WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Whois Agent, Whois Privacy Protection Service Inc. / Andres Saavedra
Case No. D2016-0608
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & Associés, France.
The Respondent is Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America and Andres Saavedra of Montevideo, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <viajescarrefour.net> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2016 against Whois Agent, Whois Privacy Protection Service Inc. and Andres Saavedra. On March 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Andres Saavedra 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 9, 2016. 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 is the owner of several trademark registrations for CARREFOUR including European Union Trademark Registration No. 005178371, in classes 9, 35 and 38, registered on June 20, 2006. Its affiliate, Viajes Carrefour S.L., is the owner of the Spanish Trademark Registration No. 2979447, dated May 3, 2011 for VIAJES CARREFOUR in classes 36, 39, 41 and 42. In addition to such trademark registrations, the Complainant also owns and operates the domain names <carrefour.com> and <carrefourvoyages.com>, as well as the subdomain <viajes.carrefour.es>.
The disputed domain name <viajescarrefour.net> was registered on February 10, 2012, and currently resolves to an active webpage in which tours and cruises are being offered for sale.
5. Parties’ Contentions
The Complainant asserts that it is the leading retailer in Europe and the second largest retailer in the world, employing more than 380,000 people and operating over 12,000 stores in more than 30 countries. Its subsidiary Viajes Carrefour S.L. has been exploiting for over 30 years the services of travel agencies in Europe.
Furthermore, the Complainant asserts that its trademark CARREFOUR enjoys a worldwide reputation, as past UDRP panels have considered it to be “famous” or “well-known”.
The disputed domain name which, according to the Complainant, is being used to offer travel services in the Spanish language, reproduces entirely the Complainant’s CARREFOUR trademarks and its affiliate’s VIAJES CARREFOUR trademark.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
i. the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks as domain names;
ii. the Respondent has no prior rights or legitimate interests in the CARREFOUR or VIAJES CARREFOUR marks;
iii. the website that resolves from the disputed domain name creates a false impression of affiliation with the Complainant given that travel services are being offered there and Internet users are likely to wrongly believe that such is an official website, in spite of a disclaimer written at the bottom of the page in small letters which states that such website is not the official website of the trademark holder; and
iv. the Respondent used a privacy protection service to hide his true identity.
Furthermore, the Complainant asserts that the bad faith in the registration, through a privacy shield, of the disputed domain name is evident given the fact that CARREFOUR is a well-known trademark throughout the world and that the Respondent could not claim to be unaware of it (which is further confirmed by the almost illegible disclaimer at the bottom of the webpage relating to the disputed domain name).
As to the use of the disputed domain name in bad faith, considering that the Respondent is offering travel services, similar services to offered by the Complainant’s subsidiary, such use cannot be considered a bona fide offering of goods or services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed 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 disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known trademark CARREFOUR. It has further shown that its subsidiary is the owner of a Spanish Trademark Registration for VIAJES CARREFOUR.
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the term “viajes”, in this Panel’s point of view, only makes the disputed domain name more confusing with the Complainant’s subsidiary’s VIAJES CARREFOUR trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii. the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
iii. the Respondent is making a legitimate noncommercial or fair use of the disputed 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 or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, the Complainant indeed asserts that no authorization or license has been given by the Complainant to the Respondent to register the disputed domain name. There is also no evidence that the Respondent has been commonly known by the disputed domain name.
According to the evidence submitted by the Complainant the website that resolves from the disputed domain name offers travel services in a commercial manner that, in this Panel’s, view could suggest (incorrectly) that such was operated by an affiliate of the Complainant or its Spanish subsidiary.
Furthermore, the disclaimer at the bottom of the webpage in very small letters stating that such website is not the official website of the trademark holder might not be entirely legible for the average Internet user given that it is depicted after and in connection with a copyright notice (“© Todos los derechos reservados - Sitio no oficial de la marca”), which leads this Panel to the conclusion that the Respondent was seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the CARREFOUR trademark, as well as the offer of similar travel services, on the website that resolves from the disputed domain name.
The small disclaimer aforementioned in the Respondent’s website clearly indicates full knowledge of the CARREFOUR trademark, and does not serve to remove any likelihood of confusion.
Four other factors corroborate a finding of bad faith:
a. the absence of reply to the warning letters the Complainant sent before filing the Complaint (Annex 4 to the Complaint);
b. the use of a privacy protection service;
c. the use of a false address in the Whois data, after the privacy shield was removed: and
d. the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <viajescarrefour.net> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: May 10, 2016