WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Not disclosed Not disclosed

Case No. D2019-2334

1. The Parties

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

The Respondent is Not disclosed Not disclosed, France.

2. The Domain Name and Registrar

The disputed domain name <carrefouʀ.com> [xn--carrefou-50d.com] is registered with Internet Domain Service BS Corp (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 26, 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 October 4, 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 October 8, 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 October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 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.

The Complainant owns numerous CARREFOUR 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 Trade Mark CARREFOUR No. 353849, protected in, inter alia, Benelux, Estonia, Montenegro, Serbia, Czech Republic, Morocco, Slovenia, Slovakia, Lithuania, Hungary, registered on February 28, 1969 duly renewed, and covering services in classes 35, 36, 37, 38, 39, 40, 41 and 42.

The disputed domain name was registered by the Respondent:

- <carrefouʀ.com> [xn--carrefou-50d.com], on July 30, 2019.

At the time of the drafting of the decision, the disputed domain name does not resolve to an active website. According to the evidence submitted by the Complainant, the disputed domain name used to redirect to <Carrefour-achat.fr>, a webpage, which displayed the Complainant’s Trade Mark and offered Internet users to participate in a contest and take a survey.

5. Parties’ Contentions

A. Complainant

The Complainant first alleges that the disputed domain name is confusingly similar to its earlier trademarks CARREFOUR.

The disputed domain name reproduces entirely the Complainant’s trademark CARREFOUR, which numerous previous UDRP panels have considered “well known” or “famous”.

Second, the Complainant alleges that 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 he been authorized or licensed by the Complainant to use and register its trademarks CARREFOUR, 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 trademarks preceded the registration of the disputed domain name for years.

The Respondent is not commonly known by the disputed domain name or the name “Carrefour”.

In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

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

Registered in bad faith:

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

Secondly, the composition of the disputed domain name <carrefouʀ.com>, which entirely reproduces Complainant’s trademark CARREFOUR, and the previous redirection of said domain name towards a webpage displaying the Complainant’s trademark and logo CARREFOUR, confirm that the Respondent was aware of the Complainant and its trademark.

Thirdly, the Complainant’s CARREFOUR trademark registrations significantly predate the registration date of the disputed domain name, which was registered in 2019.

Used in bad faith:

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

According to the Complainant:

- the Complainant and its trademarks CARREFOUR 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;
- the Respondent has not provided any evidence of actual or contemplated use in good faith of the disputed domain name.

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.

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 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.

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, which predate the registration of the disputed domain name.

A comparison between the disputed domain name and the CARREFOUR trademarks shows that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name <xn--carrefou-50d.com> translates as the Internationalized domain name (“IDN”) <carrefouʀ.com> and thus reproduces the Complainant’s trademark.

The Panel notes in this respect that prior UDRP panels have found IDNs and their Punycode translations to be equivalent.

See Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211 (“the use of Punycode to create a domain name indistinguishable from a well‑known trademark manifestly does not prevent a finding of identity or confusing similarity between the two”) with reference to Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi v. Moniker Privacy Services / H A Lempka - Alpha Domains, WIPO Case No. D2013-2244; see also AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233.

As a result, based on the rights of the Complainant in the trademarks and on the confusing similarity between the disputed domain name and the trademarks, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

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 name.

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 name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, 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 name, 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 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 trademarks.

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

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 name.

As the Respondent has not provided otherwise, 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 web site 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 web site or location or of a product or service on your web site 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 name.

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

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

Accordingly, the Panel finds that the Respondent registered the disputed domain name 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 disputed domain name has been registered and is 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 name <carrefouʀ.com> [xn--carrefou-50d.com] be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: November 14, 2019