WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Super Privacy Service LTD c/o Dynadot

Case No. D2019-2236

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America.

2. The Domain Name and Registrar

The disputed domain name <carrefuer.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 23, 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 the French retail company Carrefour, which operates in more than 30 countries, including in Brazil, where it was established in 1975.

The Complainant owns numerous CARREFOUR trademark registrations in different countries, such as the International trademark No. 353849, registered on February 28, 1969, and the Brazilian Trademark No.
830532692, registered on December 26, 2012.

In addition, the Complainant also owns several domain names reflecting its trademark CARREFOUR, including <carrefour.com>, registered on October 25, 1995, and <carrefour.com.br>, registered on January 18, 1997.

The Respondent registered the disputed domain name <carrefuer.com> on December 19, 2018.

According to the Complaint, the disputed domain name once resolved to a parking page displaying sponsored links. At the time of filing of the Complaint, the disputed domain name redirected to the Complainant’s official website in Brazil. The Panel accessed the disputed domain name on November 4, 2019, which still resolved to the Complainant’s official website in Brazil, at “www.carrefour.com.br”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant and its trademark CARREFOUR enjoy a worldwide reputation. The Complainant’s trademark CARREFOUR has been considered to be “well-known” or “famous” by numerous previous UDRP panels. The disputed domain name is a deliberate misspelling of the Complainant’s trademark CARREFOUR. This practice is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar trademark to the Complainant’s trademark. Moreover, the alterations made by the Respondent are insufficient to distinguish the disputed domain name from the Complainant’s trademark since the term “carrefuer” may necessarily lead Internet users to believe that the disputed domain name is linked to the Complainant. Finally, the extension “.com” 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.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the CARREFOUR trademark precedes the registration of the disputed domain name by many years. The Respondent is not commonly known by the disputed domain name or by the name “carrefour”. The Respondent cannot assert that, before any notice of this dispute, it was using, or had made 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. Furthermore, previous UDRP panels 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 names could reasonably be claimed. The Respondent has not made, and is not making a legitimate noncommercial or fair use of the disputed domain name. Initially, the disputed domain name resolved to a parking page with pay-per-click links (PPC). Now, the disputed domain name redirects to the Complainant’s official website in Brazil. 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.

- The disputed domain name was registered and is being used in bad faith. Bad faith can be found where a 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. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Firstly, the Complainant is wellknown throughout the world. Secondly, the composition of the disputed domain name imitating the Complainant’s trademark, as well as the redirection of the disputed domain name towards the Complainant’s official website indicates that the Respondent knew about the Complainant. Thirdly, the Complainant’s CARREFOUR trademark registration significantly predates the registration date of the disputed domain name. The composition of the disputed domain name, which consists of a deliberate misspelling of the Complainant’s trademark CARREFOUR, constitutes evidence of bad faith. Also, by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent is voluntarily creating a risk of confusion by suggesting that it is somewhat linked to the Complainant and therefore could benefit from its audiences’ trust to – possibly – later redirect them to other websites. 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 trademark, and its redirection towards the Complainant’s official website in Brazil, 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. All aforementioned circumstances confirm that the disputed domain name is also being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “carrefour” is a term directly connected with the Complainant’s trademarks.

Annex 5 to the Complaint shows trademark registrations for CARREFOUR such as:

- European Union Trademark Registration No. 005178371, filed on June 20, 2006, and registered on August 30, 2007;

- European Union Trademark Registration No. 008779498, filed on December 23, 2009, and registered on July 13, 2010;

- International trademark Registration No. 353849, protected in, inter alia, the Czech Republic, Estonia, Croatia, Hungary, Lithuania, Latvia, Serbia, Slovenia, and Slovakia, registered on February 28, 1969;

- Brazilian Trademark Registration No. 830532692, filed on February 18, 2010, and registered on December 26, 2012.

The disputed domain name differs from the Complainant’s trademark CARREFOUR by the substitution of the letters “ou” by the letters “ue” (”carrefuer” instead of “carrefour”) and the addition of the generic Top-Level Domain (“gTLD”) extension “.com”.

Concerning the misspelling of the Complainant’s trademark, this practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently linked to a PPC advertising scheme and currently it redirects to the Complainant’s official website in Brazil.

The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why it has chosen the specific term “carrefuer” to compose the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in December 2018), the trademark CARREFOUR was already well known and directly connected to the Complainant’s retail services.

Also, the disputed domain name is currently redirecting to the Complainant’s official website in Brazil, indicating that the Respondent has indisputable knowledge on the Complainant’s business.

Therefore, the Panel also concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “carrefuer” together with the gTLD extension “.com” could be a mere coincidence.

Furthermore, the Respondent’s former use of the disputed domain name in connection with a PPC scheme may have potentially generated revenues and enhanced the likelihood of confusion with the Complainant’s trademark. Previous UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. The likelihood of confusion is now emphasized by the redirection of Internet users to an official website of the Complainant.

Finally, the passive posture of the Respondent, not at least providing justifications for the use of a misspelled version of a well-known, third party trademark, certainly cannot be used in benefit of the Respondent in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <carrefuer.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: November 6, 2019