WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Telford Foucault

Case No. D2019-3191

1. The Parties

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

The Respondent is Telford .Foucault., France.

2. The Domain Name and Registrar

The disputed domain name <ssl4-carrefourpass.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2019. On December 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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 January 3, 2020, 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 January 8, 2020.

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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.

The Center appointed Emmanuelle Ragot as the sole panelist in this matter on February 10, 2020. 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, Carrefour, is a globally renowned leader in food retail with its headquarters in France, but provides also a wide range of services, including supermarkets, banking, insurance services.

Carrefour provides various facilities to customers holding the Carrefour PASS card such as payment facilities, online management and loyalty benefits. The PASS Mastercard is a credit card associated with the PASS credit that can be used at Carrefour and elsewhere.

The Complainant became aware of the Respondent’s registration of the disputed domain name <ssl4-carrefourpass.com>, which reproduces entirely its trademarks CARREFOUR and CARREFOUR PASS. The <ssl4- carrefourpass.com> was registered on July 28, 2019. The disputed domain name redirects to a website indicating that the site has not been published.

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

The Complainant is the owner of the following Trademark Registrations (“Marks”):

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

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

International trademark CARREFOUR No. 1010661, registered on April 16, 2009, duly renewed and covering services in class 35;

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

In addition, the Complainant operates, the following domain names reflecting its trademark in order to promote its services:

<carrefour.com> registered of October 25, 1995 <carrefourpass.com> registered on May 31, 2010, and, <carrefour.fr> registered on June 23, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns numerous registered trademarks, and it has registered numerous domain names that include the trademark CARREFOUR.

The Respondent has registered and used the disputed domain name which, according to the Complainant, is confusingly similar / identical to the CARREFOUR Marks, i.e. the Complainant group’s trademarks.

After examination of the file, no evidence is provided that the Respondent holds any license or any other type of authorization given by the legitimate holders of said trademarks to use the marks.

The Complainant also alleges that the disputed domain name containing the identical CARREFOUR Marks, is confusingly similar to the CARREFOUR Marks.

The Complainant points out that not only does the Respondent’s domain name contain the identical CARREFOUR Marks, but also the terms “ssl4” and “pass”. The addition of “ssl4” and “pas” to the Complainant’s Marks does not prevent a finding of confusing similarity. It has been held in previous decisions that such an addition is an irrelevant distinction that does not prevent a finding of confusing similarity.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel to: “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:

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

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

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

A. Identical or Confusingly Similar

The term CARREFOUR is the essential part of numerous trademarks of the Complainant which are registered in several countries.

The disputed domain name <ssl4-carrefourpass.com> is confusingly similar to the Complainant’s marks in which the Complainant enjoys substantial goodwill.

In the present case, the Panel does not hesitate to decide that the disputed domain name is confusingly similar to the registered trademarks CARREFOUR and CARREFOUR PASS.

Indeed, the disputed domain name reproduces entirely the Complainant’s trademarks CARREFOUR and CARREFOUR PASS which have been considered to be “well-known” or “famous” by numerous previous panels (Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc. WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd. WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe carrefour WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067).

In many WIPO decisions, Panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the Complainant’s trademark (Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo,WIPO Case No. D2019-0670; L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.

Additionally, the disputed domain name associates the Complainant’s trademarks CARREFOUR and CARREFOUR PASS with the term “ssl4”, intersected by a hyphen. However, it is well established that, where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms does not prevent a finding of confusing similarity. As the dominant feature of the domain name <ssl4-carrefourpass.com> is the Complainant’s marks CARREFOUR and CARREFOUR PASS, the adjunction of the expression “ssl4” is insufficient to avoid confusing similarity between the disputed domain name and the Complainant’s trademarks (Pandora A/S v. Domain Admin, Privacy Protect LLC (PrivacyProtect.org) / Robin Puckett, WIPO Case No. D2018-0586). See also section 1.8 of the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The expression “ssl4” stands for “Secure Sockets Layer” protocol, a standard security technology for establishing an encrypted link between a web server and a client and therefore the full inclusion of the Complainant’s trademarks CARREFOUR and CARREFOUR PASS in the domain <ssl4-carrefourpass.com>, associated to the expression “ssl4”, suggests that the website towards which the domain name points is secure, can be trusted, and is protected from hackers. Indeed, banking services providers and other financial institutions rely on “Secure Sockets Layer” protocol to make online banking safe for their customers (Carrefour v. Contact Privacy Inc. / Telford Foucault, WIPO Case No. D2019-2308).

Hence, Internet users are likely to wrongly believe that the domain name <ssl4- carrefourpass.com> will direct them to a secure website owned by Complainant and on which they can safely conduct their banking transactions.

Moreover, Panels have come to the conclusion that hyphenation in domain names is “insufficient to distinguish the Respondent’s domain names from the Complainant’s mark because the dominant portion of each domain name is the Complainant’s [trademark]” (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768.

Finally, the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name, as it is viewed as a standard registration requirement (See section 1.11 of the WIPO Overview 3.0.). Indeed, the mere adjunction of a generic Top-Level Domain (“gTLD”), such as “.com”, is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).

For all of the above-mentioned reasons, the domain name in dispute 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) is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, it found by the Panel to be proved based on is evaluation of all evidences presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purpose of paragraph 4(a)(ii):

“(i) Before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue”.

It is well established from previous UDRP decisions (see Croatia Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455) that the burden of production shifts to the Respondent where the Complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name. If the respondent fails to rebut the complainant’s case, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the present case, the Complainant states that the Respondent has no right or legitimate interest with respect to its use of the domain name. Furthermore, there is no evidence in the file showing any of the three circumstances under paragraph 4(c) of the Policy, or any other circumstance that would establish rights or legitimate interest of the Respondent.

The Respondent has not submitted any Response and thus failed to demonstrate that he has rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that 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 primarly 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 the likelihood of confusion with the complainant’s mark as to the source, sponsorhip, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

In the case at hand, the domain name <ssl4-carrefourpass.com> has been registered by the Respondent despite the fact that CARREFOUR and CARREFOURPASS are known trademarks for restaurant services, food products, banking and financial services.

Furthermore, the Respondent is not listed as an owner of any trademark containing any CARREFOUR formatives. Nor is there any evidence that the Respondent owns any or has applied for any trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name.

On the contrary, it appears clearly established that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is blatantly using the disputed domain name with the intent for commercial gain and to misleadingly divert Internet users.

On its website, the Respondent has links that divert the Internet users to sites that are not associated with Complainant.

The Respondent has acquired the domain name with no apparent intention of utilizing the domain name in connection with the provision of bona fide goods or services. Rather, the Respondent’s bad faith intent, which will be discussed in detail below, is to create confusion among consumers as to the source of the domain name for commercial gain.

It is likely that the Respondent chose the domain name because of its similarity to a trademark in which the Complainant has rights and legitimate interest. This was most likely done in the hope and expectation that Internet users searching for (the Complainant’s services and products) would instead come across the Respondent’s site. Such a domain name does not provide a legitimate interest under the Policy. (See Shaw Industries Group Inc. & Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583, citing Express Scripts, Inc. v. Windgather Investments Ltd/ Mr. Cartwright, WIPO Case No. D2007-0267.

Additionally, Complainant’s CARREFOUR and CARREFOUR PASS trademark registrations significantly predate the registration date of the disputed domain name.

In this regard, previous Panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration (ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287, and NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077).

A quick CARREFOUR or CARREFOUR PASS trademark search would have revealed to Respondent the existence of Complainant and its trademarks. Respondent’s failure to do so is a contributory factor to its bad faith (LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling, WIPO Case No. D2008-0226,).

Hence, in view of the above-mentioned circumstances, it is inconceivable that the Respondent did not have the Complainant’s trademarks in mind at the time of registration of the disputed domain name.

Consequently, it is established that the Respondent registered the disputed domain name in bad faith.

The disputed domain name resolves to an inactive page. Nevertheless, this state of inactivity does not mean that the domain name is used in good faith. Indeed, passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia, WIPO Case No. D2011-0421). See also Section 3.3 of the WIPO Overview 3.0.

The conclusion is that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the Respondent because:

(1) the Complainant’s trademark had a strong reputation and was widely known;

(2) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the domain name;

(3) the Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name; and,

(4) the Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. (See Carrefour v. Zhuhai Yingxun Keji Limited / LOUTIN SAS, WIPO Case No. D2019-0766)

Furthermore, there is a risk that the Respondent is engaged in a phishing scheme. The use of an email address with the disputed domain name <ssl4-carrefourpass.com>, whose composition makes direct reference to the Complainant’s banking activities and highlights the alleged security features of the litigious website by using the acronym “ssl4”, presents a significant risk where the Respondent could aim at stealing valuable information, such as credit card details, from the Complainant’s clients. Such risk has been recognised by prior UDRP panela (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).

All aforementioned circumstances confirm that the disputed domain name is used in bad faith.

Consequently, it is established that the Respondent both registered and is using the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) 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 <ssl4-carrefourpass.com> be transferred to the Complainant.

Emmanuelle Ragot
Sole Panelist
Date: February 20, 2020