WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. WhoIsGuard Protected / Benoit Davini

Case No. D2019-1998

1. The Parties

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

The Respondent is WhoIsGuard Protected, Panama / Benoit Davini, Spain.

2. The Domain Name and Registrar

The disputed domain name <carrefour.gdn> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 23, 2019.

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 of the Complaint, and the proceedings commenced on August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.

The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on September 25, 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 based the Complaint on its trademark CARREFOUR, that enjoys a worldwide reputation, and for which the Complainant currently owns several trademark registrations, as per evidence attached to Annex 5 of the Complaint. For example, the Complainant owns rights in French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, and covering services in classes 35, 36, 37, 38, 39, 40, 41, 42, 43,44 and 45; and European Union trademark CARREFOUR No. 008779498, registered on July 13, 2010, covering services in class 35.

Further, besides said trademark registrations, the Complainant also operates several domain names reflecting its trademark CARREFOUR in order to promote its services (described in Annex 6 of the Complaint), such as <carrefour.com> and <carrefour.fr>.

The disputed domain name <carrefour.gdn> was registered on December 15, 2018 with NameCheap, Inc. (the “Registrar”).

The disputed domain name <carrefour.gdn> resolves towards a parking page displaying commercial links related to the Complainant and its activities.

5. Parties’ Contentions

A. Complainant

The Complainant Carrefour asserts that is a global leader in food retail with its headquarters in France. Since it was founded in 1958, the Complainant has acquired considerable goodwill and renown worldwide, in connection with a wide range of services, including supermarkets and banking and insurance services. Carrefour operates more than 12,000 stores and e-commerce sites in more than 30 countries. It is a multi-local, multi-format and omni-channel retail Group that employs more than 360,000 people worldwide and generated EUR 84.91 billion sales in 2018. Every day, Carrefour welcomes around 13 million customers around the world (evidence on Annex 3).

A pioneer in countries such as Brazil in 1975 and China in 1995, the Carrefour Group currently operates on three major markets: Europe, Latin America and Asia. It has a presence in more than 30 countries and generates more than 53 % of its sales outside France.

The Complainant became aware of Respondent’s registration of the disputed domain name <carrefour.gdn> which reproduces Complainant’s trademark CARREFOUR. The disputed domain name <carrefour.gdn> resolves towards a parking page displaying commercial links related to the Complainant and its activities.

The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, Paragraph 4(a) (i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant is in particular the owner of the following trademark registrations (Annex 5):

- French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38;
- European Union trademark CARREFOUR No. 008779498, registered on July 13, 2010 and covering services in class 35.

In addition, the Complainant operates, among many others, the following domain names reflecting its trademark (Annex 6):

- <carrefour.com> registered on October 25, 1995;
- <carrefour.fr> registered on June 23, 2005.

The disputed domain name <carrefour.gdn> reproduces the Complainant’s trademark CARREFOUR in its entirety.

According to the Complaint, in many WIPO UDRP decisions, the Panels considered that the incorporation of a trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to Complainant’s registered trademark (see Swarovski Aktiengesellschaft v. mei xudong WIPO Case No. D2013-0150; , RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin WIPO Case No. D2010-1059).

Moreover, the extension “.gdn” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name as it is viewed as a standard registration requirement (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Indeed, the mere adjunction of a generic Top Level Domain (gTLD) such as “.gdn” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith WIPO Case No. D2013-0820; Alstom v. Itete Peru S.A. WIPO Case No. D2009-0877; and Boursorama S.A. contre Malotru Discount WIPO Case No. D2017-1658).

Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, Internet users might have surely been misled into thinking that it is, in some way, associated with the Complainant and thus may heighten the risk of confusion. Therefore, the condition of Paragraph 4(a)(i) of the Policy is fulfilled.

Furthermore, the Complainant asserts that prior panels have found that in the absence of any license or permission from the Complainant to use a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master WIPO Case No. D2010-0138). Also, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services”).

With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name in connection with a bona fide offering of goods or services. Presently, the disputed domain name resolves to a parking page with pay-per-click (PPC) links related to the Complainant and its activities (Annex 1).

The Respondent is taking unfair advantage of Complainant’s rights and is capitalizing on the reputation and goodwill of the Complainant’s marks by misleadingly diverting Internet users to its own website.

The Complaint states that Internet users are likely to believe that the disputed domain name is endorsed by the Complainant. According to Section 2.5.9 applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.

Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to the Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. It is implausible that Respondent was unaware of the Complainant when he registered the disputed domain name.

Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was Registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART, WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002 0806; Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000 1397).

A quick CARREFOUR trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).

The Complainant submits that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. In light of this knowledge, Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues (Annex 1). Panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing revenues through click to Respondent evidences bad faith. Indeed, Respondent is taking undue advantage of Complainant’s trademark to generate profits.

Besides, several UDRP panels concurred that “the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith” (SNCF v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025; and Mudd, LLC v. Unasi, Inc. WIPO Case No. D2005-0591).

Furthermore, an additional indication of bad faith is the fact that there were e-mail servers associated with the disputed domain name and thus, there was a risk that Respondent is engaged in a phishing scheme (Annex 1). Indeed, the use of an email address with the domain name <carrefour.gdn> presents a significant risk where Respondent could send phishing emails to Complainant’s employees or customers in order to obtain personal and financial information from them. Such risk has been recognized by prior panels as an indication of bad faith (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel considers that all the information provided by the Complainant clearly attests that the disputed domain name <carrefour.gdn> is identical to the Complainant’s trademark CARREFOUR. Further, the disputed domain name reproduces exactly and identically the well-known trademark CARREFOUR.

Accordingly, the Panel agrees with the Complainant’s contentions that the adjunction of a generic Top-Level Domain (gTLD) such as “.gdn” is disregarded for the first element of comparison the disputed domain name and the Complainant’s trademark. Therefore, this requirement has been satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the disputed domain name. Neither has the Respondent refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers that the Complainant has established an unrebutted prima facie case.

Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the owner of registered trademarks and associated domain names, including the mark CARREFOUR, which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of its CARREFOUR trademark to the Respondent.

In addition, the Panel notes that the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

Therefore, considering the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy.

C. Registered and Used in Bad Faith

This third element requires the Complainant to prove that the disputed domain name (1) was registered in bad faith and (2) is being used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.

The disputed domain name incorporates the Complainant’s trademark CARREFOUR entirely.

The Panel finds the Respondent must have had knowledge of the Complainant’s mark CARREFOUR and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being widely known internationally; (ii) the disputed domain name is identical to the Complainant’s trademark; (iii) the disputed domain name is used to direct Internet users to a webpage displaying pay-per-click links; (iv) the use of said domain name to divert Internet users and to direct them to a webpage providing revenues through click to the Respondent evidences bad faith; (v) the Respondent is taking undue advantage of Complainant’s trademark to generate profits, and (vi) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name.

Finally, given the identity of the disputed domain name with the Complainant’s CARREFOUR trademark and in light of the use given to the disputed domain name, the Panel agrees that the Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s CARREFOUR trademark within the meaning of paragraph 4(b)(iv) of the Policy.

Consequently, for all these reasons, the Panel finds that the Complainant has met the third element required of 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 name <carrefour.gdn> be transferred to the Complainant.

Rodrigo Velasco Santelices
Sole Panelist
Date: October 7, 2019