The Complainant is Carrefour S.A. of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc of Panama City, Panama / Gaudet Jose of Gourfaleur, 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 December 4, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2018, 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 the Complainant on December 5, 2018 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 December 6, 2018.
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 December 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on January 17, 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
The Complainant is an international retailer that operates nearly 12,300 stores and e-commerce sites in more than 30 countries. The Complainant welcomes 1.3 million customers a day around the world across its websites.
The Complainant owns numerous trademark registrations in France and other jurisdictions around the world, and in particular:
- European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed, designating goods and services in classes 9, 35 and 38;
- International trademark CARREFOUR No. 1010661, registered on April 16, 2009, designating services in class 35;
- International trademark CARREFOUR No. 563304, registered on November 6, 1990, duly renewed, designating inter alia, Benelux and covering goods and services in classes 1 to 42.
In addition, the Complainant and affiliates own, among others, the following domain name:
- registered on October 25, 1995, duly renewed;
The Respondents are a company based in Panama which seems to be a registrar, and a French individual, Jose Gaudet. The disputed domain name was registered on May 12, 2018.
The disputed domain name resolves to an inactive website, however it appears that an email server has been configured at the disputed domain name. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces identically the CARREFOUR trademark in which the Complainant has rights.
The Complainant further submits that the addition of the French terms “mon compte”, meaning in English language “my account”, would not prevent the risk of confusion, and that the extension “.co” should not to be taken into consideration.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not commonly known by the disputed domain name or the name “Carrefour”. The Complainant submits that the Respondent is not affiliated with the Complainant nor authorized or licensed by the Complainant to use its trademarks.
Besides, the Complainant contends that the Respondent does not make any use of the disputed domain name but that email servers have been configured on the disputed domain name, which is a potential risk of the Respondent intention to use it to send fraudulent emails.
(iii) The Complainant contends that the disputed domain name was registered in bad faith. The Complainant submits that its trademarks are well known throughout the world and the Respondent knew or should have known the existence of the Complainant’s rights. The Complainant also contends that the disputed domain name is “used” in bad faith, and relies its argumentation on the doctrine of bad faith passive holding as developed in Telstra (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) The domain name is identical or confusingly similar to a trademark 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.
These elements will be examined in turn below. A. Identical or Confusingly Similar
The relevant part of the disputed domain name is “moncompte-carrefour” as the ccTLD extension “.co” is not relevant in determining confusing similarity and has to be analyzed as without a legal significance.
The Complainant provided evidence that it has prior rights in CARREFOUR trademarks, well before the Respondent registered the disputed domain name. This satisfies the Panel that the Complainant has registered trademark rights in the CARREFOUR marks for the purposes of the Policy. The trademark is fully reproduced in the disputed domain name in its entirety.
The addition of the term “mon compte” meaning “my account” in English, does not prevent a finding of confusing similarity. According to Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the addition of other terms to a trademark that is recognizable within the disputed domain name would not prevent a risk of confusion, as “mon compte” is a descriptive term and the main distinctive element remains “carrefour”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark CARREFOUR in which the Complainant has prior rights, and the requirements under paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use its trademarks and that there is no business relationship existing between the Complainant and the Respondent.
It appears the Respondent is not commonly known by the disputed domain name or the name “Carrefour” and the disputed domain name is not resolving to any active website.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP Policy sets out examples of circumstances that will be considered by an administrative panel to be evidence of bad faith registration and use of a domain name, as follows:
(i) circumstances indicating that the domain name was registered or acquired 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 domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.
It has been proved to the Panel’s satisfaction that the Complainant’s CARREFOUR trademark is well known in France and all around the world, and the Panel agrees with the Complainant that the Respondent could not reasonably ignore the Complainant’s trademarks and activities.
Previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well-known trademark that its use by someone, with no connection to the trademark, suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre,WIPO Case No. D2017-0969.
Besides, in accordance with the evidence submitted with the Complainant, an email server has been configured on the disputed domain name. The Panel concurs with the Complainant that the connection of the disputed domain name with an email server configuration enhances a likelihood of confusion and presents a risk that the Respondent is engaged in a phishing scheme. Indeed, “mon compte” is an expression commonly used in France, to designate a space dedicated to the clients of a company. The association of such terms with the Complainant’s trademark will create a confusion that the disputed domain name would be perceived, by the public or the customers, as referring to the customer services of the Complainant.
As established in previous UDRP decisions, such behavior is manifestly considered evidence of bad faith, since a phishing scheme can be detrimental not only to the company, whose goodwill has been taken advantage of, but also to the customers who may entrust what appears to be one of the Complainant’ services with sensitive information such as credit card details. See, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533 and Carrefour v. Eliza Maria,WIPO Case No. D2017-2520.
Finally, the Respondent has been very recently condemned by the UDRP panel to transfer a similar domain name to the Complainant, (Carrefour v. WhoisGuard, Inc. WhoisGuard Protected /Gaudet Jose,WIPO Case No. D2018-1555).
Accordingly, this Panel finds that Respondent’s bad faith and his intention to take undue advantage of the Complainant’s trademark rights has been demonstrated.
In the absence of a response, the Respondent offered no information on the intention of such use.
For the above reasons, the Panel finds the Respondent registered the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) 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.
Isabelle Leroux
Sole Panelist
Date: January 31, 2019
Full & Egal Universal Law Academy