The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Pan Shuai Lou of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 29, 2017. On November 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 4, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 4, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 in Chinese and English, and the proceedings commenced on December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on January 11, 2018. 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 French corporation in the food retail business and operates nearly 12,000 stores and e-commerce sites in more than 30 countries. In 2016, it generated total sales of EUR 103.7 billion. More than 53% of its sale is generated outside France. The Complainant established its business presence in China in 1995 and has many stores established within the country. The Complainant's CARREFOUR brand was launched in the United Arab Emirates ("UAE") in 1995, and currently it operates 23 hypermarkets, 44 supermarkets and has about 9,200 employees.
The Complainant owns registrations for the trade mark CARREFOUR in many countries around the world, and reputation therein. Amongst others, the Complainant owns a European Union Trade Mark Registration No. 008779498, registered on July 13, 2010, a UAE Trade Mark Registration No. 129484, registered on January 25, 2011, and an International Registration No. 1010661, registered on April 16, 2009.
The Complainant also by itself or its affiliates owns the domain names (registered on October 25, 1995), (registered on July 29, 2000) and (registered on November 1, 2000).
The disputed domain name was registered on July 20, 2017. It resolves to pay-per-click ("PPC") parking pages displaying commercial links.
A cease-and-desist letter was sent to the Respondent on August 24, 2017. The Respondent replied with an offer to sell the disputed domain name for USD 1200. The Complainant responded with a refusal to pay for the disputed domain name which derives its value from the Complainant's own trade mark. No further reply was received from the Respondent even though a reminder was sent. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant CARREFOUR trade mark. It reproduces the Complainant's trade mark, which previous panels in earlier UDRP cases have considered to be well known (see e.g. Carrefour v. Ali Fetouh, Fasateen,WIPO Case No. D2017-0089; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc.,WIPO Case No. D2015-0962; and Carrefour v. Yujinhua,WIPO Case No. D2013-2002).
Further, the disputed domain name adds the letters "uae" which form the common abbreviation for the United Arab Emirates. The geographic reference corresponds to one of the territories in which the Complainant operates, and this therefore increases the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name since it is not affiliated with the Complainant, and neither has it been authorized or licensed to use and register the CARREFOUR trade mark, or to seek the registration of any domain name incorporating the said trade mark. The Respondent is not known by the name "Carrefour" or the disputed domain name. The Respondent has no prior rights in the disputed domain name; the registration of the CARREFOUR trade mark by the Complainant long preceded the registration of the disputed domain name.
The disputed domain name is so confusingly similar to the Complainant's well-known CARREFOUR trade mark that it is not plausible that the Respondent was intending to develop a legitimate activity through the disputed domain name. The use of the disputed domain name to generate revenue through PPC parking pages does not constitute legitimate, noncommercial or fair use of the disputed domain name. Considering the exchange of correspondence between the Complainant and the Respondent, it appears that the only reason why the Respondent registered the disputed domain name was to attempt to sell it to the Complainant for valuable consideration in excess of the documented, out-of-pocket costs directly related to the domain name. The Respondent's configuration of an email server on the disputed domain name presents a high risk of phishing activities associated with the disputed domain name.
The disputed domain name was registered and is used in bad faith. It is not plausible that the Respondent was unaware of the Complainant when it registered the disputed domain name considering the fame of the CARREFOUR trade mark and the combination of the Complainant's trade mark with the initials for the United Arab Emirates, which is where the Complainant also operates. The Complainant and its local partner use the domain name to promote the Complainant's activities in the UAE. It is not plausible that the Respondent registered the disputed domain name which is closely similar to the disputed domain name, , without knowing of the Complainant and its trade mark. The use of a well-known trade mark to attract Internet users to a website for commercial gain constitutes bad faith use. The Respondent's offer to sell the disputed domain name in response to the cease-and-desist letter also shows the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that the language of the administrative proceeding shall be the language of the Registration Agreement "subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". Paragraph 10(c) of the Rules stipulates that "The Panel shall ensure that the administrative proceeding takes place with due expedition".
The Registration Agreement in this case is Chinese. The Complainant requested that English apply as the language of the proceeding. It submitted that the spirit of paragraph 11 is to ensure fairness between the parties, having consideration of their level of comfort with the language, the expenses that may be incurred, and the possibility of a delay if translations were required. The Complainant put forward these points in support of its request: (i) it has no knowledge of Chinese; (ii) the cost of translation into Chinese would be higher than the overall cost of the present proceeding; (iii) the disputed domain name comprises only Latin characters; (iv) the disputed domain name resolves to a website that displays PPC links in English; and (v) English is the primary language for international relations.
The Respondent did not comment on the language of the proceeding.
The Panel is of the view that it would be appropriate for English to be applied as the language of the proceeding. What stands out, in the Panel's view, is the fact the Complainant's cease-and-desist letter was in English and the Respondent replied in English. The latter's email read:
"Sorry for registering the domain which similar to your organization's domain name. But the registering of the domain was not out of malice. If you are interested, I will transfer the domain to you for S$1,200 USD. I look forward to hearing from you again!"
It is evident that the Respondent has a fairly good command of the English language, as seen even from the use of the more sophisticated phrase "not out of malice". Hence, apart from the above-mentioned points made by the Complainant, the Respondent is undoubtedly sufficiently fluent in English and would not be prejudiced by such decision by the Panel. The Respondent did not object to the Complainant's request for English to apply as the language of the proceeding. For the sake of ensuring expediency in the proceeding, the Panel determines that English will apply in this proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant has established it has rights in the mark CARREFOUR. This mark has been incorporated in its entirety in the disputed domain name and easily identifiable. The Top-Level Domain ("TLD") ".co" does not serve to remove the identity between the disputed domain name and the Complainant's trade mark since it is a technical requirement of domain names. It is a well-established principle that the TLD in a domain name in dispute is not a relevant factor for consideration. The registration of the disputed domain name containing the mark CARREFOUR and the addition of the generic, widely-used abbreviation for the United Arab Emirates, "uae", is especially confusing as Internet consumers would read the disputed domain name in totality as referring to the Complainant's Carrefour hypermarkets/supermarkets in the UAE. There would be an immediate association of the disputed domain name with the Complainant. The addition of the letters "uae" do not remove the confusing similarity with the Complainant's CARREFOUR trade mark, but in fact adds to the likelihood of confusion, since the Complainant also has operations in the UAE.
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Panel does not consider it necessary to discuss at length the issue of rights or legitimate interests of the Respondent. The Respondent disclaimed any rights or legitimate interests in the disputed domain name by its immediate willingness to release the disputed domain name to the Complainant, albeit for a fee. The Respondent did not, in its email response to the Complainant's cease-and-desist letter, claim to have rights in the CARREFOUR trade mark or to be known by the disputed domain name.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's CARREFOUR mark is well known and it is not at all plausible that the Respondent registered the disputed domain name without any knowledge of the Complainant and its trade mark, considering that the Complainant/its affiliate owns the domain name . There is no doubt in the Panel's mind that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, shall be evidence of the registration and the use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The Respondent chose to register a domain name which incorporates the well-known CARREFOUR trade mark. The Panel finds that the Respondent's choice of the disputed domain name reflects bad faith and an intention on the Respondent's part (i) to prevent the Complainant, the owner of the CARREFOUR trade mark, from reflecting the mark in a corresponding domain name and/or (ii) to attempt to attract, for commercial gain, Internet users to its on-line location, by creating a likelihood of confusion with the Complainant's CARREFOUR trade mark as to the source, sponsorship, affiliation or endorsement of the said on-line location. The disputed domain name is so obviously connected with the well-known CARREFOUR trade mark that its use (in this case for PPC income generation) suggests opportunistic bad faith. (See, e.g., Sanofi-Aventis v. Nevis Domains LLC,WIPO Case No. D2006-0303; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.)
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 the Complainant.
Francine Tan
Sole Panelist
Date: January 13, 2018
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