The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is hanib bas, France.
The disputed domain names <carrefour-banque.app> and <carrefour-banque.immo> are registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 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 July 20, 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 July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 21, 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.
The Complainant has requested that the disputed domain names be joint in the same UDRP proceeding on the basis that although, at the original time of filing of the Complaint, the identity of the Respondent was unknown, the disputed domain names were under common control and their registrants should be treated as one Respondent. According to the Complainant, the disputed domain names were indeed registered on the same date and with the same provider. In addition, the disputed domain names are delegated to the same name servers. The Complainant submits that these elements are sufficient to establish, on the day of original filing of the Complaint and until rebutted, that the disputed domain names are both registered by the same registrant, the Respondent in this proceeding. The WIPO Center has accepted, on a preliminary basis, this consolidated complaint.
The Panel deals with this issue in Section 6A below, and has decided to grant the Complainant’s request.
The Complainant is the French company Carrefour, a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968.
The Complainant also offers travel, banking, insurance or ticketing services.
With a turnaround of EUR 76 billion in 2018, the Complainant 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 is the owner of the following trademark registrations for CARREFOUR:
- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42.
The disputed domain names <carrefour-banque.immo> and <carrefour-banque.app> have been registered on April 25, 2020.
According to the Complainant, both disputed domain names resolved to an error page.
At the time of the present decision, the disputed domain names do not resolve any website.
The Complainant first alleges that the disputed domain names <carrefour-banque.immo> and
<carrefour-banque.app> are identical or confusingly similar to its earlier well-known trademark CARREFOUR.
The disputed domain names include the Complainant’s earlier trademark CARREFOUR in its entirety and in attack position, followed by the term “banque”.
According to the Complainant, the term “banque” only reinforces the risk of confusion as it means “bank” in French: bearing in mind that the Complainant offers banking services and originates from France, the Internet user of average attention would very likely believe that the disputed domain names originate from the Complainant or are endorsed or sponsored by it for its banking business.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant asserts that the Respondent has acquired no trademark in the name CARREFOUR which could have granted the Respondent rights in the disputed domain names and there is no evidence that the Respondent has been commonly known by the disputed domain names as an individual, business, or other organization.
The Respondent reproduces the Complainant’s earlier registered trademarks CARREFOUR in the disputed domain names without any license or authorization from the Complainant.
The Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain names in relation to a bona fide offering of goods or services. On the contrary, the disputed domain names all resolve to error pages.
Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith.
Firstly, the Complainant submits that the Complainant and its trademark CARREFOUR were so widely well-known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights on the trademark CARREFOUR.
The Respondent had the Complainant’s name and trademark in mind when registering the disputed domain names.
The Respondent’s choice of domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks, even more so since the Respondent seems to be located in France, where the Complainant has its principal office and numerous stores.
The Complainant enjoys a long-lasting worldwide reputation, which has now been established by UDRP panels for years.
Secondly, the Complainant submits that it is highly likely that the Respondent chose the disputed domain names in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s disputed domain names.
The Respondent acquired and is using the disputed domain names to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks.
Thirdly, the Complainant’s CARREFOUR trademark registrations significantly predate the registration date of the disputed domain names.
Fourthly, by registering these two domain names, the Respondent has engaged in a pattern of behaviour which unequivocally shows that he knew of the CARREFOUR trademarks.
In light of all the elements above, the Complainant contends that the disputed domain names were registered and are being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
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 was 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 considered 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:
Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In this case, the Registrar has disclosed the Respondent’s identity for both disputed domain names and confirmed that the disputed domain names are registered by the same Respondent “hanib bas”.
Accordingly, in view of the above and the Complainant’s prima facie arguments, the Panel grants the consolidation request.
The Panel is satisfied that the Complainant owns exclusive trademark rights in CARREFOUR, which predate the registration of the disputed domain names <carrefour-banque.app> and <carrefour-banque.immo>.
The Panel finds that the disputed domain names are confusingly similar to the registered CARREFOUR trademarks owned by the Complainant.
Indeed, the disputed domain names incorporate the entirety of the Complainant’s well-known trademarks CARREFOUR with the mere addition of the dictionary term “banque” (“bank” in English) which refers to the Complainant’s banking activities.
See among numerous decisions, Carrefour v. Jacob Aurore, WIPO Case No. D2019-1885 (<carrefour-banque.top>).
The addition of the gTLDs “.app” and “.immo” are viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
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] (as an individual, business, or other organization) 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 generally 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 and then the burden shifts to the respondent to demonstrate its rights or legitimate interests. (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 the circumstances of this case that the Respondent does not own any right on the trademarks CARREFOUR or are not commonly known by the disputed domain names.
In the light of what is stated above, 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 names.
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.
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 on-line 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, and since the disputed domain names are both a combination of the trademark CARREFOUR and the word “banque” (“bank” in English) which directly refers to the Complainant’s banking activities, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names.
Thus, the Panel cannot conceive any use that the Respondent could make of the disputed domain names that would not interfere with the Complainant’s trademark rights.
Accordingly, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind.
The Panel notes that both disputed domain names are resolving to inactive pages. UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
In these circumstances, the Panel holds that the disputed domain names have been registered and are 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.
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 names <carrefour-banque.app> and <carrefour-banque.immo> be transferred to the Complainant.
Date: September 7, 2020
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