The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Ikram Ullah, Pakistan.
The disputed domain name <thecarrefour.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2020, 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 April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 18, 2020. 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.
The Complainant is a Paris Stock Exchange listed company founded in 1959 that operates a business providing supermarkets, retail stores, and convenience stores in 30 countries with sales of EUR 76 billion in 2018. The Complainant holds registrations for the trademark CARREFOUR and variations of it in numerous jurisdictions, including, for example, International registration No. 351147, registered on October 2, 1968.
The Complainant owns numerous domain names that comprise of, or contain, the trademark CARREFOUR, including the domain name <carrefour.com>, which was registered on October 25, 1995.
The Respondent registered the Disputed Domain Name on March 8, 2020. The Disputed Domain Name does not resolve to an active website.
The Complainant cites its International trademark registrations including No. 351147 registered in 1968 and numerous other registrations around the world, for the mark CARREFOUR as prima facie evidence of ownership.
The Complainant submits that the mark CARREFOUR is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the CARREFOUR trademark and that the similarity is not removed by the addition of the word “the” or the generic Top-Level Domain (“gTLD”), “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “it has not authorized the use of the term “carrefour” in the disputed domain name in any manner or form. [...] [and] that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to an error page.” The Complainant contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules, having regard to the passive holding of the Disputed Domain Name and the prior use and fame of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark CARREFOUR in numerous countries, pursuant to International Trademark No. 351147 registered in 1968. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). This Panel is so satisfied.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the CARREFOUR trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) the definite article, “the”; (b) followed by an exact reproduction of the Complainant’s trademark CARREFOUR; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “thecarrefour”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
In this case, the Disputed Domain Name is comprised of the Complainant’s trademark CARREFOUR combined with the definite article “the” which, in line with numerous previous UDRP decisions, does not prevent a finding of confusing similarity (see Trivago N.V. v. Omar Abdo, WIPO Case No. D2019-2523; Allianz SE v. WhoisGuard Protected / John Kojo, WIPO Case No. D2019-2157; Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “it has not authorized the use of the term “carrefour” in the disputed domain name in any manner or form. [...] [and] that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to an error page.”. The Complainant contends that, in doing so, the Respondent is illegitimately passing off the Complainant’s goodwill and reputation for its own benefit.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the use of the Disputed Domain Name to resolve to an error page does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.
The Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark CARREFOUR is such a famous mark for supermarkets and retail services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623 (“The Complainant is the owner of at least two well-known CARREFOUR trademarks”); Carrefour S.A. v. Damian Macafee, WIPO Case No. D2002-1060 (“the trademark CARREFOUR is internationally well-known”); Carrefour v. Iwama, WIPO Case No. D2007-1522 (“the Complainant’s well known Trademark”); Carrefour, S.A., Viajes Carrefour S.L. v. Pablo Iglesias Junco, WIPO Case No. D2008-1040(“the Panel finds that the trademark CARREFOUR is well-known”)).
Further, a gap of years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 52 years after the Complainant established registered trademark rights in the CARREFOUR mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent, displaying an error message. WIPO Overview 3.0, section 3.3 sets out a non-exhaustive list of factors that have been considered by previous UDRP panels as relevant – having regard to the totality of the circumstances in each case – in determining whether the non-use of a domain name may prevent a finding of bad faith include: “(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.” Three of these factors, items (i), (ii), and (iv), are present in this case also. While the Respondent did use a name in association with the registration, there is no confirmation that that name was genuine. The Panel notes also that the Complainant operates its business in Lahore, Pakistan, the location used by the Respondent upon registration of the Disputed Domain Name and that the Respondent failed to take part in the present proceeding. In the absence of a response, the inference is there to find – and the Panel does so find – that the conduct amounts to bad faith.
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s well-known trademark CARREFOUR and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization to disrupt the business of the Complainant contrary to paragraph 4(b)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <thecarrefour.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: June 6, 2020