Carrefour, S.A., Viajes Carrefour S.L. v. Pablo Iglesias Junco
Case No. D2008-1040
1. The Parties
The Complainants are Carrefour, S.A. (First Complainant), Levallois Perret, France, and Viajes Carrefour S.L. (Second Complainant), Madrid, Spain, represented by J.-P. KARSENTY & Associés, France.
The Respondent is Pablo Iglesias Junco, Madrid, Spain.
2. The Domain Name and Registrar
The disputed Domain Name <viajescarrefour.com> is registered with Blue Razor Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2008. On July 11, 2008, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the domain name at issue. On July 11, 2008, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 18, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on August 15, 2008. 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
Carrefour is the owner of the trade and service mark CARREFOUR in seventy four countries all over the world.
Viajes Carrefour is the owner of the service mark VIAJES CARREFOUR registered in classes 36, 41, 39, and 42.
The Complainants are also the owner of over 300 domain names including the mark CARREFOUR such as <carrefour-voyage.com>, <carrefour-voyages.fr>, <carrefour-voyages.com>, <carrefourvoyage.com>, <carrefourvoyages.com>, <carrefourvoyage.fr>, <voyage-carrefour.fr>, <voyagecarrefour.fr>, <voyagecarrefour.com>, <voyagescarrefour.fr>, <voyagescarrefour.com>, <carrefour-travel.com>, <carrefour-viaggi.com>.
The Respondent registered the Domain Name <viajescarrefour> on January 11, 2004.
5. Parties’ Contentions
A. Complainants
The Complainants indicate that the Carrefour group, founded in 1959, is very well-known as one of the world’s leading distribution groups (the world’s second largest retailer and the largest in Europe).
The Complainants inform the Panel thatthe CARREFOUR trademark ranks second amongst the most valuable European trademarks in retail services.
The Complainants state that the domain name <viajescarrefour.com>is identical to the trademark VIAJES CARREFOUR and is clearly confusingly similar to the trade and service mark CARREFOUR.
According to the Complainants the addition of the generic word “viajes” (“travel” in English) does not remove the confusing similarity between the trademark and the domain name. The Complainants emphasize that several panelists have considered that domain names incorporating the Complainant’s CARREFOUR registered trademark in their entirety and generic words, notably the word “voyage” (“travel” in English), are confusingly similar to and are not capable to sufficiently be differentiated from the said trademark, which are well-known.
The Complainants indicate that Carrefour group provides travel services, using the name “Viajes Carrefour”, through its subsidiary Viajes Carrefour S.L.U., which was registered in Spain in 2001 and which achieved in 2007 11,064,818 euros revenues thanks notably to its travel agencies located in Carrefour supermarkets in Spain.
The Complainants further state that the “Viajes Carrefour” activity is also promoted through the Internet and a website available at “http://www.carrefour.es/viajes/”.
With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainants assert that the Respondent has no rights to or legitimate interests in, and does not make a legitimate non-commercial or fair use of, the Domain Name.
The Complainants underline that the domain name <viajescarrefour.com> is passively held since its registration on January 11, 2004.
The Complainants emphasize that the Respondent has no legal relationship and has neither been consented to nor acquiesced in the use of the disputed Domain Name.
The Complainants contend that the mark CARREFOUR has acquired a strong distinctive character especially in Spain due to extensive investments in promotion and advertising. In view of the well known character of the mark, the Complainants assert that the Respondent has no legitimate interest.
With reference to the circumstances evidencing bad faith registration, the Complainants indicate that the mark CARREFOUR has become very well-known around the world and is particularly known in Spain, homeland of the Respondent. The Complainants further states that there are many VIAJES CARREFOUR travel agencies located in CARREFOUR supermarkets in Spain.
In view of the above, the Complainants conclude that the Respondent was aware, at the time of registration of the disputed Domain Name, of the prior and exclusive rights held by the Complainants on the CARREFOUR and VIAJES CARREFOUR trademarks, and of their activity, notably in Spain, in travel business.
The Complainants further inform the Panel that CARREFOUR is the owner of over 300 domain names comprising the mark CARREFOUR including the domain name <carrefour-viajes.com> since 2000.
The Complainants point out that CARREFOUR has recently recovered, through UDRP proceedings the domain names <carrefourvoyages.com>,<carrefour-voyage.com>, <voyage-carrefour.com> and <voyagecarrefour.com>, which had been registered and used in bad faith by third parties.
The Complainants point out that the Respondent has already been ordered to transfer a domain name as a result of a UDRP procedure, and can thus be considered as having engaged in a pattern of such bad faith conduct.
As to the additional circumstances evidencing bad faith use, the Complainants contend that the contested Domain Name is passively held for more than 4 years.
Furthermore, the Complainants assert that the Respondent, although it was officially informed of the Complainants’ rights by a cease and desist letter requesting the transfer of the disputed Domain Name, failed to comply with such requests and never answered to the cease and desist letter of CARREFOUR, which constitutes per se an additional element of bad faith registration
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of national trademark registration VIAJES CARREFOUR in Spain where the Respondent is based. The Panel finds that the disputed Domain Name is therefore identical to the trademark owned by the Complainants. Furthermore, the Panel finds that the disputed Domain Name is also confusingly similar to the trade marks CARREFOUR owned by the Complainants. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
The Panel shares the view held in Eroski S. Coop v. SergeiP,
WIPO Case No. D2006-0102, where the Panel found that “The Spanish word “viajes” indicates typical services, namely travel agency services, that the Complainant provides under its trade name and trademarks in Spain. The term “viajes” added to the Complainant’s company name and trademarks “EROSKI” in the domain name therefore does not only lack any distinctive character with regard to these signs owned by the Complainant but reinforces the confusing similarity of the domain name to these trademarks of the Complainant in the view of the Spanish speaking public.”
Therefore, the mere addition of the word “Viajes” does not at all exclude the likelihood of confusion between the Domain Name and the Complainants’ trademarks. See along these lines also the cases dealing with similar trademarks already decided in favour of the Complainants like, <carrefourgroup.com>, <carrefour-group.com> and <newcarrefourgroup.com>
WIPO Case No. D2000-0837; <groupecarrefour.com>
WIPO Case No. D2007-0067; <carrefourvoyages.com>
WIPO Case No. D2002-0623; <carrefour-voyage.com>
WIPO Case No. D2007-0517; <voyage-carrefour.com> and <carrefourfinance.com>
WIPO Case No. D2007-0563 and <voyagecarrefour.com>
WIPO Case No. D2007-1522.
In comparing the Complainants’ trademarks to the Domain Name with reference to <viajescarrefour.com> it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the Domain Name. See Rollerblade, Inc. v. McCrady,
WIPO Case No. D2000-0429 “the specific top level of the Domain Name such as ‘.net’ or ‘.com’ does not affect the Domain Name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,
WIPO Case No. D2000-1770 “the accused Domain Name <chevychasebank.org> is legally identical to Complainant’s trade name “CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainants have proven that the disputed Domain Name is identical to the trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainants show prima facie case in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights and legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy as decided e.g. in Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Name.
Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants’ trademarks.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services or intends to make a legitimate, non commercial or fair use of the Domain Name.
The Panel notes that the Domain Name is passively held. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,
WIPO Case No. D2006-0483 where the Panel found that “Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute “legitimate non-commercial or fair use””. See Euromarket Designs, Inc. v. Domain For Sale VMI,
WIPO Case No. D2000-1195 (noting that respondent was a passive holder of the disputed Domain Name <crateandbarrel.org> in that “the Domain Name does not resolve to a site” and ruling that, “[g]iven that the Domain Name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the Domain Name) and Netcentives, Inc. v. B.W. Brody Co.,WIPO Case No. D2000-0672 (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the Domain Name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s 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 the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of the large presence in Spain where the Respondent is located since 1973, the number of 14,576 Carrefour stores all over the world and of 2,963 stores in Spain, the Viajes Carrefour travel agencies located in many Carrefour supermarkets, the amount of 11,064,818 euros revenues in 2007 achieved by the Complainants and the national trademark registrations, the Respondent was well aware of the Complainant’s trademarks.
Furthermore, the Panel finds that the trademark CARREFOUR is well-known as also stated in Carrefour SA contre Eric Langlois,
WIPO Case No. D2007-0067 and Carrefour S.A. v. Damian Macafee,
WIPO Case No. D2002-1060.
As stated inter alia in DHL Operations B.V v. Net Marketing Group,
WIPO Case No. D2005-0868 “it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to the issue of the non use of the Domain Name by the Respondent, the Panel finds that in light of the circumstances highlighted by the Complainants in the present case and the documents provided the “passive holding” certainly justifies an inference of bad faith, particularly in view of the well known character of the Complainant’s trademark. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but can in appropriate circumstances also encompass passive holding; see e.g. the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 .
In Nike, Inc. v. Crystal International,WIPO Case No. D2002-0352 as well as in many other decisions, it was held that non use of a domain name as such does not necessarily determine bad faith. However, the non use for a long time of the domain name, while the trade marks CARREFOUR and VIAJES CARREFOUR have been widely publicized globally and constantly featured throughout the Internet, is certainly evidence of bad faith here (see among others, Carrefour SA contre Eric Langlois,
WIPO Case No. D2007-0067).
The Panel agrees with the consensus view that the registration of two domain names is generally not sufficient to establish “a pattern of such conduct” under paragraph 4(b)(ii) of the Policy. Nevertheless, in the present case the Panel considers it as an additional circumstance evidencing bad faith, in view of the well-known character of the CARREFOUR trademark.
In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,
WIPO Case No. D2002-0787, “any such bad faith is compounded when the domain name owner upon receipt of notice that the domain name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <viajescarrefour.com> be transferred to the Complainants.
Luca Barbero Sole Panelist
Dated: August 29, 2008
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