WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Contact Privacy Inc. / Telford Foucault

Case No. D2019-2308

1. The Parties

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

The Respondent is Contact Privacy Inc., Canada / Telford Foucault, France.

2. The Domain Name and Registrar

The disputed domain names, <carrefourpass-ssl3.com>, <ssl3-carrefourpass.com>, and <ssl3carrefourpass.com>, are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 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 September 27, 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 September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2019.

The Center appointed Alexandre Nappey as the sole panelist in this matter on October 31, 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 company Carrefour which operates more than 12,000 stores and e‑commerce sites in more than 30 countries.

Carrefour Banque, a subsidiary of the Complainant has been offering various products and services such as the payment card “PASS Mastercard”.

The Complainant owns numerous CARREFOUR and CARREFOUR PASS trademark registrations around the world.

The Complainant is in particular the owner of the following trademark registrations:

- European Union Trade Mark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010, and covering services in class 35;

- European Union Trade Mark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007, duly renewed, and covering goods and services in classes 9, 35 and 38;

- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed, and covering services in classes 35, 36, 37, 38, 39, 40, 41 and 42;

- French trademark CARREFOUR PASS No. 99780481, registered on March 12, 1999, duly renewed, and covering services in classes 36;

- International trademark CARREFOUR PASS, No. 719166, registered on August 18, 1999, duly renewed, covering services in class 36.

The disputed domain names were registered by the Respondent:

- <ssl3carrefourpass.com>: on July 19, 2019;

- <ssl3-carrefourpass.com>: on July 19, 2019;

- <carrefourpass-ssl3.com>: on July 20, 2019;

At the time of the drafting of the decision, the disputed domain names resolve toward inactive pages.

5. Parties’ Contentions

A. Complainant

The Complainant first alleges that the disputed domain names are identical or confusingly similar to its earlier trademarks CARREFOUR and CARREFOUR PASS.

The disputed domain names reproduce the Complainant’s trademark CARREFOUR, which numerous previous UDRP panels have considered to be “well known” or “famous”, in its entirety.

The disputed domain names are composed of:

- the term “ssl3” indicates “Secure Sockets Layer” and connotes a method of encrypting information on the Internet, which is likely to make Internet Users believe that they are visiting a more secure site;

- the Complainant’s trademarks CARREFOUR and CARREFOUR PASS; and

- a hyphen (for two of them), which is insufficient to distinguish the disputed domain names from the Complainant’s trademarks.

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

The Respondent is neither affiliated with the Complainant in any way nor has it been authorised or licensed by the Complainant to use and register its trademarks CARREFOUR and CARREFOUR PASS, or to seek registration of any domain name incorporating the aforesaid trademarks.

The Respondent cannot claim prior rights or legitimate interests in the disputed domain names as the CARREFOUR and CARREFOUR PASS trademarks preceded the registration of the disputed domain names by years.

The Respondent is not commonly known by the disputed domain names or the names “Carrefour” and/or “Carrefour Pass”.

In addition, as the disputed domain names all resolve to inactive pages, the Respondent can not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Moreover, an email server was initially configured on the disputed domain names <ssl3carrefourpass.com>, <ssl3-carrefourpass.com>, and <carrefourpass-ssl3.com>, and thus there might be a risk that Respondent was engaged in a phishing scheme. Therefore, the disputed domain names have not been used and are not being used in any type of legitimate business or services.

Finally, the Complainant claims that the disputed domain name were registered and are being used in bad faith.

- Registered in bad faith:

Firstly, the Complainant alleges that CAREFFOUR and CARREFOUR PASS are well known throughout the world and that, given the reputation of these trademarks, registration in bad faith of the disputed domain names can be inferred: it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names.

Secondly, the Complainant alleges that the composition of the disputed domain names, which reproduces not one, but two of the Complainant’s trademarks, CARREFOUR and CARREFOUR PASS, and which are related to the Complainant’s banking activities, strongly suggest that the Respondent had the Complainant’s trademark and activities in mind when registering the disputed domain names.

Thirdly, the Complainant’s CARREFOUR and CARREFOUR PASS trademark registrations significantly predate the registration date of the disputed domain names, which were registered in 2019.

- Used in bad faith:

The Respondent is attempting to take undue advantage from the registration of disputed domain names which are confusingly similar in all aspects with the Complainant’s trademarks.

According to the Complainant:

- the Complainant and its trademarks CARREFOUR and CARREFOUR PASS have a strong reputation and are widely known throughout the world, including in France, where the Respondent is residing;

- in view of the notoriety of the Complainant, no possible use in good faith is conceivable; and

- the Respondent has not provided any evidence of actual or contemplated use of the disputed domain names in good faith.

The Complainant alleges that an additional strong indication of bad faith is the fact that an email server had been originally configured on the disputed domain names, and that thus there was a risk that the Respondent intended to engage or was already engaged in a phishing scheme.

Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain names which are 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 names, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain names are 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 names; and

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

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules, and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in CARREFOUR and CARREFOUR PASS which predate the registration of the disputed domain names.

The Panel finds that the disputed domain names are confusingly similar to the registered CARREFOUR and CARREFOUR PASS trademarks owned by the Complainant.

Indeed, the disputed domain names incorporate the entirety of the Complainant’s CARREFOUR and CARREFOUR PASS trademarks with the mere addition of a hyphen (for two of them) and the expression “ssl3” which stands for “Secure Sockets Layer” protocol, a standard security technology for establishing an encrypted link between a web server and a client.

This mention of “ssl3” is intended to make Internet users believe that they are on a secure website.

The dominant part of the disputed domain name is the Complainant’s trademarks CARREFOUR and CARREFOUR PASS, and the addition of the term “ssl3” and the hyphen does not avoid a finding of confusing similarity.

See, in similar circumstances: Carrefour v. Tucows Domains Inc. / Torsten Littmann, WIPO Case No. D2019-2328, and Credit Agricole S.A. v. Diego Giovanni Ferrero, WIPO Case No. D2016-0467.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels consistently find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, the burden of production on this element shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name.

See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465.

Here, the Complainant has stated that it has not authorized, licensed, or consented to the Respondent any use of its CARREFOUR and CARREFOUR PASS trademarks.

It results from these circumstances that the Respondent does not own any right in the trademarks CARREFOUR or CARREFOUR PASS or is commonly known by the disputed domain names.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

“For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

Since CARREFOUR is a well known and distinctive trademark and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names.

See, for example, Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578, WIPO Case No. D2018-2203.

Moreover, it appears that the Respondent is already involved in another pending UDRP proceeding filed by the Complainant ( WIPO Case No. D2019-2345) concerning the domain name <secure‑carrefourpass.com>.

In addition, it appears that the Respondent acquired not only one but four disputed domain names incorporating the Complainant’s trademarks.

The Complainant submitted printouts showing that an email server has been set up on the disputed domain names by the Respondent.

This is likely reflective of a future phishing attempt, which further supports a finding of bad faith registration and use of the disputed domain names.

Thus, the Panel cannot conceive any use that the Respondent could make of the disputed domain names that would not interfere with the Complainant’s trademark rights.

Accordingly, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.

In these circumstances the Panel holds that the three disputed domain names were registered and are being used in bad faith.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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, <carrefourpass-ssl3.com>, <ssl3-carrefourpass.com>, and <ssl3carrefourpass.com>, be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: November 14, 2019