The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & Associés, France.
The Respondent is Privacy Service of Las Vegas, Nevada, United States of America.
The disputed domain name <wwwcarrefour.com> is registered with Fabulous.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2016. On January 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2016, 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 January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on February 17, 2016. 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.
With over 10,000 stores in 34 countries, the Complainant is the second-largest retailer in the world and the largest in Europe. The Complainant has registered CARREFOUR at the Office for Harmonization in the Internal Market (OHIM) as a Community trade mark for a wide range of goods and services in classes 9, 35 and 38 under registration number 005178371 with effect from June 20, 2006. It maintains a website at “www.carrefour.com” where it publishes business information in English.
After the disputed domain name came to its notice the Complainant’s lawyers wrote to the Respondent by a letter dated September 16, 2015. In their letter, they asked the Respondent to:
- provide them with the identity and contact details of the registrant;
- immediately cease the use of the disputed domain name;
- transfer the disputed domain name to their client free of charge; and
- undertake in writing, and on letterhead, not to use the trade mark CARREFOUR under any form –
inter alia as a trade mark, company name, business name, trade sign or domain name – without prior written authorization.
The Respondent replied that it could only transfer or cancel a domain registration if ordered to do so by a tribunal administering the Policy or by a court of a competent jurisdiction. The Complainant’s lawyers received no further reply despite reminders.
When entered into a browser the disputed domain name resolves to a page containing a number of sponsored links in Spanish such as “Ofertas Carrefour” and “Ofertas de Trabajo Online”.
The Complainant requests the transfer of the disputed domain name on the grounds that:
- The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in the disputed domain name; and
- The disputed domain name was registered and is being used in bad faith.
As to the first point, the Complainant points to the similarity of the disputed domain name and the Community trade mark mentioned above and contends that the letters “www” or the suffix “.com” do nothing to distinguish it and refers to previous UDRP decisions to that effect. The Complainant invites the Panel to infer that the letters “www” were inserted to catch Internet users who omitted to insert a full stop after “www” and before “carrefour”.
On the second point the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the registration of its Community trade mark preceded the registration of the disputed domain name by years. Because of the goodwill and reputation of the Complainant’s mark it would be impossible for the Respondent lawfully to carry on business under that mark or trade name anywhere in the world. None of the circumstances set out in paragraph 4(c) of the Policy avails the Respondent.
In respect of the last point, the Complainant says that the Respondent was probably aware of its trade marks. It contends that the registration of a domain name that is confusingly similar to a well known mark is an act of bad faith in itself. In support of that contention it refers to LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 and Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303. Further, the Complainant says that the use of a privacy shield is an act of bad faith and cites Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729 and TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725. The insertion of the letters “www” (a practice described as “typosquatting”) is yet more evidence of bad faith. Next, the Complainant refers to the well known decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and argues that this was also a case of passive holding. Further, the Complainant points to the sponsored links on the landing page at the disputed domain name and submits that this is a case that falls within Policy paragraph 4(b)(iv). Finally, the Complainant says that the Respondent’s failure to give the undertakings or supply the information sought in the Complainant’s letter of September 16, 2015 was an act of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove:
- The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The complainant must prove that each of these three elements is present.
The Panel is satisfied that the first element is present.
The only difference between the Complainant’s Community trade mark mentioned above and the disputed domain name is the addition of the letters “www” and the suffix “.com”. The similarity between the mark and the disputed domain name is obvious and does not require elaboration.
The Panel finds the second element to be present.
As the Complainant is the world’s second largest retailer with operations in 34 countries it would be very difficult lawfully to establish a business under a name corresponding to that of the disputed domain name anywhere in the world without the license of the Complainant.
It is possible to think of exceptions. “Carrefour” means “crossroads” in English so it may be possible for a café, inn or some other business by a crossroads to subsist without any connection with the Complainant.
Also, according to the genealogical website “www.geneanet.org”, Carrefour is the186,440th most common surname in France, so it should be possible for a Monsieur or Madame Carrefour to carry on a business under his or her own name.
But no evidence that the Respondent uses “carrefour” in connection with its dictionary meaning or as a personal name on the website at the disputed domain name appears in the Complainant’s materials and the Respondent has declined to avail itself of the opportunity to show that it has a right or legitimate interest in the disputed domain name. Accordingly, the Panel finds there to be none.
The Panel finds the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is set out in sub-paragraph (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.”
To fall within this sub-paragraph, the Complainant has to prove:
(1) use of the disputed domain name;
(2) an attempt to attract Internet users to the Respondent’s website or other online location;
(3) commercial gain;
(4) intention;
(5) the creation of a likelihood of confusion with the Complainant’s mark.
The Complainant has alleged in the Complaint that the disputed domain name resolves to a landing page with a number of sponsored links. On the date of this decision the Panel entered the disputed domain name in her browser and arrived at a similar page. The Complainant has proved use of the disputed domain name.
The second and fourth requirements are satisfied. There can be no other reason for inserting the letters “www” before the trade mark in the disputed domain name.
A payment is most likely generated every time a sponsored link is clicked. That constitutes “commercial gain”.
The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s mark. Thus, the last requirement is satisfied.
The Panel is required to accept these facts as evidence of bad faith registration and use. No evidence has been adduced by the Respondent to rebut them. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
The Panel is reluctant to accept some of the Complainant’s alternative grounds. It is not always an act of bad faith to register a domain name corresponding to a well known trade mark. A website for a business owned by someone called “Carrefour” or a business by a crossroads might be quite permissible at the disputed domain name. It is also not automatically an act of bad faith to use a privacy service. Avoiding spam seems a perfectly good reason for using such a service. Nor is it necessarily an act of bad faith to refuse to reply to reminders once the reason for not complying with a request made in a letter before a claim has been stated. There may be circumstances where each of those acts or omissions could constitute bad faith but it is not necessary to make such a finding in this case.
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 <wwwcarrefour.com> be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: March 8, 2016