WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. WhoisGuard Protected, WhoisGuard, Inc. / Alaa Mohamed, Bluemedia

Case No. D2020-1664

1. The Parties

The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Alaa Mohamed, Bluemedia, Egypt.

2. The Domain Name and Registrar

The disputed domain name <carrefourcoupon.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2020, 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 June 27, 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 June 29, 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 June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020.

The Center appointed Daniel Peña as the sole panelist in this matter on August 5, 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 is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968.

The Complainant, with a turnaround of EUR 76 billion in 2018, is listed on the index of the Paris Stock Exchange (CAC 40). The Complainant operates more than 12,000 stores in more than 30 countries worldwide. With more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores.

The Complainant additionally offers travel, banking, insurance, or ticketing services.

The Complainant is the owner of the following trademarks registered well before the registration of the disputed domain name:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 1 to 34; and,

- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42.

The Complainant’s fame and notoriety is also evidenced on the Internet. Indeed, the Complainant’s Facebook page is currently “liked” by more than 11 million Internet users.

The Complainant is also the owner of numerous domain names identical to its CARREFOUR trademarks, both within generic and country code Top-Level Domains. For instance, <carrefour.com> has been registered since 1995.

The disputed domain name was registered on April 24, 2020. The Complainant provided evidence that the disputed domain name directs to a website that offers discount coupons.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is highly similar to the earlier well-known trademarks CARREFOUR.

The disputed domain name entirely reproduces the CARREFOUR trademark of the Complainant with the generic term “coupon”, which is related to discounts. Consequently, there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademarks rights.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has no trademark rights on the expression “carrefour”.

The Respondent is not commonly known by the disputed domain name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the domain name or a domain name corresponding to the CARREFOUR trademarks.

The Complainant alleges that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services.

The Complainant contends that the disputed domain name resolves to an active page. This web page, in Arabic, offers discount coupons presented as effective is Saudi Arabia for the celebrations of the Eid Al-Fitr festival. The “about” section in the footer of the page roughly translates as “Here you will find H&M discount coupons so that you can buy the best goods and the best variety of products from the H&M Store at the lowest prices.” The Complainant alleges that the Respondent engaged in a wide scheme of interference with well-known brands, and unequivocally discards the bona fide offering of goods or services on the part of the Respondent.

The Complainant submits that the Complainant and its trademarks are so widely well-known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights on the term CARREFOUR.

The Complainant argues that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name, and that the Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks.

The Complainant states that the Respondent acquired and is using the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks.

The Complainant submitted that its CARREFOUR trademark registrations significantly predate the registration date of the disputed domain name, and that the website reproduces the Carrefour logo in the Middle East. Therefore, it is clear that the Respondent deliberately targets the Complainant’s famous trademark for profit; this constitutes opportunistic bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

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

(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.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

The Respondent’s incorporation of the Complainant’s trademark CARREFOUR in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks.

Mere addition of the dictionary term “coupon” does not prevent a finding of confusing similarity. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain “.com” to the disputed domain name does not prevent a finding of confusing similarity for purposes of the Policy (see Carlsberg A/S v. Xu Guo Xing, WIPO Case No. D2017-0301; Philip Morris USA Inc. v. Shimei Wang, WIPO Case No. D2016-2517; Livelle v. Martijn Noordermer, WIPO Case No. D2016-2524).

The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Furthermore, the composition of the disputed domain name, comprising the Complainant’s well‑known trademark plus an additional term, and use of the disputed domain name falsely suggest an affiliation with the Complainant and do not support any fair use in the circumstances of this case (see WIPO Overview 3.0, section 2.5).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent 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 respondent has engaged in a pattern of such conduct;

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademark CARREFOUR is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name.

The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant.

As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <carrefourcoupon.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: August 19, 2020