WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Wu Yu

Case No. DRO2019-0019

1. The Parties

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

The Respondent is Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <carefour.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 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 January 7, 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 10, 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 28, 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 was founded in 1959 and is headquartered in France. Its business activities include supermarkets, banking and insurance services. The Complainant has more than 12,000 stores and e-commerce sites in more than 30 countries including Brazil and China, and in 3 major markets: Europe, Latin America and Asia, employing some 360,000 people worldwide and generating sales of more than 84 billion euros (including VAT) in 2018.

The Complainant owns a number of trademarks for CARREFOUR, of which the following are representative:

CARREFOUR, European Union Trademark, filed on June 20, 2006, registered on August 30, 2007, registration number 005178371, in classes 9, 35, and 38;

CARREFOUR, European Union Trademark, filed on December 23, 2009, registered on July 13, 2010, registration number 008779498, in class 35;

CARREFOUR, International Trademark, registered on April 16, 2009, registration number 1010661, in class 35.

The Complainant also owns the domain names <carrefour.com>, registered on October 25, 1995, and <carrefour.fr>, registered on June 23, 2005.

Nothing of significance is known about the Respondent except for the contact details provided for the purpose of registration of the disputed domain name, which was registered on January 12, 2019. The disputed domain name resolves to a parking page displaying sponsored advertising links, and an email server has been configured for use with the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark CARREFOUR in which the Complainant has rights. The disputed domain name is a deliberate misspelling of the Complainant’s trademark by omission of the letter “r” to make it look virtually identical, commonly known as “typosquatting”. The country code Top-Level Domain (ccTLD) “.ro” should have no bearing on the determination of confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way and has not been authorised to use the Complainant’s trademark, which significantly predates the registration of the disputed domain name.

The Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and it cannot reasonably be used for one because of its similarity to the Complainant’s trademark. At present the disputed domain name resolves to a parking page offering pay-per-click links. The Respondent is not commonly known by the disputed domain name and there has been no legitimate noncommercial or fair use of it.

An email server has been configured on the disputed domain name and consequently there is a risk it could be used for a phishing scheme (seeking sensitive information by deception).

The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant is well known throughout the world and it is implausible the Respondent was unaware of it when registering the disputed domain name.

The Complainant submits that, as has been found in previous cases under the Policy, bad faith can be inferred where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.

The Complainant’s trademark would have been found by a search for the trademark, or a Google or other Internet search for the Complainant’s name would have located the Complainant.

The disputed domain name is a deliberate misspelling of the Complainant’s trademark and it is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the time of registration. This practice of typosquatting, in previous cases under the Policy, has been taken in itself to be evidence of bad faith.

The Complainant says the Respondent could not have chosen the disputed domain name for any other reason than the intention that Internet users would confuse it with the Complainant, constituting registration in bad faith.

As to use in bad faith, the Complainant says that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Respondent has used the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links, which are likely to generate revenue for the Respondent. The Respondent is thereby using the Complainant’s well-known trademark to attract visitors for commercial gain, constituting use of the disputed domain name in bad faith.

The Complainant reiterates that an email server is associated with the disputed domain name, and thus there is a risk that the Respondent is engaged in a phishing scheme. The Respondent could send emails, appearing to come from the Complainant, to the Complainant’s employees or customers in order to obtain personal and financial information from them.

In all the circumstances, it is not possible to conceive of any plausible circumstances in which the Respondent could legitimately use the disputed domain name, without taking unfair advantage of the Complainant’s rights.

The Complainant has cited a number of previous decisions under the Policy, including many brought by the Complainant, that it considers should assist its case.

The Complainant requests the transfer to it of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel is satisfied by the evidence produced that the Complainant has the required rights in the trademark CARREFOUR, and that the trademark is well known internationally.

The disputed domain name <carefour.ro>, of which the ccTLD “.ro” may be disregarded in this instance, differs from the Complainant’s trademark by the omission of one letter “r”. The determination of confusing similarity is to be based on an objective comparison of the Complainant’s trademark with the disputed domain name. On an objective assessment, it is found that the disputed domain name looks and reads the same as the Complainant’s trademark and would almost certainly be pronounced and sound the same as the trademark. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark within the contemplation of paragraph 4(a)(i) of the Policy and accordingly the Panel finds for the Complainant under this paragraph.

B. Rights or Legitimate Interests

The Complainant has stated a prima facie case to the effect that the Respondent is not affiliated with the Complainant, has not been authorised to use the Complainant’s trademark, and has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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.”

The Respondent has made no reply, however the onus of proof remains upon the Complainant.

The Panel notes there is no evidence the Respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and its resolution to a parking page offering pay-per-click links does not, in itself, constitute any such offering. The potential use of the disputed domain name as an email address, which would be almost identical to the Complainant’s trademark, could not reasonably be legitimate. There is no evidence the Respondent has been commonly known by the disputed domain name or that the latter has been used for any noncommercial or fair purpose.

The Panel is not aware of any grounds upon which the Respondent could assert rights or legitimate interests in the disputed domain name and accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or location or of a product or service on your website or location.”

The Panel has examined the Complainant’s screen captures of the website to which the disputed domain name resolved on December 26, 2019. The first page, under a heading “Related Links”, listed “Masina de Spalat”, “Haine Ieftine”, “Camas Plegables”, “Aer Conditionat”, “Bec H7”, “Carrefour Online”, and “Costum de Baie”. Most have not been translated into the language of the proceeding but notably “Carrefour Online” showed the correct spelling of the Complainant’s name and trademark. Another page had further links each marked “Visit Website” that appeared to lead to Google search results.

Thus, the style of the Respondent’s website leads to the conclusion that, on the balance of probabilities, it is in use to direct visitors to the websites of others. It is not reasonably plausible that this action is altruistic or has any other purpose than to generate referral revenue according to the common model known as click-through or pay-per-click, in which links sponsored by advertisers are displayed, often automatically through a placement service, and part of the revenue would normally be shared with the Respondent. A pay-per-click operation may be entirely legitimate and is commonly adopted to defray the running costs of a website, but it cannot be legitimate if the means of attracting visitors to the website is the unauthorised use of another’s trademark or a construction intended to be confused with another’s trademark.

Predictably, at least a small proportion of Internet users intentionally seeking the Complainant’s website may make typographical errors, including accidentally typing a single “r” in place of the “rr” in the Complainant’s trademark CARREFOUR, which also features in the Complainant’s domain names. On the evidence and on the balance of probabilities, taking into account the well-known nature of the Complainant’s trademark, the Panel finds the Respondent to have adopted the device of “typosquatting”, that is, attempting to capture and divert Internet users who make typographical mistakes. The Panel finds the Respondent’s conduct to have fulfilled the criteria of paragraph 4(b)(iv) of the Policy in that the Respondent has relied on confusion with the Complainant’s trademark in order to attract visitors to the website of the disputed domain name for commercial gain, constituting use in bad faith, and furthermore, that the disputed domain name was registered at least partly with the intention of using it for that purpose.

Additionally, the Complainant has ascertained from SuperTool (“www.mxtoolbox.com”) that the disputed domain name has been set up with the capability of being used as an email address. Any communication received from an email address bearing the disputed domain name would be likely to confuse at least some recipients into believing it came from the Complainant. There can be no possible justification for the Respondent to send emails that may appear to some recipients to have come from the Complainant. The Panel finds that, considering the nature of the disputed domain name and the circumstances of this case, the Respondent’s actions in facilitating the possibility of use of the disputed domain name as an email address to constitute additional grounds for a finding of both registration and use in bad faith.

The Respondent’s failure to abide by the provisions of paragraph 2 of the Policy, and paragraph 5 of the General Terms and Conditions of the Registration Agreement, is found to constitute additional evidence of registration of the disputed domain name in bad faith.

On the totality of evidence, and on the balance of probabilities, registration and use of the disputed domain name are found to be in bad faith and accordingly the Panel finds for the Complainant in the terms of 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 <carefour.ro> be transferred to the Complainant.

Clive N.A. Trotman
Sole Panelist
Date: March 9, 2020