The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Manager Limited Domain of London, United Kingdom of Great Britain and Northern Ireland / Maria Di Blasi of Salzburg, Austria. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Internet Services GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2018. On the same day, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 7, 2018, the Registry 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 May 11, 2018, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on July 5, 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainant is a multinational company and food retailer, based in Boulogne-Billancourt, France. It states that it operates nearly 12,000 stores across Europe, Asia, and Latin America and has e-commerce sites in more than 30 countries. The Complainant has more than 380,000 staff and generated total sales of EUR 103.7 billion in 2016. Approximately 13 million customers visit its stores or websites each day. Over 50% of the Complainant’s sales are made outside France.
The Complainant has a large number of registered trade marks for CARREFOUR, including the following:
- European Union Trade Mark No. 005178371 for CARREFOUR, registered on August 30, 2007, in classes 9, 35, and 38; and
- European UnionTrade Mark No. 008779498 for CARREFOUR, registered on July 13, 2010, in class 35.
The Complainant and its affiliates own a large number of domain names incorporating its CARREFOUR trade mark, which resolve to websites offering Internet users information about its products and services, including , , and .
The disputed domain name was registered on January 20, 2017. It resolves to an inactive website displaying the message “Ce site est inaccessible” (“This site can’t be reached”).
On September 25, 2017, after the Complainant became aware of the disputed domain name, the representatives for the Complainant sent a cease and desist letter to the privacy shield service used by the underlying registrant seeking a transfer of the disputed domain name to the Complainant. On September 25, 2017, the Complainant’s representatives were contacted by a domain name broker, on behalf of the underlying registrant, who offered to sell the disputed domain name to the Complainant for the tax-inclusive sum of EUR 180. This offer was rejected by the representatives for the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant refers to its trade mark registrations for CARREFOUR, including the European Union trade mark registrations details of which are set out above, and says that the repute of its marks extends worldwide. The disputed domain name is identical, or at least, confusingly similar to its CARREFOUR trade mark and reproduces it in its entirety.
The incorporation of a trade mark in its entirety into a domain name may be sufficient to establish that such a domain name is identical or confusingly similar to that mark. The country code Top-Level Domain (“ccTLD”) “.eu” is to be disregarded in any assessment of the degree of confusing similarity between the disputed domain name and the Complainant’s CARREFOUR trade mark. Accordingly, the disputed domain name varies from the mark only through the addition of a hyphen and the geographic term “romagna”.
The inclusion of a hyphen within the disputed domain name does not serve to remove the likelihood of confusion. Moreover, the inclusion within the disputed domain name of “romagna”, which is an Italian historical region, heightens the likelihood of confusion, since Internet users are likely to believe that the word relates to the Complainant’s presence in Italy, specifically in the historical region of Romagna. Many decisions under the Uniform Dispute Resolution Policy (“UDRP”) have held that a domain name consisting of a trade mark and a geographical term does not serve to distinguish the domain name from the trade mark at issue; see, for example, L’oreal v. Liao quanyong,WIPO Case No. D2007-1552 (relating to ).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Registration of its CARREFOUR trade mark preceded registration of the disputed domain name by some years. Given the renown of the Complainant’s trade mark, and the similarity between the mark and the disputed domain name, it is inconceivable that the Respondent intended to conduct legitimate activity via the disputed domain name. The Respondent is not commonly known by the name “Carrefour” and is neither affiliated with the Complainant nor authorised or licensed by it to use its CARREFOUR trade mark, nor to register a domain name incorporating it. Furthermore, the Respondent has not used, or made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in that the disputed domain name resolves to an inactive webpage.
Lastly, the Complainant contends that the registration and/or use of the disputed domain name has been in bad faith. So far as bad faith registration is concerned, it is implausible that the Respondent was unaware of the Complainant when she registered the disputed domain name. UDRP panels have held that bad faith can be found where a respondent “knew or should have known” of a complainant’s trade mark rights and registered a domain name in which it had no rights or legitimate interest.
In the light of the global fame of the CARREFOUR trade mark, the Respondent’s use of it, in conjunction with the word “romagna”, proves that the Respondent was aware of the Complainant’s trade mark. Bad faith has been found under the UDRP where a domain name is so closely connected with a well-known trade mark that its very use by someone with no connection to the trade mark suggests opportunistic bad faith; see, for example, LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494. It is very unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trade mark as at the date of registration. An online search would have revealed the existence of the Complainant and its trade mark. The Respondent’s failure to undertake basic searches prior to registering the disputed domain name, is a contributory factor in its bad faith.
The disputed domain name is also being used in bad faith. Previous decisions under the UDRP have found that where a domain name is confusingly similar to a complainant’s trade mark, as is the case here, this will inevitably lead to the diversion of Internet users away from a complainant’s website to the respondent’s website.
Whilst the disputed domain name resolves to an inactive webpage, passive holding of a domain name can amount to bad faith use when consideration is given to a respondent’s behaviour; see the UDRP decision of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Respondent’s passive holding of the disputed domain name meets the requirements of bad faith for the following reasons:
i) the Complainant’s trade mark has a strong reputation and is widely known;
ii) the Respondent has failed to provide any evidence of actual or contemplated good faith use by it, of the disputed domain name;
iii) Respondent has taken active steps to conceal its identity, by operating under a name which is not a registered business name; and
iii) the Respondent had actively provided and failed to correct false contact details, in breach of its registration agreement. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, the Complainant is required to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty”. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has established that it is the owner of European Union trade mark registrations for CARREFOUR. Such trade mark registrations are among the rights recognised and established by Community law; see Article 10(1) of the Regulation.
The disputed domain name incorporates the Complainant’s CARREFOUR trade mark in its entirety. It is established by many UDRP decisions1 that the ccTLD suffix, (“.eu” in the case of the disputed domain name), should be ignored when assessing confusing similarity, because it is a technical requirement of registration. Where a domain name wholly incorporates a recognised trade mark, this may often be sufficient to establish that it is confusingly similar. Neither the addition of the hyphen, nor the geographical term “romagna” serves to prevent a finding of confusing similarity with the Complainant’s trade mark.
The Panel therefore finds that the disputed domain name is confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and that the Complainant has therefore satisfied the requirements of Paragraph B(11)(d)(1)(i) of the ADR Rules. B. Rights or Legitimate Interests
Under Paragraph B(11)(e) of the ADR Rules, provides that the following circumstances, shall, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the respondent is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The first circumstance set out above is inapplicable; use of the disputed domain name to resolve to a webpage which simply states that a website cannot be reached plainly does not constitute use of the domain name in respect of an offer of goods and services. The second circumstance is similarly inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name.
So far as the third circumstance is concerned, section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides guidance on the question of fair use explaining that “Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner” and that “…certain geographic terms (e.g., , or ), or terms with an “inherent Internet connotation” are seen as tending to suggest sponsorship or endorsement by the trademark owner”. The coupling of the Complainant’s trade mark with the geographic term “romagna” clearly suggests sponsorship or endorsement of the disputed domain name by the Complainant and does not comprise legitimate and non-commercial or fair use of the disputed domain name.
In fact, as the Complainant has said, the inclusion of the term “romagna” will heighten the likelihood of confusion with the Complainant’s trademark. Given the extensive geographical spread of the Complainant’s business, many Internet users will perceive the disputed domain name as referring to the Complainant’s commercial operations in the Romagna region of Italy.
As was found in FNAC Darty Participations et Services and Establissements Darty et Fils v. Paul Romain,WIPO Case No. DEU2018-0003, once a complainant has made out a prima facie case, in respect of this element of the ADR Rules, the burden of production shifts to the respondent. No response having been served, the Respondent has therefore failed to discharge its burden.
The Panel accordingly finds that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules. C. Registered or Used in Bad Faith
Under Article 21(1) of the Regulation and Paragraph of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the Disputed Domain Name no further discussion on bad faith registration or use is necessary. However, the Panel will briefly address this third element.
Section 3.3 of the WIPO Overview 3.0 explains that non-use of a domain name, including a blank or “coming soon” page does not prevent a finding of bad faith under the doctrine of passive holding. Among the factors typically considered by panels to be relevant are “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Each of these factors is, to at least some extent, applicable to the circumstances of the Respondent’s bad faith. See also, Tüpraş Türkiye Petrol Rafinerileri A.S. v. Nadir All / Allnado,WIPO Case No. DEU2017-0006 where a finding of bad faith was made for similar reasons.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied. 7. Decision
The Complainant seeks the transfer to it of the disputed domain name. The head office of the Complainant is located in France, within the European Union and it therefore satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002. Accordingly, for the foregoing reasons and in accordance with Paragraph B (11) of the ADR Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: August 2, 2018
1Where there are substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to decisions under the UDRP.
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