WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Richard Mandanice
Case No. D2002-0623
1. The Parties
The Complainant in this administrative proceeding is Carrefour, 6 avenue Raymond Poincaré, 75769 Paris cedex 16, France.
The Respondent is Richard Mandanice, Domain Strategy Inc., 959 route 108, Bury Qc Canada JOB 1J0.
2. The Domain Name and Registrar
The domain name in dispute is <carrefourvoyages.com>.
The Registrar with which the domain name is registered is OnlineNIC Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on July 5, 2002, by e-mail and on July 15, 2002, in hardcopy. An Amendment to the Complaint was further sent by e-mail on July 29, 2002, and received in hardcopy by the Center on July 29, 2002. The Center had acknowledged receipt of the Complaint on July 5, 2002.
On July 5, 2002, the Center sent the corresponding Request for Registrar Verification in connection with this case to OnlineNic, Inc. On July 8, 2002, the Registrar's verification response confirmed that the Registrant was Richard Mandanice and that the domain name <carrefourvoyages.com> was in "locked" status.
On July 30, 2002, after having verified whether the Complaint had satisfied the formal requirements, the Center notified by e-mail and courier, the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). Due to a problem in the e-mail transmission of the notification to the Respondent and the fact that the courier addressed to the latter came back, the Center re-notified the Commencement of Administrative Proceeding to the Parties on August 2, 2002, by e-mail and courier.
On August 28, 2002, the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a Response to the Complaint within the deadline granted.
On August 29, 2002, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center, on August 28, 2002, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on August 29, 2002, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant operates hypermarkets, supermarkets and hard discount retail chains, is present in 30 countries and operates, directly, or indirectly through franchising agreements, over 9200 stores.
The Complainant is the owner of several trademark registrations in France and abroad. In particular, it owns the French trade mark CARREFOUR Registration No. 1 487 274 filed on September 2, 1989, for all services in classes 35 to 42 (Complainant's Annex 3). It also owns the French trade mark CARREFOUR Registration No. 1 565 338 filed on December 18, 1989, for all products in classes 1 to 34 (Complainant's Annex 4).
Both trademarks are used in connection with the products and services mentioned in the registrations; they are also used on a wide range of products and services in food, personal care, clothing, leisure and entertainment, as well as financial services, insurance, travel and car services.
The Complainant is the owner of <carrefour.com> and <carrefour.fr>.
5. Parties’ Contentions
The Complainant submits the following :
(i) The domain name <carrefourvoyages.com> is identical or confusingly similar to the CARREFOUR trademarks.
The CARREFOUR trademarks are widely and favorably known by millions of individuals around the world and have a very distinctive power.
The disputed domain name incorporates, as its most prominent feature, the whole of the famous CARREFOUR trademarks. The addition of the word "voyages" which is a French common word and translates into English as "travels" does not lessen the virtually and confusingly similar nature of the domain name. On the contrary, the addition of the generic term "voyages" trades on the goodwill of the famous CARREFOUR trademarks and provides misleading and false impressions of affiliation and/or sponsorship by Carrefour. When confronted with the domain name <carrefourvoyages.com>, internet users will immediately think of a web site operated by Carrefour and specialized in travels and travel related products.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name <carrefourvoyages.com>.
The Complainant is the owner of at least two well-known CARREFOUR trademarks. He has not granted the Respondent a license to use the Complainant's name and the Respondent has no rights to the name CARREFOUR of which the Complainant is aware. There are no business relationships between the Parties whatsoever. To the best of the Complainant's knowledge, nothing indicates or suggests that the Respondent carries on business using the word "CARREFOUR".
(iii) The domain name has been registered and used in bad faith.
Given the international renown of the two CARREFOUR trademarks, a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademarks prior to registering the domain name (See Yahoo! Inc v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188).
The Respondent's web site depicts pornographic material and is expressly intended for adults over 18 (Complainant's Annex 5). Links from the homepage display pornographic content. Taking into account the renown of the CARREFOUR trademarks and the fact that there is no need for the Respondent to use <carrefourvoyages.com>, terms that have no significance in connection with pornographic materials, the use of the domain name by the Respondent may only be interpreted as an attempt to attract for financial gain internet users to the Respondent's web site. The incorporation of the Complainant's trademark into its domain name is not being made in connection with a bona fide offering of goods or services.
These elements also demonstrate that the Respondent is not making a legitimate non-commercial use or fair use of the domain name because it misleadingly diverts consumers and trades on the goodwill of Carrefour. Furthermore, the pornographic nature of the web site tarnishes the CARREFOUR trademark and service mark at issue.
Finally, on February 27, 2002, the Complainant's Counsel sent a registered letter of demand to the Respondent asking him to (I) de-activate the <carrefourvoyages.com> web site; (II) transfer the domain name to Carrefour; (III) stop all uses of the name Carrefourvoyages; and, (IV) suppress the name Carrefourvoyages from all mediums, brochures (Complainant's Annex 6). The Respondent never claimed the registered letter and the letter was returned to sender on March, 23, 2002, (Complainant's Annex 7). In doing so, the Respondent tried to elude or delay any attempt at an amicable solution.
The Respondent has not submitted any Response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
A. Identity or Confusing Similarity
The Complainant has established its rights in trademarks CARREFOUR with various registrations for such name (see Complainant's Annexes 3 and 4).
The Complainant submits that essential or virtual identity is sufficient for the purposes of the policy (The Stanley Works and Stanley Logistics, Inc. v. Camp Creek. Co., WIPO Case No. D2000-0113) and that the test of confusing similarity under the Policy is usually confined to a consideration of the disputed domain name and the trademark (AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
The Sole Panelist, considering the decisions submitted above by the Complainant and also considering some other in cases where it was decided that well known domain names or dominant registered names combined with other terms (words, phrases or initials) such as geographic indications or services can be considered as identical or confusingly similar (e.g. Yahoo!Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273; Ermenegildo Zegna Corporation v. Estco Enterprises Ltd., WIPO Case No. D2000-0395), concludes that the domain name <carrefourvoyages.com> is confusingly similar to the Complainant's CARREFOUR trademarks.
B. Rights or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute.
This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).
This Administrative Panel considers that the Complainant has established that its trademarks for CARREFOUR have been known throughout the world for a significant period of time.
Furthermore and absent evidence to the contrary, the Complainant, as underlined in its Complaint, has not granted any license or otherwise permitted the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks.
Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at issue.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of 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.
The Sole Panelist finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. He draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, this Administrative Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
As already pointed out, the Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
The Complainant invokes the provisions of Paragraph 4(b)(iv) of the Policy so as to describe the Respondent's bad faith conduct in the registration and use of <carrefourvoyages.com>; for the purpose of bad faith demonstration, the Complainant also denies, as mentioned above, the Respondent's legitimate interests in the domain name in dispute within the meaning of Paragraph 4(c)(i) and (iii) of the Policy.
The Sole Panelist is of the opinion that, clearly, the Respondent's behavior, as described in the Complainant and reproduced above, amounts to bad faith registration and use pursuant to Paragraph 4(b)(iv) of the Policy. Such a finding is consistent with decisions held in previous similar cases (e.g. Enterbrain Inc. v Domain For Sale/Email Your Offers!, WIPO Case No. D2002-0009; Paragon Electric Co., Inc. v. Buy This Domain d/b/a NameRegister.Com, WIPO Case No. D2001-1439; see also Reckitt Benckiser (Belgium) S.A./N.V. v. Will Tell, a/k/a J. Sernets, WIPO Case No. DNU2001-0002).
Furthermore, the fact that the Respondent did not react to the Complainant's letter of February 27, 2002 (Complainant's Annex 6) is an additional circumstance indicating Respondent's bad faith behavior within the general meaning of Paragraph 4(b) of the Policy.
Transfer of the domain name <carrefourvoyages.com> shall be therefore ordered in favor of the Complainant.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <carrefourvoyages.com> shall be transferred to the Complainant.
Dated: September 12, 2002