WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Iwama
Case No. D2007-1522
1. The Parties
The Complainant is Carrefour, of Levallois Perret, France, represented by J.-P. Karsenty & Associés, France.
The Respondent is Iwama, of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <voyagecarrefour.com> (the “Disputed Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2007. On October 18, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On October 19, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified 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 October 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2007.
The Center appointed Jacques de Werra as the sole panelist in this matter on November 23, 2007. 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’s group, which was founded in 1959, is well known as one of the world’s leading distribution group. It is the world’s second largest distribution group and the first one in Europe. The Complainant offers travel agency services via its subsidiary “Vacances Carrefour” which provide various “Voyages Carrefour” travel offers.
The “Voyages Carrefour” activity is also promoted on the Internet in particular at the address “www.voyagescarrefour.com” which is nearly identical to the Disputed Domain Name.
The Complainant is the owner of the following trademarks for the CARREFOUR name (the “Trademark”):
- French trademark CARREFOUR No 1565338 for goods in classes 1 to 34 (filed on December 8, 1989, renewed on September 15, 1999), and No 1487274 for services in 35 to 42 (filed on September 2, 1988, renewed on May 27, 1998);
- International trademark CARREFOUR No R351147 for goods in classes 1 to 34 (registered on October 2, 1988) and No R353849 for services in classes 35 to 42 (registered on February 28, 1989).
The Complainant is also the owner of and operates (among the 262 domain names that it holds as of August 28, 2007) the following domain names: <carrefour-voyages.com>, <carrefourvoyage.com>, <carrefourvoyages.com>, <voyages-carrefour.com> and <voyagescarrefour.com>. The Complainant also obtained the transfer of the domain names <voyage-carrefour.com> and <carrefour-voyages.com> in the course of UDRP Proceedings. See Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563 and Carrefour contre Monsieur Olivier Duchange, WIPO Case No. D2007-0517.
The Respondent became the owner of the Disputed Domain Name on August 30, 2007 (it being noted that the Disputed Domain Name appears to have been transferred between different owners shortly before its transfer to the Respondent).
The Disputed Domain Name is used in a parking program offering links to third parties’ commercial websites through “Sponsored Links” which all refer to travel agency services which are identical to the ones offered by the Complainant.
The Disputed Domain Name was also offered for sale (for an undisclosed price) by the Respondent on the website “www.sedo.com” (which is a provider of domain name parking services).
The Complainant sent to the Respondent a letter requesting the transfer of the Disputed Domain Name on September 12, 2007 to which the Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark given that its most distinctive part coincide with the Trademark and that the word “voyage” which is a generic term in French (which means travel) is not capable to rebut the confusing similarity. The Complainant refers to previous cases in which it was held that various domain names combining the Trademark with the word “voyage” or “voyages” were confusingly similar to the Trademark. See, Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563; Carrefour contre Monsieur Olivier Duchange, WIPO Case No. D2007-0517.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name as the Respondent does not make a legitimate non commercial use of the Disputed Domain Name without intent for commercial gain, given that the Respondent is using it in a domain name parking service.
The Complainant finally contends that the registration of the Disputed Domain Name could not have been made without knowledge of the Trademark so that such registration could not create a legitimate interest of the Respondent on the Disputed Domain Name. The Complainant also claims that the Respondent registered the Disputed Domain Name in bad faith with the purpose of preventing the Complainant from reflecting its marks in a corresponding domain name, that the Respondent deliberately registered the Disputed Domain Name with the intention of diverting people from Complainant’s products and services to other commercial websites offering similar products or services, and that the Respondent offered the Disputed Domain Name for sale on the website “www.sedo.com”, which all constitute evidence of Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant in this case has duly established that it is the owner of various trademarks which are registered in France and in other countries for the CARREFOUR mark (i.e. the Trademark).
As already decided by other panels in similar cases concerning the Trademark and domain names containing the Trademark to which the generic and descriptive word “voyage” was added, the Panel considers that the Disputed Domain Name is confusingly similar to the Trademark. See, Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563; Carrefour contre Monsieur Olivier Duchange , WIPO Case No. D2007-0517; Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any legitimate right or interest in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name hosts a website providing links to travel agency services in what appears to be a “click-through” site which is part of a parking program.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name. The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name for the purposes of monetary gain by providing links to commercial sites at the website of the Disputed Domain Name which are similar and competing with the travel agency services of the Complainant by exploiting the Complainant’s well known Trademark.
On this basis, the Panel is convinced that the Respondent is trading on the goodwill of the Complainant’s well known Trademark, and is diverting Internet traffic intended for the Complainant’s various official websites for its own commercial interest. This type of use of the Disputed Domain Name constitutes evidence of the bad faith of the Respondent under Paragraph 4(b)(iv) of the Policy, whereby the Complainant itself has already been the victim of this type of activities for domain names which were quasi-identical to the Disputed Domain Name. See – lastly -, Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563 (regarding <voyage-carrefour.com>); see also, Charlotte Russe Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371; WeddingChannel.com, Inc. v. Helois Lab, WIPO Case No. D2006-0021; L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; and, Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <voyagecarrefour.com> be transferred to the Complainant.
Jacques de Werra
Dated: December 5, 2007