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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Tucows Domains Inc. / Torsten Littmann

Case No. D2019-2328

1. The Parties

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

The Respondent is Tucows Domains Inc., Canada / Torsten Littmann, Germany.

2. The Domain Name and Registrar

The disputed domain name <acces-passcarrefour.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 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 September 26, 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 30, 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 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2019.

The Center appointed Michael D. Cover as the sole panelist in this matter on October 30, 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 French company, with registered office in France.

The Respondent is Torsten Littmann, from Germany, the identity of the Respondent having been revealed by the Registrar of the Disputed Domain Name after the filing of the Complaint. The Disputed Domain Name was registered on October 13, 2018 and initially resolved to a default page of the Registrar of the Disputed Domain Name. In addition, an email server was initially configured on the Disputed Domain Name but the Disputed Domain Name now redirects to an inactive page.

The Complainant operates more than 12,000 stores and e-commerce sites in more than 30 countries. The Complainant employs more than 360,000 people worldwide and generated EUR 84.91 billion sales (including VAT) in 2018. The Complainant operates in three major markets, Europe, Latin America and Asia. Whilst based in France, the Complainant generates more than 50 per cent of its sales outside France.

The Complainant also offers banking and insurance services through a subsidiary, Carrefour Banque, and these include the PASS Mastercard.

Before the issue of the Complaint, the Complainant sent notifications of its rights to the registrar of the Disputed Domain Name and the relevant email service provider, requesting the registrar put the Disputed Domain Name on “ClientHold” and deactivate the Disputed Domain Name. No amicable settlement could be found and the Complainant then initiated the current Complaint.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that its trademarks CARREFOUR and CARREFOUR PASS enjoy a worldwide reputation. The Complainant noted that it owns numerous CARREFOUR and CARREFOUR PASS trademark registrations around the world. The Complainant particularly notes that it is the proprietor of European Union trademarks registration No. 008779498 CARREFOUR dated December 23, 2009 in Class 35, registration No. 005178371 CARREFOUR dated June 20, 2006 in Classes 9, 35 and 38 and International Trademark registration No. 719166 CARREFOUR PASS dated August 18, 1999, protected, inter alia in China, Switzerland, Italy, Hungary and Portugal in Class 36.

The Complainant also states that it operates its business under various domain names, which incorporate its CARREFOUR trademark, including <carrefour.com> and <carrefour.fr>, the former having been registered in 1995.

The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks CARREFOUR and CARREFOUR PASS. The Complainant notes that the Disputed Domain Name reproduces the Complainant’s trademark CARREFOUR in its entirety. The Complainant notes that its trademark CARREFOUR has been considered to be “wellknown” or “famous” in a number of previous UDRP decisions, including Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976. The Complainant also notes that, in many WIPO UDRP decisions, Panels have decided that the incorporation of a well-known trademark in its entirety in a disputed domain name may be sufficient to establish that the disputed domain name in question is confusingly similar to the relevant Complainant’s registered trademark.

The Complainant also submits that the Disputed Domain Name is confusingly similar to its CARREFOUR PASS trademark. It notes that the only difference is the inversion of the terms “carrefour” and “pass” and the addition of the term “access” and the hyphen. The Complainant notes that previous panels have found that the addition of a hyphen is insufficient to distinguish a disputed domain name from a Complainant’s trademarks and also that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account when considering the issue of similarity. The Complainant submits that it is well established that the addition of the gTLD “.com” is insufficient to avoid a finding of confusing similarity.

The Complainant concludes by submitting that the public has learnt to perceive goods and services offered under its trademarks CARREFOUR and CARREFOUR PASS as being those of the Complainant and that Internet users could therefore associate the Disputed Domain Name with the CARREFOUR brand and its PASS card service. The Complainant states that, by registering the Disputed Domain Name, the Respondent has created a likelihood of confusion with the Complainant’s trademarks.

For all the reasons that it has submitted, says the Complainant, the Disputed Domain Name is confusingly similar to the trademarks CARREFOUR and CARREFOUR PASS, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

Rights or Legitimate Interests

The Complainant states that the Respondent is neither affiliated with it or authorized by the Complainant to use the Complainant’s trademarks. The Complainant also submits that the Respondent is unable to claim prior rights in the Disputed Domain Name, as the CARREFOUR and CARREFOUR PASS trademarks predate the registration of the Disputed Domain Name by years.

The Complainant also states that the Respondent is not commonly known by the Disputed Domain Name or the names CARREFOUR and/or CARREFOUR PASS. The Complainant continues that the Disputed Domain Name resolves to an inactive page and the Respondent has not made any reasonable and demonstrable preparations to use the Disputed Domain Name. The Complainant submits that the Respondent fails to show any intention of non-commercial or fair use of the Disputed Domain Name.

The Complainant says that the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Complainant submits that the use of the Complainant’s trademarks to attract users to a website unrelated to the Complainant cannot be deemed as legitimate activity and bona fide offering of goods or services.

The Complainant concludes, for all the reasons that it has put forward, that the Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

The Complainant states that bad faith can be found wherever 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 and submits that it was implausible that the Respondent was unaware of the Complainant’s rights.

The Complainant also notes that the Disputed Domain Name in fact incorporates both of the Complainant’s trademarks, CARREFOUR and CARREFOUR PASS. It submits that, given the reputation of the Complainant’s trademarks, bad faith should be inferred, not least as the Complainant’s trademark rights significantly predate the registration of the Disputed Domain Name.

The Complainant states that a simple Google search would have found its trademarks CARREFOUR and CARREFOUR PASS, that it is hard to believe that the Respondent was unaware of the existence of those trademarks and that it is most likely that the Respondent registered the Disputed Domain Name CARREFOUR PASS to divert Internet traffic to the Respondent’s website.

The Complainant concludes on registration in bad faith by reminding the Panel that the Respondent does not use Disputed Domain Name and restates that the Respondent registered the Disputed Domain Name in bad faith.

The Complainant also submits that the Disputed Domain Name is being used in bad faith. It notes that the Disputed Domain Name is currently inactive and that previous panels have considered that passive holding of a disputed domain name can constitute use in bad faith and cited in support, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In particular, states the Complainant, the Complainant’s trademarks have a strong reputation and are widely-known, the Respondent has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name and the Respondent had taken active steps to conceal its real identity. The Complainant also states that it is highly likely that the Respondent registered the Disputed Domain Name to prevent the Complainant from using its trademarks in a corresponding domain name.

The Complainant also submits that an additional strong indication of bad faith is the fact that an email server had originally been configured on the Disputed Domain Name and thus there was a risk that the Respondent intended to engage or had engaged in a phishing scheme.

The Complainant sums up by stating that the Disputed Domain Name has been registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

The Remedy requested by the Complainant

In accordance with paragraph 4(i) of the Policy, for the reasons that it has advanced, the Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s CARREFOUR trademark, in which it has rights, and also to the Complainant’s trademark CARREFOUR PASS, in which it has rights. The Panel is satisfied that the Complainant has established registered rights in its CARREFOUR and CARREFOUR PASS trademarks. The Panel accepts that the addition of the gTLD “.com” does not affect that conclusion and that it is well-established in previous UDRP decisions that this is the case. The Panel also accepts that the Disputed Domain Name incorporates both of the Complainant’s trademarks, albeit, in the case of the trademark CARREFOUR PASS, with the two elements of that trademark reversed. The Panel is also satisfied that the addition of the hyphen and the non-distinctive element “access” is insufficient to avoid a finding of confusing similarity.

The Panel decides that requirements of paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not been licensed by the Complainant to use the Complainant’s trademarks CARREFOUR or CARREFOUR PASS. The Panel accepts that the burden then shifts to the Respondent.

The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly known by the Disputed Domain Name nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the CARREFOUR trademark of the Complainant. The Panel accepts the evidence of the Complainant that such use as has been taking place has consisted of the Disputed Domain Name resolving to a parking page, with a link to PPC sites in the same area of business as the Complainant, and that this certainly cannot be described as legitimate noncommercial use.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel accepts that the Complainant’s trademarks CARREFOUR and CARREFOUR PASS are so wellknown that it is inconceivable that the Respondent was unaware of the Complainant’s trademarks when registering the Disputed Domain Name and that it is reasonable inference that this was done in order to divert Internet traffic to the Respondent’s website, thereby fulfilling one of the circumstances in the non-limiting list in paragraph 4(b) of the Policy. The Panel also notes that panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith and the Panel adopts this approach in this case.

The Panel also accepts that the Disputed Domain Name is being used in bad faith and adopts the reasoning adopted in, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It is well established that a disputed domain name being inactive is not a bar to finding of a disputed domain name is being used in bad faith and, further, is actually in circumstances such as this an indication of use in bad faith.

The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met.

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 <acces-passcarrefour.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: November 5, 2019.

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