The Complainant is Carrefour, Levallois Perret, of France, represented by J.-P. KARSENTY & Associés, France.
The Respondent is groupe carrefour, Izmir, of Turkey.
The disputed domain name <carrefourgroupe.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2008. On December 31, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On January 1, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 29, 2009.
The Center appointed J. Nelson Landry as the sole panelist in this matter on January 2, 2009. 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 Complainant Carrefour is a company founded in France in 1959 and has operated, since 1960, retail stores, distributed products in classes 1 to 34 and offered services under classes 35 to 42 of the classes of goods and services under the trademark CARREFOUR registered in France and as an international trademark in both instances in association with the classes mentioned above (herein the “Trademark” or the CARREFOUR Trademark).
The Complainant has in the same period promoted and advertised its products and services under the said Trademark and, to a lesser extent, under another trademark CARREFOUR GROUP. This promotion was also done through the Internet in operating a website at “www.carrefour.com” and in more than 300 domain names, many of which incorporated the common term “carrefour” and some associated with the term “group” along with various top level domain names as “.com” and “.net”.
Furthermore, the Complainant has engaged in seven UDRP cases wherein the domain names incorporated its Trademark CARREFOUR with other terms such as “voyage”, “finance” within which four domain names were incorporating CARREFOUR along with the term “group” or “groupe” (annexes 21 to 26). In each instance, the panel has ordered the transfer of the domain name involved to the Complainant.
In its marketing activities such as on its website the Complainant has frequently referred to itself as Carrefour Group.
The Complainant has evolved and progressed so that it now operates directly or indirectly over 15 000 stores under the Trademark CARREFOUR banners in dozens of countries in the world including 20 hypermarkets in Turkey where the Respondent resides.
The disputed domain name was registered on November 22, 2007.
The Respondent has no legal relationship with the Complainant and the later has neither consented to nor acquiesced in the registration and the use of the disputed domain name.
Upon becoming aware of the disputed domain name when the Respondent, on June 11, 2008, sent an e-mail to the Complainant, the latter, through its counsel, sent a cease and desist letter to the Respondent on June 20, 2008. The Respondent answered and declared being aware of the Complainant, its activities and presumably it's Trademark in stating “we know to Carrefour Company is a very big company on the world wide”.
Prior to the reception of this said letter the Respondent had redirected Internet visitors to its website to the website of Walmart, the Complainant's main competitor. Subsequent to June 2008, the Respondent cancelled the redirection of visitors to Walmart and then indicated that the website to which the disputed domain name resolved was under construction and thereafter redirected the visitors to another website “www.buydomain.com”.
The Complainant contends that by reason of the registrations of its Trademark CARREFOUR and its use and promotion in association with the products in the 34 classes and services in the 8 classes, its Trademark CARREFOUR has become most distinctive and was recently ranked second amongst the most valuable European trademarks in retail services. With the support of an earlier UDRP panel decision which held that the addition of the word “group” to the distinctive element does not rebut the confusion similarity, the Complainant further contends that this word “group” cannot be taken into consideration when judging confusing similarity. See Carrefour SA contre Eric Langlois, WIPO Case No. D2007-0067.
Relying on another UDRP decision, Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563, the Complainant quotes the panel who stated that “(i) the incorporation in the domain name of a distinctive trademark in its entirety creates sufficient similarity between that trademark and the domain name to create a likelihood of confusion and (ii) the addition of generic terms to a domain name (such as “finance” and “voyage”) incorporating a well-known trademark in its entirety, not only does not eliminate a likelihood of confusion but may even reinforce the impression of an affiliation amongst the domain name and the complainant”. In that instance, the panel had ordered the transfer of the domain names <carrefourfinance.com> and <voyage-carrefour.com> to the Complainant. Therefore, the Complainant submits that the disputed domain name is confusingly similar with its distinctive and well-known Trademark.
The Complainant states that there is no legal relationship with the Respondent and that it did not consent to nor acquiesce in the registration and use of the disputed domain name. Furthermore it states that it has expanded considerably its activities in France and all over the world with more than 15 000 stores under the CARREFOUR Trademark including 20 stores in Turkey, and that its presence and awareness was acknowledged by the Respondent when the latter stated in its e-mail correspondence with the Complainant his knowledge that Carrefour Company is a very big company on the worldwide. Therefore the Complainant, relying on this correspondence and on earlier UDRP decisions involving the CARREFOUR Trademark, submits that the Respondent must have been aware of the Trademark and did not have any legitimate interest nor rights in the disputed domain name, particularly upon considering that the Respondent was routing visitors to its website to a competitor of the Complainant, namely Walmart. See Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623; Carrefour SA contre Eric Langlois, supra; Carrefour S.A. v. Damian Macafee, WIPO Case No. D2002-1060; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745; Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059 and Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. On the basis of these facts and UDRP decisions, the Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
Relying on the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, wherein the administrative panel acknowledged that “ the complainant had numerous trademark registrations and a wide reputation” and concluded that the disputed domain name had been registered by the respondent in bad faith, the Complainant, herein, alleges a similar worldwide well-known Trademark including Turkey in addition to its ownership of more than 300 domain names, many including the Trademark CARREFOUR within which some incorporated the term “group” and others which had been challenged by the Complainant and transferred to it pursuant to panel decisions. The Complainant contends that the disputed domain name was registered in bad faith by the Respondent who was undoubtedly aware of the Complainant, its Trademarks and activities when it registered the disputed domain name.
The Complainant suggests that in view of the well-known status of its Trademark around the world and in Turkey and the awareness of the Complainant's markets and Trademark acknowledged by the Respondent in the e-mail exchange, the Respondent engaged in an opportunistic bad faith as held by the panel in the Parfums Christian Dior v. Javier Gardia Quintas and Christiandior.net, WIPO Case No. D2000-0226. The adoption by the Respondent of an obvious typo squatter's behaviour by registering one of the rare domain names not registered by the Complainant confirms this conclusion. Furthermore, according to the Complainant, the false name and address of the Respondent supports the deceptive nature of its entire modus operandi supplying false information to hide his identity and this is itself evidence of bad faith.
Therefore, in view of the above, the Complainant submits that the disputed domain name was not only registered in bad faith but is also used in bad faith as it appears from the following representations.
The Complainant represents that the e-mail of June 11, 2008, from the Respondent to the Complainant to contact him amounts to an offer to sell the disputed domain name even though no specific amount of money was mentioned as held by the panel. See Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 and Zurich Insurance Company v. Domains For Sale, WIPO Case No. D2001-1423.
The Complainant alleges that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant in routing the said disputed domain name to Walmart's website, a competitor of the Complainant and then to suspend such routing pursuant to the reception of the cease and desist letter from the Complainant. The Complainant relies on the panel decision in Mediacrop Radio Singapore Pte Ltd v. HL Lima aka Hwee Lee Lim, WIPO Case No. D2004-0291, to support its contention that the “subsequent lack of substantive use of the site” and “intent on the part of the Respondent to disrupt the Complainant's business” amounts to use in bad faith.
The Complainant represents that a further illustration of the Respondent's bad faith use resides in the fact that the Respondent has intentionally attempted to attract for commercial gain Internet users to an online location by creating a likelihood confusion with the Complainant's Trademarks as to the source sponsorship, affiliation or endorsement of the location.
Finally the inaction of the Respondent subsequent to the reception of the cease and desist letter from the Complainant in cancelling the routing to Walmart's website amounts to passive holding and the Complainant again relying on earlier UDRP panel decisions represents that the disputed domain name will better serve the community of Internet users by transferring it to a legitimate user, namely itself. See Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 and Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be 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 interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Comments on the evidence
Prior to engaging into the discussion, the Panel considers appropriate to comment on the quality and sufficiency of the evidence in this case.
The Complainant has provided ample and detailed evidence of the facts in this case as well as explained with numerous representations and reliance on earlier UDRP decisions including its seven earlier proceedings in respect of its Trademark CARREFOUR and the transfer of each domain name it was challenging. It is no surprise to this Panel that the Respondent who exchanged e-mail with the Complainant and acknowledges his awareness of the world wide presence of the Complainant's Trademark, did not file any response.
The Complainant is the registered owner of the CARREFOUR Trademark and has used it in association with several classes of products and services as mentioned in it French and international registrations as well as further registrations in 74 countries. Furthermore, it has used the said Trademark for over 45 years and has shown how it is now considered as ranking second at least in Europe. The documentary evidence adduced shows how its sales are in billions per year (“102.442 billion euros under banners in 2007”, Annex 10) generated in over 15,000 stores, including 20 in Turkey where the Respondent is located.
The promotional and advertising program of the Complainant is also an elaborate one in relying strongly on the Internet with its main website and domain name coupled and supported by more than 300 other domain names, of which about half do comprise the most distinctive term “Carrefour”.
The distinctive character of the Trademark does arise from the evidence presented in this case but has also been acknowledged by other panels in the several UDRP cases in which the Complainant was a successful party and obtained the transfer of the disputed domain name.
The Complainant has also represented that it has rights in the Trademark GROUPE CARREFOUR and CARREFOUR GROUP which, according to the evidence is not registered, but is used by the Complainant in its advertising and promotional campaign. The documentary evidence does show the use of GROUPE CARREFOUR as part of a logo which is used as a trademark, even though the words “groupe” and “Carrefour” are not of the same colour intensity as in the graphic of this logo trademark. The Panel considers this use of the said logo as the use of a trademark. The Complainant also uses GROUPE CARREFOUR and CARREFOUR GROUP as a trade name for the Complainant in sentences such as “The Carrefour group: a world leader in distribution” (Annex 10) which this Panel cannot consider as use as a trademark under the Policy.
This Panel has no hesitation in finding that the Complainant has rights in the CARREFOUR Trademark which the Panel finds highly distinctive so that the addition of descriptive term “groupe” and the gLTD suffix “.com” does not diminish in any way the distinctive character of the Trademark nor the confusing similarity between the Trademark and the disputed domain name.
The first criterion has been met.
The Respondent has not filed any Response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the disputed domain name by stating that the Respondent has never been known by the name CARREFOUR or CARREFOUR GROUPE or the domain name in dispute, and that its use by the Respondent is not legitimate noncommercial or fair use of the disputed domain name.
The Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant's Trademark nor to register the disputed domain name. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant's Trademark. While there is no clear or explicit evidence that the Respondent's action constitutes an attempt to extort money from the Complainant, it is certainly fair to conclude that the holding of the disputed domain name in dispute denies the Complainant access to the use of the disputed domain name corresponding to its Trademark.
Furthermore the evidence is clear and conclusive that the Respondent was trying to benefit from the routing of Internet visitors to its website to the Walmart website at least until the Complainant sent its cease and desist letter in June 2008 which acts have been considered contrary to a legitimate and fair commercial use by many panels before.
With the support of UDRP decisions cited by the Complainant and mentioned in the representations herein, the Complainant as this Panel finds has amply demonstrated that the Respondent has no rights or legitimate interest in the disputed domain name.
The second criterion has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in 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 the 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 website 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.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the disputed domain name was registered and used in bad faith.
The Respondent has in its e-mail to the Complainant stated its awareness of the world wide reputation of the Complainant and invited the Complainant to do business with him and illustrated the potential merit of the disputed domain name for the Complainant in inviting the Complainant to do business with the Respondent in listing its products on the website but not in selling the said disputed domain name (Annexes 2, 3, 4 and 5, all e-mails in June 2008 from the Respondent).
To this Panel, in agreement with the representation of the Complainant, the Respondent was well aware of the existence of the Complainant and its highly distinctive CARREFOUR Trademark when it registered the disputed domain name on November 22, 2007 without any authorization from the Complainant.
In so registering the disputed domain name, the Respondent knowingly registered a domain name that was confusingly similar to the most distinctive Trademark of the Complainant, prevented the Complainant from adding this domain name to its elaborate family of domain names. As it has been held by the panel in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, supra, the present facts do show on the part of the Respondent who has no connection with the products or services of the Complainant, an opportunistic bad faith upon registering the disputed domain name.
As correctly alleged by the Complainant, the Respondent has engaged in further bad faith behavior in providing false information, address, telephone and fax numbers upon registering the disputed domain name, which behavior does show the deceptive nature of the modus operandi of the Respondent in supplying false information to hide his identity. This Panel adopts and makes his the conclusion of the panel in Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068, in stating that this way of operating is evidence of bad faith. .
The Panel finds that the disputed domain name was registered in bad faith.
Subsequent to the registration of the disputed domain name in November 2007, at a date unknown at the present time, the Respondent started to redirect Internet visitors to the website associated with the said disputed domain name to the website of Walmart, a main competitor of the Complainant. This troubling fact was boldly mentioned by the Respondent in his e-mail correspondence with the Complainant in June 2008, but this improper redirection was stopped by the Respondent upon receiving the cease and desist letter from the Complainant.
While, in the view of this Panel, the Respondent was not offering the disputed domain name for sale to the Complainant, it was clearly trying to generated income from its use, and this said use was that of a domain name confusingly similar to the most distinctive Trademark of the Complainant, an objectionable behavior clearly contemplated under paragraph 4(b)(iv) of the Policy. As represented by the Complainant with the support of earlier UDRP panel decisions, the inactive or passive holding of the disputed domain name in the circumstances of the present case also amounts to use thereof in bad faith.
This Panel finds that the disputed domain name has been used in bad faith by the Respondent.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <carrefourgroupe.com> is confusingly similar to the Complainant's CARREFOUR Trademark;
(b) the Respondent has no rights or legitimate interests in the domain name in dispute;
(c) the disputed domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <carrefourgroupe.com> be transferred to the Complainant, Carrefour S.A.
J. Nelson Landry
Dated: February 16, 2009