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WIPO-UDRP Decision
D2015-1928

Case number
D2015-1928
Complainant
Carrefour
Respondent
Giuseppe Caputo
Panelist
Comanescu, Marilena
Affected Domains
Status
Closed
Decision
Transfer
Date of Decision
16.12.2015

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Giuseppe Caputo

Case No. D2015-1928

1. The Parties

The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.

The Respondent is Giuseppe Caputo of Atripalda, Italy, self-represented.

2. The Domain Name and Registrar

The disputed domain name <carrefour.property> is registered with NETIM SARL (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2015, 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.

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, and the proceedings commenced on November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. On November 24, 2015, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on November 29, 2015.

The Center appointed Marilena Comanescu as the sole panelist in this matter on December 3, 2015. 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 leading multi-format, multi-channel, multi-location retailer and, over a 50-year period, it has grown from its initial operations in France to become the second-largest retailer in the world and the largest in Europe. In 2014, the Complainant operated more than 10,800 stores in 34 countries and generated annual revenues worldwide of EUR 100.5 billion.

Previous UDRP panels have found that the Complainant's trademark CARREFOUR is well-known or famous (see, e.g., 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; and Carrefour v. Karin Krueger, WIPO Case No. D2013-2002).

Carrefour Property is a subsidiary of the Complainant, being actively involved in the creation of commercial spaces and holding buildings in which hypermarkets, supermarkets and shopping malls are located. Carrefour Property is active in three countries, including Italy where it is involved in several projects, including 45 shops, one hypermarket and almost 3,000 parking spaces.

The Complainant holds many registrations for CARREFOUR, such as the following:

- the International Trademark CARREFOUR registration, No. 351147, filed on October 2, 1968, designating inter alia Italy and being registered for goods in classes 01 - 34; and

- the International Trademark CARREFOUR registration, No. 353849, filed on February 28, 1969, designating inter alia Italy and being registered for services in classes 35 - 42.

The Complainant operates numerous websites including "www.carrefour.com", "www.carrefourproperty.com" and "www.carrefourproperty.it".

The Respondent registered the disputed domain name <carrefour.property> on July 3, 2015. At the time of filing the Complaint, the disputed domain name resolved to a standard Registrar parking page.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its famous trademark CARREFOUR, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent submitted a short Response, claiming particularly that (i) it was unaware of the Complainant and its trademark at the time it registered the disputed domain name; (ii) it chose the disputed domain name because it has a property in a "carrefour (junction)" and as evidence it provided an Internet link to a street directory (without submitting its results as an annex); (iii) it is commonly known in the community by the name "@carrefour.property" and as evidence the Respondent provided copies of business cards and provided a link to Instagram platform; (iv) before the present proceding commenced he was preparing to use the disputed domain name in good faith for a "free 'Forwarding' service[ ] of Netim [the Registrar]".

Further, the Respondent requests the Panel to make a finding of reverse domain name hijacking.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i) the disputed 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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant holds rights in the CARREFOUR trademark and also conducts business activities under the name "Carrefour Property".

The disputed domain name <carrefour.property> reproduces exactly the Complainant's trademark CARREFOUR and it is registered in the Top-Level Domain ("TLD") "property" which can be perceived as irrelevant in the present assessment as aTLD is necessary for the registration of a domain name. However, since the Complainant's trademark is famous and because the Complainant also conducts business activities under the "Carrefour Property" name, in the present case choosing to register the disputed domain name in the ".property" TLD in fact increases confusion for Internet users.

Further, it is well established in decisions under the UDRP that the presence or absence of spaces and characters (e.g., hyphens, dots) in a domain name are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.

Given the above, the Panel finds that the disputed domain name <carrefour.property> is virtually identical to the trademark CARREFOUR in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights to use the CARREFOUR trademark nor to register a domain name comprising such trademark; the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; at the time of filing the Complaint the website corresponding to the disputed domain name was inactive; the Respondent provided false contact details to the Registrar as the Complainant's attempts to resolve the dispute in an amicable way failed to reach the Respondent and remained unanswered. In line with previous UDRP decisions made in similar circumstances, the Panel accepts that the Complainant has provided a prima facie case of the Respondent's lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.

The Respondent claims he was not aware of the Complainant and its trademark. This Panel takes the view that it is difficult and unlikely that in selecting the disputed domain name the Respondent ignored the fact that the Complainant is a very large European retailer with a strong presence in Italy, where the Respondent resides. Additionally, the CARREFOUR trademark has been registered since 1968 and is famous worldwide.

Further, the Respondent claims that the term "carrefour" means "junction" and forwarded an Internet link to what appears to be a street directory in an Italian region, claiming to own property at a junction. There are no documents attached to the Response to support these allegations and it is definitely not the Panel's obligation to produce evidence for the Parties. However this Panel did access the said Internet link.

The Respondent's argument appears to be that he has rights to the disputed domain name because it is descriptive of his real estate holdings. Even accepting that "carrefour" means "junction" in French (although the Respondent did not bother to clarify that he was referring to the French language in this regard), and that the Respondent is indeed the owner of property located at a junction, in the circumstances of this case these facts do not confer rights or legitimate interests in the disputed domain name on the Respondent. There is no evidence that the disputed domain name has been used in the past or will be used in the future to host a website regarding the Complainant's alleged property. In fact, the Respondent himself undercuts his argument by stating that he was preparing to put the disputed domain name to an unrelated use (a "free 'Forwarding' service[ ] of [the Registrar]").

The Respondent further claims he is known by the name "@carrefour.property" and provides copies of what appears to be business cards and a link on the Instagram platform, which this Panel visited and found unsatisfactory in this case for supporting the allegations of being commonly known in a market.

Accordingly, the Respondent has failed to offer the Panel sufficient evidence of any of the circumstances set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any right or legitimate interest in the disputed domain name, such as evidence of use or preparations to use the disputed domain name for a bona fide offering of goods or services prior to notice of the dispute, being commonly known by the disputed domain name, or making legitimate noncommercial or fair use of the disputed domain name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <carrefour.property>, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

When assessing the bad faith in registration requirement in a case like this, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).

The Complainant's trademark CARREFOUR and corresponding business name have been used and registered worldwide for decades, CARREFOUR being a protected trademark in Italy since 1968.

CARREFOUR is a strong trademark and the Respondent failed to demonstrate it has another meaning in the Italian language other than to designate the Complainant's trademark and company name. According to the previous UDRP decisions cited in Section 4 above, the CARREFOUR trademark has become well-known in the markets in which it trades.

The disputed domain name <carrefour.property> was registered in July 2015 and reproduces exactly the Complainant's trademark and commercial name.

This Panel finds the above convincing evidence that the Respondent was aware of the Complainant's business and rights in the CARREFOUR trademark when registering the disputed domain name.

Further, at the time of filing the Complaint, the disputed domain name resolved to an inactive webpage. Passive holding of a disputed domain name incorporating a third party's well-known mark does not normally amount to a bona fide use. It has been established since the beginning of the UDRP that "inaction" / "passive holding" can, in certain circumstances, constitute bad faith use. See paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Respondent's statements and the other circumstances of the case do not support any contemplated good faith in using the disputed domain name. The Respondent failed to provide any supporting argument in choosing and using the term "carrefour" in a domain name and therefore the Panel finds that the Respondent registered the disputed domain name with the Complainant's trademark and business in mind, trying to capitalize on the goodwill created by the Complainant in its mark.

Also, the Respondent's lack of reaction to the Complainant's cease and desist letter sent before commencing these proceedings and its refusal to receive Center's written communications for the present proceeding can be inferred as signs that the Respondent was avoiding the receipt of official communications regarding the disputed domain name and such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name <carrefour.property> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

7. Reverse Domain Name Hijacking

The Respondent appears to request a finding of reverse domain name hijacking, again without supporting arguments other than those already mentioned above.

However, the success of the Complaint makes the analysis of this request unnecessary.

8. 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 <carrefour.property> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: December 16, 2015