WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Almacenes Éxito S.A v. Registration Private, Domains By Proxy, LLC

Case No. DCO2018-0042

1. The Parties

The Complainant is Almacenes Éxito S.A of Envigado, Colombia, represented by Rengifo Abogados, Colombia.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <carulla.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2018, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 20, 2018.

The Center sent an email communication to the Parties on December 18, 2018, regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a translated Complaint on December 20, 2018. The Respondent did not reply to the Center’s notification.

The Center verified that the Complaint together with the amendment to the Complaint and the translated 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 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on February 5, 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.

The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as advised by the Registrar.

4. Factual Background

The Complainant is a Colombian supermarket chain founded in 1949, operating across South America. It is present in Colombia with Grupo Éxito, in Brazil with Grupo Pão de Açúcar, in Uruguay with Disco and Devoto Groups and in Argentina with Libertad. In 2007, the Complainant was acquired by the French global food retailer Groupe Casino.

In 2010, the Complainant merged with the Colombian entity Carulla Vivero S.A., thereby incorporating the CARULLA mark into the Complainant’s trademark portfolio.

The Complainant owns several Colombian trademark registrations for CARULLA, the earliest of which is trademark registration No. 125530 filed February 21, 1986, and registered December 12, 1993, covering goods classified in international class 30.

On May 13, 2013, the Colombian Superintendence of Industry and Commerce (Colombia’s Trademark Office) found and declared the CARULLA mark to be notorious in Colombia with respect to “the grouping of diverse products included in international class 35, so that consumers can examine and buy them at their convenience” for a period running from 2007 through the second semester of 2012.

The Respondent registered the disputed domain name on July 5, 2017, but prior to that, the disputed domain name had been registered and was being held by the Complainant, which failed to renew it on time.

The disputed domain name has resolved, since the Respondent’s registration, to a copycat website of a competitor of the Complainant, and most recently to a homepage showing nothing but the picture of a cockroach.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

(i) The CARULLA mark is used both to identify supermarkets in Colombia and to identify products characteristic of a supermarket;

(ii) The CARULLA mark is highly recognized within Colombia and enjoys a high degree of distinctiveness, both intrinsic and extrinsic, as it is an arbitrary mark;

(iii) The disputed domain name is phonetically and grammatically identical to the CARULLA marks owned by the Complainant;

(iv) The Respondent does not have a legitimate interest in the disputed domain name because the CARULLA mark is the exclusive property of the Complainant;

(v) To date, the Complainant has not granted any license to the Respondent to use the CARULLA mark;

(vi) The Respondent does not market any type of product or service under the disputed domain name but currently only uses the latter to publish a high-resolution image of a cockroach, which can be interpreted as a way of pressing the Complainant to purchase the disputed domain name;

(vii) The disputed domain name’s registration was made in bad faith since the Respondent does not carry out business in Colombia, for which country the “.co” extension of the disputed domain name is intended;

(viii) The disputed domain name used to redirect to the website of the Complainant’s competitor Supermercados Olímipica;

(ix) On July 11, 2017, the Respondent placed through the Registrar an offer to sell the disputed domain name for USD 250,000, a sum that exceeds the real value of the disputed domain name in the market;

(x) After receiving no response from the Complainant to its sale proposal for the disputed domain name, the Respondent published the image of a cockroach in high definition, thus showing that the Respondent registered the disputed domain name solely for the purpose of offering for sale to the Complainant, who is the sole entity legitimized to hold the disputed domain name;

(xi) Considering that the CARULLA mark is associated with a Colombian supermarket, and that the Complainant’s official website is “www.carulla.com”, it is logical to infer that that the average consumer entering “.co” as an extension of the disputed domain name, and obtaining as a result of his/her search the image of a cockroach will keep that repulsive image in mind when exercising his/her consumer decision on food products.

B. Respondent

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

6. Discussion and findings

According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove 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.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element has a low threshold for it merely serves as a standing requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name).

The Complainant holds several Colombian trademark registrations for CARULLA, the earliest of which is trademark registration No. 125530 dating back to December 12, 1993, and relating to products encompassed in international class 30.

To the Panel’s eye, the Complainant’s CARULLA mark is immediately recognizable within the disputed domain name. Moreover, the disputed domain name is formed exclusively with the Complainant’s CARULLA mark.

Under these circumstances, the Panel finds that the disputed domain name is identical to the CARULLA mark relied on in the Complaint.

The “.co” country code Top-Level Domain (“ccTLD”) in the disputed domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test but could be relevant for the assessment under the second and/or third elements.

For the foregoing reasons, the Panel holds that the disputed domain name is identical to the Complainant’s CARULLA mark on which the Complaint is based.

The Complainant has therefore satisfied its burden of proof for this element of the Policy.

B. Rights or Legitimate Interests

The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes 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 intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

The Respondent has not been authorized by the Complainant to use the CARULLA marks in connection with the disputed domain name or otherwise. Likewise, there is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.

The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less prove, that it has rights or legitimate interests in the context of the Policy.

Furthermore, by looking at the overall circumstances of the case, namely the 2013 declaration by the Colombian Trademark Office of the CARULLA mark’s notoriety from 2007 through the second semester of 2012, the Respondent’s failure to appear in this proceeding, and the absence of an active website showing a bona fide use of the disputed domain name, negate, in the Panel’s view, rights and legitimate interests to the Respondent within the purview of the Policy.

In sum, the Panel finds that the Respondent does not possess rights or legitimate interests in the disputed domain name.

The Complainant has satisfied its burden of proof for this element of the Policy.

C. Registered and Used in Bad Faith

Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:

“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or

(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”

The Panel acknowledges that the CARULLA mark is inherently distinctive and was held to be well-known in Colombia from 2007 to the second semester of 2012. As such, it does not seem to be a term that others would legitimately choose using unless seeking to create the impression of being associated with the Complainant. See Intel Corporation v. Marcel Engenheiro / Pentium Capital, WIPO Case No. D2013-1745.

This, coupled with the fact that the disputed domain name was previously possessed by the Complainant, and the fact that the Respondent purported to sell the disputed domain name to the Complainant for an amount of USD 250,000 leaves no doubt of the Respondent’s bad faith intent at the time of registering the disputed domain name.

Similarly, the prior resolving of the disputed domain name to a copycat website of a Complainant’s competitor, and the current display of a cockroach in the homepage of the website associated with the disputed domain name is compelling evidence to the Panel of the Respondent’s use of the disputed domain name in bad faith all along since its registration, also in bad faith. Finally, the “.co” ccTLD in the disputed domain name only confirms the Respondent’s intent to mislead Internet users into thinking that they had found the Complainant’s official Colombian website for its CARULLA mark.

In sum, the Panel is persuaded that the disputed domain name was registered and has been used in bad faith within the realm of the Policy.

Thereby, the Complainant has discharged its burden in relation to 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 <carulla.co> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist
Date: February 25, 2019