,WIPO Case No. D2014-0257; Carrefour v. Karin Krueger,WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre;WIPO Case No. D2011-2248; Carrefour v. groupe Carrefour;WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067; Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586; Carrefour v. Registration Private, Domains by Proxy LLC / Nisar Ahmad Zafar,WIPO Case No. D2016-2506).
In any event, numerous WIPO UDRP decisions have established that adding a generic and descriptive term to the Complainant mark doesn’t influence the similarity between a trademark and a domain name (Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739). The disputed domain name also imitates the trademark BANQUE CARREFOUR by inversing its sequence. This inversion does not significantly affect the appearance or pronunciation of the domain name. This practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainant’s trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar,WIPO Case No. D2011-0692; Gervais Danone of Paris v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050). Moreover, Panels have come to the conclusion that hyphenation in domain names is “insufficient to distinguish the Respondent’s domain names from Complainant’s mark because the dominant portion of each domain name is the Complainant’s [trademark]”. Hence, paragraph 4(a)(i) of the Policy is satisfied (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768, and TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER,WIPO Case No. D2012-2001).
The Panel shall ignore the country code Top-Level Domain (“ccTLD”) which in this case is “.cc”. It is viewed as a standard registration requirement.
Accordingly, the disputed domain name is confusingly similar to Complainant’s trademark. Therefore, Internet users might have surely been misled due to the reproduction and imitation of Complainant’s trademarks. For all of the above-mentioned reasons, it clearly appears that the disputed domain name is confusingly similar to the trademarks CARREFOUR and BANQUE CARREFOUR and in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled. Absence of legitimate right or interest
Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks.
Furthermore, Respondent cannot claim prior rights or legitimate interests in the domain name as the CARREFOUR and BANQUE CARREFOUR trademarks precede the registration of the disputed domain name for years.
Respondent is not commonly known by the disputed domain name or the name “CARREFOUR” or “BANQUE CARREFOUR”, in accordance with paragraph 4(c)(ii) of the Policy.
There is simply no evidence that Respondent may be commonly known by the names “CARREFOUR” or “BANQUE CARREFOUR”.
Respondent cannot assert that, before any notice of this dispute, he 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, in accordance with paragraph 4(c)(i) of the Policy. As described above, the disputed domain name is not resolving.
The webpages have changed several times. Initially, the disputed domain name resolved towards the page of an Italian restaurant. Then, the page has moved from ‘forbidden access’ to an ‘error page’. The disputed domain name currently resolves towards a page in Russian which is named WAYAWAY and is related to an online Forum in Russian which not only includes various topics of discussions but also offers a way to buy several items, including fraudulent items such as drugs.
Users wishing to sell goods on the forum must pay a mandatory fee. The online Forum appears to be a gathering place for Russian sellers of various products, including fraudulent drugs, such as amphetamines.
Hence, as a matter of fact, it cannot be inferred that Respondent is making a legitimate noncommercial or fair use of disputed domain name (Credit Industriel et Commercial S.A. v. XUBO, WIPO Case No. D2006-1268 and Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste,WIPO Case No. D2009-1529).
Therefore, to the best of Complainant’s knowledge, it has never been used for any legitimate purpose. In this regard, the disputed domain name incorporates the Complainant’s well-known trademarks CARREFOUR and BANQUE CARREFOUR and so Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the domain name .
Also, Respondent appears to be a cyber-squatter as he has been involved before in several other UDRP proceedings concerning domain names which replicated Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR. This is an additional proof that Respondent lacks rights and legitimate interests in the disputed domain name (Carrefour v. WhoisGuard, Inc. / Mamadou Paulo, WIPO Case No. D2019-0815 and Carrefour v. WhoisGuard, Inc./ Mamadou Paulo,WIPO Case No. D2019-0758)
For all of the above-cited reasons, it is undoubtedly established that Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. Bad faith registration and use
Given the reputation of the CARREFOUR and BANQUE CARREFOUR trademarks, registration in bad faith can be inferred.
Bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name.
Complainant’s CARREFOUR trademark enjoys considerable goodwill and renown throughout the world. In this regard, several UDRP Panels have previously acknowledged its worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the said trademark. See for instance, Carrefour v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0769.
Bad faith can also be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494, Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
Complainant’s trademark rights significantly predate the registration date of the disputed domain name, which has been registered in 2019.
Prior UDRP panels deciding under the Policy have held that knowledge of a corresponding trademark at the time of the registration of a domain name is strong evidence of bad faith (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270and Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464;WIPO Case No. D2008-0287, Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287, and NBC Universal Inc. v. S, WIPO Case No. D2007-0077).
Respondent could not have ignored the existence of the trademarks CARREFOUR and BANQUE CARREFOUR since he has already been involved in several other UDRP proceedings concerning domain names which replicated Complainant’s trademarks (Carrefour v. WhoisGuard, Inc. / Mamadou Paulo, WIPO Case No. D2019-0815 and Carrefour v. WhoisGuard, Inc. / Mamadou Paulo, WIPO Case No. D2019-0758). The panels held in these cases that the registration of these domain names amounted to abusive domain name registration.
Finally, Complainant submits that given Complainant’s goodwill and renown, and the nature of the disputed domain name, Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of Complainant’s goodwill and reputation, which clearly constitutes bad faith.
It is submitted that by using the disputed domain name, Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.
The webpages have changed several times. Initially, the domain name resolved towards the page of an Italian restaurant. Then, the page has moved from ‘forbidden access’ to an ‘error page’.
The disputed domain name currently resolves towards a page in Russian which is named WAYAWAY and is related to an online Forum in Russian which not only includes various topics of discussions but also offers a way to buy several items, including fraudulent items such as drugs.
Users wishing to sell goods on the forum must pay a mandatory fee. As the disputed domain name is confusingly similar to Complainant’s trademark, previous UDRP Panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765; E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
It is more likely than not, that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainants’ trademark rights, through the creation of initial interest of confusion.
In the present case, given Complainant’s renown and goodwill worldwide and the nature of the disputed domain name itself while reproducing/imitating Complainant’s famous CARREFOUR and BANQUE CARREFOUR trademarks there simply cannot be any “actual or contemplated good faith use” of the disputed domain name by Respondent or any third party, as any use would result in misleading diversion and unfairly taking advantage of Complainant’s rights.
All aforementioned circumstances confirm that the disputed domain name is used in bad faith. Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has submitted evidence of its prior registered CARREFOUR and BANQUE CARREFOUR trademarks in France, in the European Union and as an international registration.
The disputed domain name is composed with the CARREFOUR and BANQUE CARREFOUR trademarks.
It incorporates the CARREFOUR trademark and only reverses the terms of the BANQUE CARREFOUR trademark.
The Panel shall disregard the extension “.cc”, which has a mere technical function.
The Panel finds that the disputed domain name is confusingly similar to the Complainant CARREFOUR and BANQUE CARREFOUR trademarks.
The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 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.
Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name .
Respondent is domiciled in France, where Complainant is also domiciled and has its headquarters.
It is not known under the disputed domain name and has not been licensed or authorized to use the CARREFOUR and BANQUE CARREFOUR trademarks or to register the disputed domain name>.
There is no evidence in the case file, of the initial use of the disputed domain name to resolve to a website promoting a restaurant.
On January 18, 2019, the disputed domain name resolved to a page “Forbidden – You don’t have permission to access”. On March 15, 2019, it resolved to a page “Error” and on May 2, 2019, it resolved to an online Forum that appears to be a gathering place for Russian sellers of various products, including fraudulent drugs, such a amphetamines.
Respondent is using the disputed domain name, in an illegitimate, commercial and unfair manner.
In the circumstances of this case, the Panel finds that Complainants hasestablished a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which Respondent has not rebutted. The conditions of paragraph 4(a)(ii) of the Policy have therefore been satisfied. 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 the respondent has registered or the respondent has 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 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 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
(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 your 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.”
Given the well-known character of the CARREFOUR and BANQUE CARREFOUR trademarks on a worldwide basis, Respondent, who is domiciled in France, was well aware of the rights of Complainant on its trademarks when it registered the disputed domain name.
The Respondent has been involved in the both UDRP cases here above cited, concerning the Complainant and its CARREFOUR and CARREFOUR BANQUE trademarks and the disputed domain names and . In these cases, it deactivated the respective disputed domain names further to the filing of the Complaint which was filed in April 2019.
The Panel finds that Respondent has engaged in a pattern of conduct that consists of registering domain names composed with the CARREFOUR and CARREFOUR BANQUE trademarks and using them for commercial gain.
Therefore, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name is used to resolve to a Forum in Russian, through which one can buy amphetamines and drugs. This is obviously illegitimate.
The Respondent has not denied the assertions made by Complainant in this proceeding.
On the basis of the evidence presented, the Panel finds that Complainant has established a prima facie case and that Respondent registered and is using the disputed domain name in bad faith.
For all the above reasons, the Panel is of the opinion that the circumstances surrounding the registration and use of disputed domain name satisfy the requirement of paragraph (4)(a)(iii) and that the disputed domain name is registered and is being used in bad faith by the Respondent. 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 be transferred to Complainant.
Marie-Emmanuelle Haas
Sole Panelist
Date: October 10, 2019
Full & Egal Universal Law Academy