WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. WhoisGuard, Inc. / Mamadou Paulo

Case No. D2019-0758

1. The Parties

The Complainant is Carrefour of Massy, France, represented by Dreyfus & associés, France.

The Respondent is WhoisGuard, Inc. of Panama / Mamadou Paulo of Saint Agnan, France.

2. The Domain Name and Registrar

The disputed domain name <banque-carrefour.online> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 April 4, 2019 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 April 8, 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2019.

The Center appointed Fabrice Bircker as the sole panelist in this matter on May 9, 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 a French company operating a retail business founded more than 60 years ago, currently counting more than 12,300 stores and e-commerce sites in more than 30 countries and employing more than 380,000 people worldwide.

In 2017, the Complainant generated EUR 88.24 billion in sales.

The Complainant serves more than 13 million customers on a daily basis.

The Complainant also offers banking and insurance services.

The Complainant is in particular the owner of the following CARREFOUR and BANQUE CARREFOUR trademarks registrations:

- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed and covering services in class 36,

- 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, 43, 44, and 45,

- 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.

In addition, the Complainant operates, among others, the following domain names which reflect its trademarks:

- <carrefour.com> registered on October 25, 1995;
- <carrefour.fr> registered on June 23, 2005;
- <carrefour-banque.fr> registered on October 7, 2009.

The disputed domain name has been registered on October 16, 2018.

At the time of drafting the decision, the disputed domain name redirects toward a blank page.

According to the record of the case, the disputed domain name previously resolved to a website promoting a restaurant located in Marseille (France) and then to an error page.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar:

The Complainant contends that the disputed domain name is confusingly similar to its CARREFOUR and BANQUE CARREFOUR trademarks because it reproduces them in their entirety.

The Complainant also invokes the fact that its CARREFOUR trademark has been considered as well-know or famous in many UDRP decisions.

The Complainant adds that the mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.online” is irrelevant in determining confusing similarity between the mark and the disputed domain name because it is a merely technical requirement of a domain name.

Rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In this respect, the Complainant notably asserts that the Respondent is neither affiliated with it, nor has been authorized by it to seek registration of any domain name incorporating its trademarks.

Furthermore, the Complainant asserts that the Respondent cannot claim prior rights or legitimate interests in the disputed domain name because the CARREFOUR and BANQUE CARREFOUR trademarks precede the registration of the disputed domain name for years.

Besides, the Complainant adds that the Respondent is not commonly known by the disputed domain name or the names “Carrefour” and/or “Banque Carrefour”.

The Complainant also contends that the Respondent cannot assert that, before any notice of this dispute, it 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, because the websites towards which the disputed domain name resolved have changed several times.

In addition, the Complainant considers that the disputed domain name is so confusingly similar to its trademarks that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

The Complainant also indicates that the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue because the disputed domain name notably resolved towards the page promoting a restaurant.

Finally, the Complainant contends that taken into account its worldwide renown and the nature of the disputed domain name (which is confusingly similar to its trademarks), it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

Registration and use in bad faith

According to the Complainant, it is implausible that the Respondent was unaware of it when it registered the disputed domain name notably because it is well-known throughout the world. In addition, the Complainant points out that its headquarter is located in the country where the Respondent is domiciled.

Amongst its numerous arguments, the Complainant also contends that the composition of the disputed domain name (which reproduces not one but two of its trademarks) establishes that the Respondent has registered it in bad faith.

According to the Complainant, bad faith registration can also be inferred from the fact that the Respondent failed to provide correct contact details in the WhoIs database.

Besides, the Complainant contends that the disputed domain name is used in bad faith because it has been resolving towards several random pages (the page of a restaurant, error pages and a blank page) while the composition of the disputed domain name is related to the Complainant’s trademark CARREFOUR and its banking services. As a consequence, the Respondent’s primary motive in registering and using the disputed domain name was to take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion.

The Complainant adds that in view of its notoriety, no possible use in good faith of the disputed domain name is conceivable.

In addition, the Complainant contends that a further indication of the Respondent’s bad faith is the fact that an email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is intending to or has engaged in a phishing or some other type of illegal activity.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the 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.

On the basis of the arguments and evidence of this case, the Panel concludes as follows:

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Annex 5 to the Complaint shows trademarks registrations for BANQUE CARREFOUR and CARREFOUR in the name of the Complainant, namely:

- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008 and duly renewed,

- French trademark CARREFOUR No. 1487274, registered on September 2, 1988 and duly renewed,

- European Union trademark CARREFOUR No. 008779498, filed on December 23, 2009 and registered on July 13, 2010,

- European Union trademark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007 and duly renewed.

All these trademarks predate the registration of the disputed domain name.

In these circumstances, the Panel can conclude that the Complainant has established its trademarks rights in the BANQUE CARREFOUR and CARREFOUR denominations.

The Panel further finds that the disputed domain name <banque-carrefour.online> is confusingly similar both to the BANQUE CARREFOUR trademark and to the CARREFOUR trademarks.

Indeed, it is of constant case-law that gTLDs may be ignored for the purpose of assessing the confusing similarity because they only play a technical function.

As a consequence, the disputed domain name is almost identical to the BANQUE CARREFOUR trademark since it reproduces it in its entirety.

The difference between the disputed domain name and the BANQUE CARREFOUR trademark resulting from the presence of the hyphen is obviously only a minor detail which, of course, does not prevent that the trademark remains clearly recognizable within the disputed domain name.

In addition, the disputed domain name is also confusingly similar to the well-known CARREFOUR trademarks because it merely reproduces them by adding the describing word “banque” which refers to the banking activities in which the Complainant is active (in French “banque” means bank).

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent], [the Respondent’s] use of, or 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; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 2.1).

As regards the first and third circumstances above, the Panel notes from the record of the case that the disputed domain name resolved to a page promoting a restaurant.

This is undisputedly a commercial use.

Obviously, using a well-known trademark to promote a third party’s activity is not a bona fide use (See section C infra).

The absence of bona fide use is all the more undisputable that the disputed domain name can only refer to the Complainant: it includes its well-known trademarks and the presence of the word “banque”, precisely, relates to one of its field of activities.

As a consequence, Internet users typing the disputed domain name will think they are reaching the website operated by the Complainant.

Therefore, using the disputed domain to promote a restaurant is necessarily made for commercial gain to misleadingly divert consumers.

For sake of completeness, the Panel adds that the fact that the disputed domain name currently resolves to a blank page does not change the analysis of the elements (i) and (iii) of Paragraph 4(c) of the Policy.

Indeed, as indicated above, the fact that the disputed domain name can exclusively refer to the Complainant and to its banking activities makes particularly improbable that the Respondent may have a legitimate interest in its regards.

As regards paragraph 4(c)(ii), it results from the WhoIs database that the Respondent does not appear to be commonly known by a name consisting of “carrefour” and/or “banque carrefour”.

Moreover, the Respondent is neither affiliated with the Complainant nor has been authorized by it to seek registration of any domain name incorporating its prior trademarks.

In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden now shifts to the Respondent to show that it does have rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

As a consequence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.

The elements listed in paragraph 4(a)(iii) of the Policy are only examples and therefore are not exhaustive of the situation of bad faith.

1. Registration in bad faith

As evidenced by the Complainant:

- its prior trademarks are well-known (previous UDRP decisions having already recognized the well-known feature and/or the fame of its trademarks, for instance: Carrefour v. Jean-Pierre Andre Preca, WIPO Case No. D2018-2857; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015‑0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. Yunjinhua, WIPO Case No. D2014-0257),

- the disputed domain name reproduces two prior trademarks of the Complainant and includes the word “banque” which directly refers to some of the Complainant’s activities,

- as highlighted by the Complainant, before registering a domain name, one has to check that the domain name will not infringe upon the rights of any third party. A quick CARREFOUR or CARREFOUR BANQUE trademarks search or even a simple search on a search engine would have revealed the Complainant’s marks (see in particular Annex 7 to the Complaint),

- when registering the disputed domain name, the Respondent has used a privacy service to conceal its identity and has provided the Registrar with questionable contact details. In addition, the Respondent appears to be located in the same country where the Complainant originates and has its headquarters,

- the Respondent is currently involved in another UDRP procedure concerning the CARREFOUR and BANQUE CARREFOUR trademarks.
At the view of all these elements it is not reasonably possible that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademarks.

Therefore, the Panel considers that the disputed domain name has been registered in bad faith.

2. Use in bad faith

Initially the disputed domain name redirected toward the website of a restaurant.

Given the fame of the CARREFOUR trademarks and the fact that the disputed domain name can only legitimately relate to the Complainant and to its banking activities, this situation clearly falls within the scope of paragraph 4(b)(iv) of the Policy, which states:

“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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.”

Besides, even if the disputed domain name currently resolves to a blank page, it nevertheless results from the records of the case that no less than five email servers have been configurated on it.

Therefore, there might be a genuine risk that the Respondent is intending to or has engaged in a phishing or some other type of illegal activity (See Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225.)

In addition, the Panel notes that:

- it results from the composition of the disputed domain name that its use in good faith by an unauthorized third party is in no way plausible: it consists of the Complainant’s famous trademark plus a word relating to one of the field where it is active,

- the disputed domain name has been registered through a proxy service and the Respondent’s contact details are dubious.

In the light of all these circumstances, the Panel concludes that use of the disputed domain name in bad faith has been established.

At last, further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has not denied the assertions made by the Complainant in this proceeding. The Panel finds reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name, he would have responded to these assertions.

Accordingly, the Panel finds, on the basis of the evidence presented and of the circumstances of this case, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <banque-carrefour.online> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: May 20, 2019