The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Giuseppe Bottos of Camaiore, Italy.
The disputed domain name <carrefourbanca.online> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2017, 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 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2017.
The Center appointed Mladen Vukmir as the sole panelist in this matter on May 11, 2017. 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 Panel has determined the following non-contested facts:
I. The disputed domain name was registered on January 6, 2017 (Annex 1 to the Complaint);
II. The Respondent is the registrant of the disputed domain name (Annex 1 to the Complaint and the Registrar’s reply to the Request for Registrar Verification of March 24, 2017);
III. The Complainant, operating in the retail sector, is the holder of the following CARREFOUR and CARREFOUR BANCA trademark registrations (Annex 6 to the Complaint):
|
Trademark |
Trademark Office |
Registration number |
International classes |
Date of the registration |
|
CARREFOUR BANCA |
Italy (IT) |
2011901947911 |
35 and 36 |
November 8, 2011 |
|
CARREFOUR |
European Union (“EUIPO”) |
008779498 |
35 |
July 13, 2010 |
IV. The Complainant is the holder of and operates the following domain names which incorporate its CARREFOUR and CARREFOUR BANCA trademarks: <carrefourbanca.it> registered on June 7, 2011, and <carrefour-banque.fr> registered on October 7, 2009 (Annex 7 to the Complaint).
The Complaint, essentially, asserts that:
(i) In the last 50 years, Carrefour has become a world leader in the retail sector being first-largest retailer in Europe. Carrefour currently operates under four store formats: hypermarkets, supermarkets, convenience stores and cash and carry shops for professionals. Carrefour has more than 11,500 stores in more than 30 countries and in 2015 generated revenue of EUR 104.4 billion. Carrefour generates more than 53 percent of its sales outside France.
(ii) Carrefour has extended its activities to Italy via the franchised supermarkets Carrefour Market and Carrefour Express representing 618 sales outlets belonging to about 500 entrepreneurs and 50 stores opened in the last 12 months.
(iii) Carrefour operates bank services in Italy. Carrefour hypermarkets provide solutions to enable its customers to pay in installments.
(iv) Carrefour communicates mainly via Internet to promote its products and services, for instance the website “www.carrefourbanca.it” dedicated to the Italian market.
(v) Before starting the subject UDRP proceedings, the Complainant tried to resolve the matter amicably by sending a cease-and-desist letter to the Respondent dated January 31, 2017.
(vi) The disputed domain name previously redirected to the website “www.bottos.online” which related to a real estate agency. The Complainant noticed that after the sending of the cease-and-desist letter to the Respondent, the direction of the disputed domain name changed to “www.carrefourbanca.it” that is the official website of the Complainant.
(vii) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, amongst other, because:
- the Complainant and its CARREFOUR trademarks enjoy a worldwide reputation;
- the Complainant owns numerous CARREFOUR and CARREFOUR BANCA trademark registrations in several jurisdictions and in particular: Italian trademark CARREFOUR BANCA No. 2011901947911, registered on November 8, 2011, covering services in classes 35 and 36 and European Union trade mark CARREFOUR No. 008779498, registered on July 13, 2010, covering services in classes 35;
- the Complainant operates domain names reflecting its CARREFOUR and CARREFOUR BANCA trademarks in order to promote its services those being <carrefourbanca.it> registered on June 7, 2011, and <carrefour-banque.fr> registered on October 7, 2009;
- the disputed domain name substantially reproduces the Complainant’s CARREFOUR and CARREFOUR BANCA trademarks, which trademarks have been considered as “well known” or “famous” by panels in earlier UDRP cases and in this regard, the Complainant refers to the panel decisions in the following UDRP cases: Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Jean Dorangeville, WIPO Case No. D2016-2003; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-142; Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002;
- the disputed domain name associates the Complainant’s trademark CARREFOUR to the generic term “banca” (meaning bank in Italian) not dispelling any likelihood of confusion. The Complainant in this respect refers to the position taken by panels in the following UDRP cases under which the addition of terms to a trademark of the respective complainant does not influence finding of confusing similarity between the domain name and such trademark: Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604: and Compagnie Générale des Etablissements Michelin v. isman to, WIPO Case No. D2012-0739. To the contrary, adding of the term “banca” to the Complainant’s CARREFOUR trademark increases the likelihood of confusion since it corresponds to the Complainant’s business activities, and therefore Internet users may wrongly believe that the disputed domain name is owned by the Complainant and that it relates to the Complainant’s banking activities;
- the disputed domain name furthermore entirely reproduces the Complainant’s trademark CARREFOUR BANCA. In this sense, the Complainant quotes the following relevant UDRP decisions: L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113;
- addition of the new generic Top-Level Domain (“gTLD”) “.online” does not have influence on the assessment of confusing similarity as the same is usually disregarded in such assessment, as per earlier practice in UDRP cases.
(viii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the Complainant’s trademarks or seek registration of the domain name incorporating such trademark;
- the registration of the Complainant’s trademarks CARREFOUR and CARREFOUR BANCA precedes the registration of the disputed domain name;
- panels in earlier UDRP cases found that in the absence of any license or permission from the complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed, and in this respect invokes the following panel decisions: Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138;
- the disputed domain name is identical to the Complainant’s famous CARREFOUR and CARREFOUR BANCA trademarks, therefore the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name;
- after receiving of the Complainant’s cease-and-desist letter, the Respondent changed the direction of the disputed domain name from a website of a real estate agency to the official website of the Complainant, which demonstrates that the Respondent has no legitimate interest in the disputed domain name;
- the Respondent has also not made any reasonable and demonstrable preparations to use the disputed domain name, and consequently, the Respondent failed to show intention of noncommercial or fair use of the same;
- the Respondent has never replied to the Complainant’s cease-and-desist letter despite of several reminders. In this sense, the Complainant quotes previous UDRP decisions in which panels found that when the respondent does not avail itself of the right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name: Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269; and AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017. If the Respondent had a right or legitimate interest in connection with the disputed domain name, it would have vigorously defended its rights by quickly replying to Complainants’ cease-and-desist letter. In light of these circumstances, it clearly appears that Respondent does not have any legitimate interest with respect to the disputed domain name (Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo, WIPO Case No. D2010-0865).
(ix) The disputed domain name was registered and is being used in bad faith, since:
- it is implausible to the Complainant that the Respondent was not aware of the Complainant when it registered the disputed domain name, and in this regard the Complainant invokes the prevailing practice in UDRP cases under which the bad faith can be found where respondent “knew or should have known” of the complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests by referring to the following panel decisions: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113;
- the Complainant is well known throughout the world including Italy where the Respondent is located;
- Previous UDRP panels have mentioned the Complainant’s worldwide reputation and therefore it is unlikely that Respondent was not aware of the Complainant’s intellectual property rights;
- the disputed domain name is entirely reproducing two of the Complainant’s trademarks namely CARREFOUR and CARREFOUR BANCA and therefore it is clear that the Respondent had these trademarks and company name in mind when registering the disputed domain name;
- bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226; and Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464);
- under paragraph 2 of the Policy, it is established that when someone registers a domain name, they represent and warrant to the registrar that, to their knowledge, the registration of the domain name will not infringe the rights of any third party. Therefore it was the Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering the disputed domain name. In this regard, the Complainant refers to the following panel decisions: Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901; , Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397;
- the Respondent did not do a quick CARREFOUR and CARREFOUR BANCA trademark search or it would have found the existence of the Complainant and its trademarks. In that sense, the Complainant refers to the following panel decision: Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, supra;
- additionally, a simple Google search using the keywords “carrefour” and “carrefour banca” would demonstrate that all first results relate to the Complainant’s products or news;
- having in mind the reputation of the Complainant’s trademarks CARREFOUR and CARREFOUR BANCA, it is implausible that Respondent was unaware that the Complainant owns trademark rights in said trademarks. Previous UDRP panels have established that knowledge of a complainant’s intellectual property rights at the time of registration of the disputed domain name may prove bad faith registration, and in this respect the Complainant refers to the following panel decisions: Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287; and NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077;
- the Complainant noticed that after the sending of the cease-and-desist letter to the Respondent, the direction of the disputed domain name changed to “www.carrefourbanca.it”, which is the official website of the Complainant;
(x) The disputed domain name is being used in bad faith:
- previous UDRP panels have considered that in the absence of any license or permission from a complainant to use a widely-known trademark, an actual or contemplated bona fide or legitimate use of the domain name cannot reasonably be claimed. The Complainant refers to the following panel decisions: Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281; and Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055;
- the disputed domain name is confusingly similar to the Complainant’s trademarks. In this sense, the Complainant quotes previous UDRP panels that have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site”. The Complainant refers to the following panel decisions: MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765; and Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095;
- additionally, the disputed domain name previously resolved to a website relating to a real estate agency;
- therefore, the Respondent has registered the disputed domain name and is using it in bad faith in an attempt to confuse consumers and attract them through capitalizing and free-riding on the reputation of the Complainant’s trademarks. In this sense, the Complainant refers to the following panel decision: Inter IKEA Systems BV (IISVB) v. Hosein Bagheri, WIPO Case No. D2016-0432;
- the Complainant refers to another case: it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”, Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325;
- it is likely that Respondent registered the disputed domain name to prevent Complainant from using its trademarks in the disputed domain name. In this sense, the Complainant refers to the following panel decision: L’oreal v. Chenxiansheng, WIPO Case No. D2009-0242.
The Respondent did not reply to the Complainant’s contentions.
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Primarily, the Panel emphasizes that under the general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence to show that it is the owner of at least one CARREFOUR and one CARREFOUR BANCA trademark, protection of which extends to Italy, where the Respondent is apparently residing (Annex 6 the Complaint).
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name <carrefourbanca.online> incorporates the Complainant’s CARREFOUR BANCA trademark in its entirety without any modifications, and that the same CARREFOUR BANCA trademark of the Complainant is clearly recognizable as such within the disputed domain name.
Regarding the applicable gTLD “.online” in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0), as the Complainant also pointed out correctly in its Complaint.
Therefore, the Panel holds that the disputed domain name is identical to the Complainant’s CARREFOUR BANCA trademark within the meaning of paragraph 4(a)(i) of the Policy.
In this Panel’s view, even if the Complainant had only the trademark CARREFOUR registered (and not CARREFOUR BANCA as well), that would not prevent finding of the confusing similarity in this matter. Namely, the Complainant’s CARREFOUR trademark is also incorporated in the disputed domain name in its entirety without any modifications and is clearly recognizable within the disputed domain name. Adding of the term “banca” (which means bank in Italian) to the Complainant’s CARREFOUR trademark in the disputed domain name would not be sufficient to overcome the confusing similarity with respect to the Complainant’s CARREFOUR trademark, which remains the dominant and only distinctive element in the disputed domain name.
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is identical or confusingly similar to its CARREFOUR BANCA and/or CARREFOUR trademarks.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, [use by the respondent] 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) [Where 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) [Where 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.”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […].”
In the present case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant, and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Namely, the Complainant has established that it is the owner of at least one CARREFOUR and one CARREFOUR BANCA trademark as well as that it has used the same trademarks widely on the market and the Internet, including through its website located at “www.careffour.it” (Annexes 3 and 4 to the Complaint).
The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Furthermore, from the record, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its CARREFOUR or CARREFOUR BANCA trademarks, or to apply for or use any domain name incorporating the same trademarks.
In previous decisions, UDRP panels found that in the absence of any license or permission from the Complainant to use such well-known trademarks (as elaborated in further detail below, panels in earlier UDRP cases have found the Complainant’s CARREFOUR trademark to be well known or famous), no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (see, e.g., Groupe Auchan v. Gan Yu, supra; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, supra).
Moreover, from the evidence presented by the Complainant, in Annex 1 to the Complaint, it arises that, before the Respondent received the Complainant’s cease-and-desist letter, the disputed domain name was directed to a website of a real estate agency. Only after receiving of the Complainant’s cease-and-desist letter did the Respondent redirect the disputed domain name to the official website of the Complainant. Having in mind the renown of the Complainant and its CARREFOUR trademark, in this Panel’s opinion it can be safely concluded that the Respondent deliberately chose to include the Complainant’s trademarks in the disputed domain name, in order to trade on the renown of the Complainant’s trademarks and to achieve commercial gain by misleadingly diverting consumers. Such use cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates, WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021; and Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001.
In addition, the Respondent has never replied to Complainant’s cease-and-desist. Panels in earlier UDRP cases have repeatedly stated that when a respondent does not avail itself of its right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name, (see, e.g., Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, supra; and AREVA v. St. James Robyn Limoges, supra).
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant by making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failure to produce any arguments or evidence to the contrary.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Owing to the lack of Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant’s CARREFOUR and CARREFOUR BANCA trademarks, because of:
- the Complainant’s CARREFOUR and CARREFOUR BANCA trademark registrations, registration of which extends to Italy, where the Respondent apparently resides; as well as
- notoriety and the extensive use of the same trademarks on the market and Internet by the Complainant.
In addition, panels in earlier UDRP cases have found the Complainant’s CARREFOUR trademark to be
Well known or famous. See, in particular Carrefour v. Ali Fetouh, Fasateen, supra; Carrefour v. Jean Dorangeville, supra; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., supra; Carrefour v. VistaPrint Technologies Ltd., supra; Carrefour v. Park KyeongSook, supra; Carrefour v. Yujinhua, supra; Carrefour v. Karin Krueger, supra.
Therefore, in this Panel’s view, it is safe to conclude that the Respondent was aware of the Complainant and its CARREFOUR and CARREFOUR BANCA trademarks when it registered the disputed domain name, and that the Respondent’s intention was for the disputed domain name to trade on the renown of the Complainant and its trademarks. It would be a too much of a coincidence, that the Respondent, decided to include the Complainant’s CARREFOUR and CARREFOUR BANCA trademarks in their entirety in the disputed domain name, without being aware of the Complainant and/or its business.
Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see paragraph 3.4 of WIPO Overview 2.0).
Furthermore, and as already discussed above, before receiving of the Complainant’s cease-and-desist letter, the disputed domain name resolved to a website of a real estate agency. Having in mind the renown of the Complainant and its trademarks, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolved, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The presence of the Complainant’s CARREFOUR and/or CARREFOUR BANCA trademarks in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name clearly benefits from the same.
For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case, since the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:
(i) Sanofi v. PrivacyProtect.org / ICS Inc., WIPO Case No. D2012-1293: “previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031: “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;
(iii) PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292: “The fact that the Respondent elected to register a domain name substantially comprising the PEPSI trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;
(iv) Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester, WIPO Case No. D2015-1556: “The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 <carrefourbanca.online> be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: May 25, 2017