The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Hugo Demorge of Vanves, France.
The disputed domain name <fondation-carrefour.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2018, 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. On July 17, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. On July 19, 2018, the Complainant filed an amended Complaint in English in which it requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and French of the Complaint, and the proceedings commenced on July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Center received two informal email communications from the named Respondent on July 24, 2018. The Respondent did not submit any substantive response. Accordingly, the Center notified the Respondent's default on August 15, 2018.
The Center appointed Martine Dehaut as the sole panelist in this matter on August 23, 2018. 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.
An issue arose in this proceeding regarding the language of the proceeding. The Complaint was filed in English. However, in its response to the request of verification sent by the Center, the Registrar indicated that the language of the registration agreement as used by the registrant for the disputed domain name was French. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel to determine otherwise. In response to an inquiry made by the Center, the Complainant explained that the Registrar's website displayed English, German and French versions of the registration agreement, and that it had chosen English as the most likely option. It requested that English be maintained as the language of the proceeding. It relied in particular of the important cost of translation of the Complaint and of the evidence, and it indicated that the Respondent was very likely to understand English. The Respondent did not make any comment on the language of the proceeding. However, he used French in the emails sent to the Center.
With this, this Panel finds it entirely appropriate to maintain English as language of the proceeding. The Complainant acted on good faith when choosing this language, based on the information available in the Registrar's website, and it could not anticipate that French was chosen over other options. The Respondent was requested to give his position and chose not to do so. Requesting the translation of the Complaint and all related material would be disproportionate and would go against some of the important pillars of the UDRP, which aims at providing a cost-effective and quick resolution of disputes. Of course, the communications sent by the Respondent in French will be fully taken into consideration, thus ensuring that this decision is not prejudicial to any party.
The Complainant is the French entity Carrefour, one of the world's leading actors in food retail. Carrefour operates, under the brand "Carrefour", nearly 12,000 stores and e-commerce sites in over 30 countries. Its operations started in France in the early 1960s, and to date the group employs over 380,000 people around the globe and generates sales beyond EUR 103 billion.
The presence of the Complainant in France is particularly prevalent. This is the home country of the Complainant, where its first store was opened. It operates there over 5,000 stores.
The Complainant indicates that it operates a foundation which provides support to numerous non-profit organizations that handles projects which aim at fighting against exclusion. These programs are handled in countries where the Complainant is present. The foundation is precisely named "Fondation Carrefour", and it is handled in particular through a website hosted under the domain name <fondation-carrefour.org>.
The Complainant relies on the following trademark registrations, over the word mark CARREFOUR, as a basis for its Complaint:
French trade mark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41, 42;
European Union trade mark CARREFOUR No. 005178371, filed on June 20, 2006, and registered on August 30, 2007, duly renewed and covering services in classes 9, 35, and 38;
European Union trade mark CARREFOUR No. 008779498, filed on December 23, 2009, and registered on July 13, 2010, and covering services in class 35.
The disputed domain name was registered on December 18, 2017, with the assistance of Oxyd, a French entity specialized in IT services, including domain name registrations and email service provider. The Complainant indicates that email servers had been configured on the litigious domain name. These were deactivated after receipt by Oxyd of a cease and desist letter sent by the Complainant's representative on January 3, 2018.
On the same date another cease and desist letter was sent to the Respondent, who is said to have never responded.
The disputed domain name <fondation-carrefour.com> currently resolves to a page entitled "Expired Registration Recovery Policy". The disputed domain name does not otherwise appear to have resolved to an active website.
The Respondent sent two emails to the Center in response to the Complaint, on July 24, 2018. He indicates, in essence, that a third person usurped his identity and registered the litigious domain name in his name, using all his contact details but a different email address, to which he is not connected. He adds that he contacted the email service provider, Oxyd, to verify the identity of the owner and that, failing any response from the third person, the email was allegedly cancelled.
Regarding the first element of the Policy, the Complainant indicates that the trade mark CARREFOUR is wholly reproduced in the disputed domain name <fondation-carrefour.com>. It claims that the additional word "fondation" is generic and does not prevent a risk of confusion between the Complainant's trade marks and the disputed domain name. Finally, it adds that the generic Top-level Domain ("gTLD") ".com" is not to be taken into consideration when evaluating the confusing similarity.
Regarding the second element of the Policy, the Complainant adduces in particular that the Respondent is not affiliated with Complainant in any way nor has he been authorized or licensed by Complainant to use and register its trademark, or to seek registration of any domain name incorporating the CARREFOUR trademarks. Moreover, Respondent is not known by the name of CARREFOUR. Furthermore, Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of CARREFOUR trade marks preceded the registration of the disputed domain name for years. The Complainant also highlights several circumstances that confirm a lack of rights or legitimate interests in the disputed domain name, such as the reputation of the earlier trade marks, the fact that the disputed domain name resolves to an inactive page, or the initial registration of the domain name using a privacy shield service.
Finally, regarding the third element of the Policy, the Complainant's arguments make a distinction between the registration and the use of the disputed domain name. On the bad faith registration, the Complainant claims that "it is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. Bad faith can be found where respondent ʻknew or should have knownʼ of Complainant's trademark rights and, nevertheless registered domain name in which he had no right or legitimate interest." Regarding the bad faith use, the Complainant relies on the doctrine of bad faith passive holding as developed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As mentioned above the named Respondent sent a couple of communications to the Center, in which he alleged that his identity has been usurped and that he had not registered himself the litigious domain name. He also argues having taking the necessary steps to have the email service provider verifying the true identity of the Registrant, and that failing any response Oxyd had cancelled the domain name.
The Respondent did not address in his emails the factual or legal contentions of the Complaint.
This Panel must address a preliminary issue here, which is that of determining whether Hugo Demorge is indeed the Registrant of the domain name <fondation-carrefour.com>. He alleges that his identity was usurped by a third party, which was not identified and could solely be contacted via an email address. This might be true, but the Panel can solely note that there is no evidence on record to support this claim. Neither the Respondent, nor the French email service provider Oxyd, have provided for example copies of prior exchanges supporting this allegation and the fact that there was an attempt to cancel the domain name registration earlier in January 2018, when the cease and desist letters were sent by the Complainant. It would appear that the Respondent did not respond to the initial cease and desist letters of the Complainant, and to its subsequent reminder. It solely reacted under the pressure of this proceeding. Therefore, the Panel will rely on the information available with the Registrar, which designates Mr. Demorge as Registrant, and thus the Respondent in this case.
Be it as it may, the Respondent clearly wishes to unlink himself from this matter and he has taken steps with Oxyd on July 24, 2018 to make sure that the domain name <fondation-carrefour.com> was cancelled. This is of course not possible while this proceeding is ongoing and the domain name is on lock status.
As indicated in the statement of facts, for the purpose of this case the Complainant relies on a number of word marks CARREFOUR registered in several jurisdictions. This word is fully and identically reproduced in the disputed domain name <fondation-carrefour.com>.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") explains that "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements."
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
It is well established from prior UDRP decisions that the Complainant has simply the burden of making out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If the Complainant is successful in doing so, the burden of production shifts to the Respondent to rebut the Complainant's prima facie case. The Panel finds that the Complainant has established such a prima facie case here and, failing any rebuttal from the Respondent, this Panel will accept the allegations made by the Complainant.
As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trade mark in a domain name or otherwise.
The addition of the word "fondation" to the trade mark CARREFOUR, which means "foundation" in French, makes directly reference to the activities of the Complainant in the promotion and support of philanthropic activities. This is not mere speculation, as the Complainant actually owns and uses a very similar domain name for these purposes, under a different gTLD: <fondation-carrefour.org>.
Besides, the Respondent himself has indirectly confirmed that he has no right or legitimate over the domain name. Instead, he took initiatives to cancel it when he was required to respond to the Complaint.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent] has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent'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 respondent's] website or location or of a product or service on [the respondent's] website or location.
The Complaint focuses largely on the global presence and reputation of Carrefour worldwide, and highlights that the Respondent knew, or should have known, of the existence of this major brand.
Whoever actually registered the disputed domain name <fondation-carrefour.com>, whether that was Mr. Hugo Demorge, or someone who usurped his identity, is most likely based in France and obviously knew of the brand Carrefour, and even of its activities conducted under the name "Fondation Carrefour".
The Respondent has knowingly and intentionally created confusion with the famous trade mark Carrefour by reproducing it and associating it to the word "foundation", this creating a combination that is identical to one of the domain names operated by the Complainant.
By doing so, the Respondent has acted in bad faith.
The second issue is determining whether the domain name was used in bad faith. Some elements provided for by the Complainant seem to indicate that the litigious domain name may have been used for email addresses, thus raising possible concerns of phishing. However, there is no sufficient on record to support this.
This will not prevent a finding of bad faith passive holding, though. The Panel cannot foresee any legitimate use of a domain name that is a copycat of the domain name used by the Complainant, and which incorporates the very well-known trade mark CARREFOUR.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied.
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 <fondation-carrefour.com> be transferred to the Complainant.
Martine Dehaut
Sole Panelist
Date: August 30, 2018