WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Carrefour S.A. v. Damian Macafee

Case No. D2002-1060

 

1. The Parties

The Complainant is Carrefour S.A., a corporation incorporated under the laws of France having its principal office and place of business at 6, avenue Raymond Poincaré, 75116 Paris, France. The Complainant is represented by Mr. Jonathan N. Auerbach, Smart & Biggar, P.O. Box 2999, Station D, Ottawa, Ontario, Canada K1P 5Y6.

The Respondent is Damian Macafee, 69 Charlotte St., London W1P 1LA, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name <carrefour.net> is registered with BulkRegister.com, Inc. of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, U.S.A.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2002. On November 20, 2002, the Center acknowledged receipt of the Complaint and on the same date transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue.

On November 20, 2002, BulkRegister.com transmitted by email to the Center its verification response confirming that:

1. A copy of the Complaint was received on November 20, 2002.

2. The domain name <carrefour.net> is registered with BulkRegister.com.

3. The domain name at issue was registered on June 18, 2001.

4. The Respondent is listed as the registrant.

5. The Respondent is listed as the Administrative, Technical and Billing Contact. Full contact details (postal address, telephone number, e-mail address) are provided.

6. The Uniform Domain Name Dispute Resolution Policy applies to the domain name at issue.

7. The domain name <carrefour.net> is currently locked.

8. The language of the registration agreement for the domain name is English.

9. The Respondent has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name. (BulkRegister.com, Inc. Ė Registration Agreement 4.1, para. 23:

"This agreement and all rights hereunder shall be governed by the internal laws of the State of Maryland, without regard to such stateís policies relating to conflict of laws. Any action relating to or arising out of this agreement or to your or your agentís use of our services shall be brought exclusively in the courts of Maryl the District of Maryland (Northern Division) located in Baltimore, Maryland. For the adjudication of disputes concerning or arising from this agreement or the use of any SLD name(s), you agree to submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the courts (i) of your domicile, and (ii) of Maryland, USA, or the U.S. District court for the district of Maryland (northern division) located in Baltimore, Maryland. You waive the right to trial by jury in any such proceeding").

On November 26, 2002, the Center completed a Formal Requirements Compliance Checklist verifying that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 17, 2002.

The Center appointed Dimitris Oekonomidis as the sole Panelist in this matter on December 31, 2002. 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 deadline for rendering the respective decision was extended to January 22, 2003.

 

4. Factual Background

The Complainant is the owner of many trademark registrations for CARREFOUR around the world. (Copies of particulars of these trademark registrations are attached as Annex 3 to the Complaint). The French registrations demonstrate trademark filings for Registration No. 1565338 since 1965, for classes 1 to 34 and for Registration No. 1487274 since 1968, registered in respect of services in classes 35 to 42.

The Complainant and its affiliate companies have extensively used the trademark CARREFOUR in Europe and throughout the world in association with a vast array of wares and services including in association with the service of carrying on the business of retail stores through various retail outlets in approximately 30 countries (e.g. France, Spain, Belgium, Czech Republic, Greece, Italy, Poland, Portugal, Switzerland, Turkey, Argentina, Brazil, Chile, Mexico, China, Indonesia, Japan, Korea, Malaysia, Thailand).

The Complainant and its affiliate companies own more than 9,200 retail stores throughout the world including approximately 731 hypermarkets, 2,301 supermarkets, 3,754 hard discount stores, 2,236 convenience stores and 198 cash and carry outlets. In 2001, the Complainant and its affiliate companies conducted approximately 78 billion Euros of consolidated sales including VAT. Moreover, the Complainant and its affiliate companies currently employ approximately 383,000 individuals. (Annex 4 to the Complaint: a copy of a web page from the Complainantís "www.carrefour.com" website, Annexes 5, 6, 7: copies of the Complainantís 2001, 2000 and 1999 Annual Report).

Throughout its retail outlets, the Complainant sells a number of products that are sold under private labels which contain the Complainantís trademark CARREFOUR, e.g.: "Produit Carrefour", "Filière Qualité Carrefour" and "Carrefour Bio." (Annex 8: copies of web pages from the Complainantís "www.carrefour.com" website depicting a number of the Complainantís private labels).

As mentioned above, the Complainant maintains a website at "www.carrefour.com" which provides information with regard to all the Complainantís business activities (Annex 10: a copy of the home page of the Complainantís "www.carrefour.com" website). Besides, the Complainant on October 25, 1995, registered the domain name <carrefour.com>(Annex 9: a copy of the WHOIS Search Results for the domain name <carrefour.com>).

The trademark CARREFOUR is recognized by and well-known to the public around the world as identifying the wares, services and business of the Complainant. Furthermore, the Complainant has developed a valuable goodwill and reputation in the trademark CARREFOUR.

 

5. Partiesí Contentions

A. Complainant

The Complainant asserts that the domain name <carrefour.net>, registered by the Respondent, is essentially identical to the Complainantís registered trademark CARREFOUR. The Complainant contends that the suffix "NET", which is the only difference between the domain name <carrefour.net> and the trademark CARREFOUR, is an irrelevant distinction, which does not change the likelihood of confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. As it states, it is unaware of any rights or legitimate interests held by the Respondent in respect of the domain name at issue in this proceeding.

The Complainant has not licensed or otherwise authorized the Respondent to use its trademark nor to apply for or register any domain name that incorporates any of its trademarks. The Complainant asserts that the Respondent registered the domain name <carrefour.net> because the trademark CARREFOUR is internationally well-known and the Respondent intended to either sell the domain name to the Complainant or to divert persons looking for the Complainantís website.

Furthermore, the adoption and extensive use by the Complainant of the trademark CARREFOUR predates the first entry of <carrefour.net> as a domain name and therefore, the burden is on the Respondent to establish the Respondentís rights or legitimate interests the Respondent may have or have had in the domain name.

As the Complainant states, the Respondent does not own any marks which are similar to the domain name at issue and it has not conducted any prior business under the name "CARREFOUR" in connection with the bona fide offering of goods or services.

Besides, the Respondent has not used the domain name in connection with the bona fide offering of goods and services. The Respondentís domain name redirects to another website located at "http://www.atomictime.net/ub.html?48217713.pFeeGsLheY." The header of the website states "Website for [<carrefour.net>] domain name is under construction!" The body of the website states:

"The domain name <carrefour.net> has been reserved.

IMPORTANT NOTE: This address is used for INBOUND e-mail, ONLY! If you believe that you have received spam that includes this domain name, it was NOT done from here, and done WITHOUT authorization. Please report this to us. Remember to include the e-mail header! A website may be coming soon. E-mail"

Underneath this statement is an advertisement for "Evidence Eliminator v5.0." The website also contains banner advertisements for anti-virus software and for tax free cigarettes. Therefore, the Complainant submits that the domain name <carrefour.net> is not being used in connection with the bona fide offering of goods or services. (Annex 12: a print-out of the website "http://www.atomictime.net/ub.html?48217713.pFeeGsLheY").

The Respondent is not commonly known by the domain name <carrefour.net> either as an individual or a business, while it is not making legitimate non-commercial or fair use of the domain name. The Respondent registered the domain name <carrefour.net> for the purpose of capitalizing on the Complainantís trademark CARREFOUR and profiting from the international and domestic goodwill that the Complainant has built up in its trademark.

As to bad faith, the Complainant relies on the following circumstances indicating that the domain name was registered and is being used in bad faith:

The Respondent has been the subject of numerous Uniform Dispute Resolution Policy (UDRP) proceedings as a result of registering domain names wherein the Respondent possessed no rights or legitimate interests. In each of these proceedings, the Administrative Panel ruled in favour of transferring the domain name at issue to the Complainant (the appropriate and rightful trademark owner) (Annex 13: copies of respective UDRP Administrative Panel decisions).

As the Complainant asserts, the pattern of behaviour exhibited by the Respondent is to register domain names that are well-known to the public and to intentionally attempt to attract, for commercial gain, Internet users to the websites at issue, by creating a likelihood of confusion with the Complainantís trademarks as to the source, sponsorship, affiliation or endorsement of the website location or of a product or service on the website. The pattern of behaviour also demonstrated by the Respondent in a number of the above-mentioned cases was to attempt to sell the domain name at issue to the trademark owner for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name.

As the Complainant is the largest retailer in Europe and the second largest worldwide, the Respondent, an apparent resident of the United Kingdom, would have known that the domain name <carrefour.net> would be likely to be taken by many people as a reference to the Complainant.

Furthermore, the Respondent, through the registration of the domain name at issue, has blocked the Complainant from registering it.

A further demonstration of bad faith by the Respondent is the fact that the Respondent has provided incorrect contact information to the Registrar. On February 19, 2002, the Complainant attempted to demand that the Respondent cease use of the <carrefour.net> domain name and to transfer ownership of the domain name to the Complainant by sending a letter to the Respondent by e-mail and courier (Purolator). (Annex 14: a copy of the e-mail and letter of February 19, 2002). The Respondent did not respond to the e-mail. Furthermore, the courier parcel was returned as undeliverable as the street address information provided to the registrar by the Respondent was incorrect. The fact that the contact information provided by the Respondent was incorrect was, in itself, a major factor in the determination of bad faith in several other aforementioned UDRP proceedings in which the Respondent was involved (the Respondentís address, telephone number and e-mail address being the same as in this case).

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances which indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) registration of 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; or

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

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

A. Identical or Confusingly Similar

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The domain name at issue, <carrefour.net>, is identical or confusingly similar to the trademark CARREFOUR, in which the Complainant has rights. The suffix "ΝΕΤ", which is the only difference between the domain name <carrefour.net> and the trademark CARREFOUR, is an irrelevant distinction, which does not change the likelihood of confusion.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Since the adoption and extensive use by the Complainant of the trademark CARREFOUR predates the first entry of <carrefour.net> as a domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.

A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.

In this case, the Respondent has not conducted any prior business under the name CARREFOUR in connection with the bona fide offering of goods and services. It has also not used the domain name in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. It is not authorized by the Complainant to use it. It is not making legitimate non-commercial or fair use of the domain name. The objective of the registration appears to have been to either sell the domain name to the Complainant or to divert persons looking for the Complainantís website.

It is apparent that the Respondent registered the domain name <carrefour.net> for the purpose of capitalizing on the Complainantís trademark CARREFOUR and profiting from the international and domestic goodwill that the Complainant has built up in its trademark.

These facts support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))

To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.

A finding that a Respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a Complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.

The context of the registration and use of the subject domain name includes the notoriety of the Complainantís mark, the business activities it has carried on, the Respondentís failure to respond to the Complainantís attempt to make contact.

These facts are evidence from which an inference of bad faith may be made. The Respondent has done nothing to displace the inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the contested domain name <carrefour.net> be transferred to it. The Administrative Panel so orders.

 


 

Dimitris Oekonomidis
Sole Panelist

Dated: January 22, 2003