WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Kerim Tozlu

Case No. D2019-1890

1. The Parties

The Complainant is Carrefour, France, represented by Dreyfus & associés, France.

The Respondent is Kerim Tozlu, Turkey.

2. The Domain Names and Registrar

The disputed domain names <carrefourminimarketim.com>, <carrefoursahiperim.com>, <carrefoursaminimarket.com>, <carrefoursaminimarketim.com>, and <minicarrefoursa.com> are registered with Reg2C.com Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 2019, 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 August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019.

The Center received an email communication form the Respondent on August 27, 2019, in response to which the Center sent to the Parties an email regarding possible settlement on August 28, 2019. The Complainant requested suspension of the proceeding on August 29, 2019. Accordingly, on the same day, the proceeding was suspended until September 28, 2019. On September 20, 2019, the proceeding was reinstituted upon the Complainant’s request. On September 25, 2019, the Center received another email communication from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on September 30, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on October 8, 2019. 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 food retailer with nearly 12,000 stores in more than 30 countries. Together with its Turkish partner Carrefour SA, it also runs many stores in Turkey since 1993.

The Complainant has registered the word and figurative trademark CARREFOUR mainly in classes 35, and 38 in numerous jurisdictions, including Turkey. According to the case record, the first trademark covering protection in Turkey was registered on April 16, 2009, with the International Registration no. 1010661 and, hence, many years before the registration of the disputed domain names.

The Complainant has further registered and operates the trademark CARREFOUR as domain names under several generic Top-Level Domains (“gTLDs”), e.g., <carrefour.com> and <carrefoursa.com>.

According to the current record, the disputed domain names were registered as follows:

<carrefourminimarketim.com> October 13, 2015
<carrefoursahiperim.com> March 6, 2017
<carrefoursaminimarket.com> October 9, 2015
<carrefoursaminimarketim.com> October 9, 2015
<minicarrefoursa.com> October 9, 2015

The Respondent is an individual from Turkey.

At the time of the Decision, the disputed domain names were parked. It also appears that the disputed domain names have not been actively used so far.

Prior to initiation of the administrative proceedings, the Complainant tried in vain to solve the dispute amicably by sending a cease-and-desist letter to the Respondent and asking for the transfer of the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its CARREFOUR trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In its informal email communications to the Center on August 27, 2019, the Respondent merely requested that the Complainant should contact him directly and on September 25, 2019, he repeated his previous request.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the CARREFOUR trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in CARREFOUR. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks with regard to the CARREFOUR mark in many jurisdictions worldwide, including in Turkey.

Although not identical, the disputed domains names fully incorporate the Complainant’s CARREFOUR trademark.

As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within a disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. That is the case here. Particularly, the mere addition of dictionary Turkish terms like “mini”, “marketim” or “hiperim” (which is “mini”, “my market” and “my hypermarket” in the English language) does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s CARRFOUR trademark.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s CARREFOUR trademark in a confusingly similar way within the disputed domain names.

In the absence of a substantive Response to the Complainant’s contentions, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain names. In particular, the Panel does not see any indication for assessing a bona fide offering of goods or services by the Respondent.

In addition, the Panel notes that also the nature of the disputed domain names carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, the Respondent has registered and is using the disputed domain names in bad faith.

The Panel is convinced that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain names. The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s CARREFOUR trademark, apparently for illegitimate commercial gain and/or to disrupt the Complainant’s business.

By registering multiple domain names all containing the Complainant’s CARREFOUR trademark as the distinctive part, the Respondent appears to be engaged in a bad faith pattern of domain name registration. Hence, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

Additionally, the Panel finds that the Respondent’s failure to substantively respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith.

All in all, the Panel cannot conceive of any good faith use of the disputed domain names which is not related to the CARREFOUR trademark owned by the Complainant.

The fact that the disputed domain names currently resolve to a parking page does not change the Panel’s findings in this respect.

The Panel therefore concludes that the disputed domain names were registered and are used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. 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 names, <carrefourminimarketim.com>, <carrefoursahiperim.com>, <carrefoursaminimarket.com>, <carrefoursaminimarketim.com> and <minicarrefoursa.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: October 22, 2019