Complainants are Carrefour of Levallois Perret, France, and Carrefour Property of Mondeville, France, represented by J.-P. Karsenty & Associés, France.
Respondent is MIC Domain Management, of Closter, New Jersey, United States of America.
The disputed domain name <carrefourproperty.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2009. On April 15, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On April 15, 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that 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 April 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 20, 2009.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 29, 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 trademark upon which the Complaint is based is CARREFOUR. According to the documentary evidence and contentions submitted, Complainant Carrefour owns a number of trademark registrations for the CARREFOUR trademark around the world, including the French Registrations Ns. 1,487,274 of September 2, 1988, renewed as of May 23, 2008, and 1,565,338 of December 8, 1989, renewed as of September 15, 1999; and the International Registrations Ns. 351,147 of October 2, 1988, renewed up to October 2, 2018, and 353,489, of February 28, 1989, renewed up to February 28, 2019, for a variety of goods and services.
According to the documentary evidence and contentions submitted, Complainant Carrefour Property is part of the Carrefour Group and is engaged in the management of Carrefour properties. The Panel accepts Complainants' contentions that Carrefour is a well known group in the field of retail services and that the CARREFOUR trademark is a widely known trademark worldwide.
The Panel also notes that the fame of the CARREFOUR trademark has been confirmed in at least two previous WIPO UDRP decisions. See, Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067 (where the panel found that “[l]a notoriété de cette marquee peut être considérée comme un fait patent”); Carrefour v. Monsieur Olivier Duchange, WIPO Case No. D2007-0517 (where the panel found that “la marque CARREFOUR est incontestablement une marque notoire, notamment sur le territoire français, comme déjà relevé par une commission administrative dans Carrefour S.A contre Multigestiones Puertonorte S.L, litige OMPI n° D2000-0837”).
According to the documentary evidence and contentions submitted, the domain name <carrefourproperty.com> was registered with eNom, Inc. on September 2, 2007.
Complainants argue that the disputed domain name is identical to the name Carrefour Property, and is confusingly similar to the CARREFOUR trademark because the most significant element of the domain name is the word “Carrefour”. Complainants also contend that the addition of the generic word “property” does not rebut the confusing similarity and that the top-level domain “.com” is not to be taken into consideration.
Complainants further contend that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has not been known under the disputed domain name; (ii) Respondent does not make a legitimate noncommercial or fair use of the domain name; (iii) the disputed domain name is being offered for sale to the public; and (iii) Respondent has no legal relationship with the Complainants, which have neither consented to or acquiesced in the use of the disputed domain name.
Finally, Complainants contend that Respondent registered and used the disputed domain name in bad faith because (i) Respondent has been engaged in a pattern of cybersquatter's conduct, (ii) Respondent did not respond to cease and desist letters sent by Complainants, and (iii) Respondent intentionally attempted to attract for commercial gain Internet users to Respondent's website or other on-line location by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the Respondent's website or location.
The Respondent did not reply to the Complainant's contentions.
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainants from these facts. See, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. As previously mentioned, Reuters Limited; See also, RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainants have complied with such requirements.
The domain name <carrefourproperty.com> incorporates the CARREFOUR mark in its entirety. In this type of combination it is clear that the CARREFOUR trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous WIPO UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a well-known trademark, as in the instant case.
The addition of the generic term “property” does not affect a finding that the disputed domain name is confusingly similar to the CARREFOUR registered mark. It has been consistently decided that the addition of generic or descriptive terms to a domain name together with a distinctive mark may be considered confusingly similar to the mark. See, e.g., Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. In addition, the Panel notes that prior WIPO UDRP panels have held that the combination of the CARREFOUR mark with other generic terms to a domain name can be considered as identical or confusingly similar to the mark. See inter alia, Carrefour S.A. v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837 (for <carrefourgroup.com> and <newcarrefourgroup.com>); Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623 (for <carrefourvoyages.com>); Carrefour SA v. Eric Langlois, supra (for <groupecarrefour.com>; Carrefour v. Field, Lake & Sky, WIPO Case No. D2007-0563 (for <carrefourfinance.com> and <voyage-carrefour.com>); Carrefour, S.A., Viajes Carrefour S.L. v. Pablo Iglesias Junco, WIPO Case No. D2008-1040 (for <viajescarrefour.com>).
The likelihood of confusion between the disputed domain name and the CARREFOUR trademark is reinforced by the fact that one of the companies of the Carrefour Group is Complainant Carrefour Property. The disputed domain name is identical to the corporate name of that company.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the <carrefourproperty.com> domain name is clearly confusingly similar to the CARREFOUR trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel finds as reasonable Complainants' contentions that (i) Respondent has not been known under the disputed domain name, (ii) Respondent has no legal relationship with the Complainants, and (iii) Complainants have not consented to or acquiesced in the use of the disputed domain name.
According to the documentary evidence and contentions submitted, the disputed domain name originally resolved to a parking website using SEDO services and screen display. Reference is made to Annexes 30, 31, and 32 of the Complaint. Later on, the domain name was offered for sale to the public on SEDO's website for 1,250 Euros. Reference is made to Annex 34 of the Complaint. As a result of an independent research made on June 11, 2009 by accessing the website to which the domain name at issue resolves, the Panel noted that the website at <carrefourproperties.com> is a simple sponsored link page related to the field of properties, with a front page message reading: “This domain may be for sale by its owner!”. Internet users clicking on such message are redirected to SEDO's website and invited to “Make Offer”.
Complainants sent an informal communication to the Center on April 16, 2009, one day after the Complaint had been received by the Center, with copy of an email message supposedly coming from Respondent and offering the domain name for sale for 500 Euro. The Panel notes this submission filed after the Complaint but is of the opinion that the evidence on record is sufficient to resolve the issue and finds no need to asses this submission.
The Panel concurs with the prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a parking website. See, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. As decided in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.” The additional circumstance that the disputed domain name is being offered for sale confirms that there is no bona fide offering of goods or services.
In short, Complainants have satisfied their burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
Complainants' first contention is that Respondent has been engaged in a pattern of cybersquatting activities. Relying on Japan Air Gases Limited v. MIC, WIPO Case No. D2003-0344, Complainants state that Respondent “was already sentenced an impressive number of times to transfer domain names under several identities such as MIC, Syed Hussain and CPIC Net”. Respondent MIC in Japan Air Gases Limited v. MIC was also located in Closter, New Jersey, USA, as in the instant case, and was associated with a certain Syed Hussain, the administrative contact for respondent. That panel found no evidence that MIC had a real separate corporate existence and held that a pattern of conduct had been established consisting of the registration of domain names which combine names of companies about to enter merger agreements.
In Allianz AG and Dresdner Bank AG v. MIC, WIPO Case No. D2001-1298, the complainant provided a list of several WIPO and NAF cases involving Syed Hussain, MIC and CPIC Net, and the panel found that respondent had registered the disputed domain name for the purposes of selling it. In Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239, Domain Management appears associated with Syed Hussain and the panel, relying on 23 WIPO and NAF cases involving involving Syed Hussain, MIC and CPIC Net, found that the “[r]espondent already had achieved an extensive record of cybersquatting”.
Accordingly, the Panel finds that those elements are conclusive evidence that Respondent has been engaged in the abusive registration and use of domain names which incorporate registered trademarks for the purposes of selling them. This is clear evidence of bad faith which can likewise be attributed to the registration and use of the disputed domain name.
In addition, Complainants provided as evidence a cease and desist letter addressed to Respondent on June 2, 2008 which Complainants asserted was never responded to. As decided in Gaggia S.p.A. v. Yokngshen Kliang, WIPO Case No. D2003-0982, “[w]hen receiving such notice, good faith requires a response. Instead, the Respondent did nothing.” This Panel concurs with such reasoning and finds that Respondent's inaction shows lack of legitimate interest in the disputed domain name and lack of good faith in the registration and use thereof.
Finally, given the extensive reputation of the CARREFOUR trademark and the publicity involving the activities of Complainant Carrefour Property, as determined by the documentary evidence and contentions submitted, the Panel sees no plausible explanation for Respondent's adoption and use of the term “carrefour” in conjunction with the term “property” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants' trademark. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. That circumstance is also evidence of registration and use of a domain name in bad faith under paragraph 4(b) of the Policy.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <carrefourproperty.com> be transferred to the Complainant Carrefour.
Manoel J. Pereira dos Santos
Dated: June 12, 2009