WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Xiamen PrivacyProtection Service Co., Ltd. / He Wen Ming

Case No. D2018-1577

1. The Parties

The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.

The Respondent is Xiamen PrivacyProtection Service Co., Ltd. of Xiamen, China / He Wen Ming of Chengdu, China.

2. The Domain Name and Registrar

The disputed domain name <carrefourbank.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2018.

On July 18, 2018, the Center transmitted an email in English and Chinese regarding the language of the proceeding to the Parties. The Complainant confirmed its request that English be the language of the proceeding on July 19, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2018.

The Center appointed Sok Ling MOI as the sole panelist in this matter on August 29, 2018. 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, headquartered in France, is one of the largest retailers in the world, offering a range of products and services in hypermarkets, supermarkets and convenience stores under the “Carrefour” brand. It operates more than 12,000 stores and e-commerce sites in more than 30 countries and generated revenues in excess of EUR 80 billion in 2017.

In 1995, the Complainant entered the mainland China market and established its first store in Beijing. As of the end of 2013, it has opened more than 200 hypermarkets in 73 cities in China, and employs more than 60,000 staff.

The Complainant, through its subsidiary, Carrefour Banque, also offers banking and insurance services (such as personal loan, resolving credit, credit redemption, auto and home insurance as well as complementary health services).

The Complainant owns numerous trade mark registrations for CARREFOUR and BANQUE CARREFOUR in several jurisdictions around the world, including the following registrations:

The Complainant also owns, and operates websites through, the following domain name registrations reflecting its registered trade marks to promote its services:

- <carrefour.com> registered on October 25, 1995;

- <carrefour.fr> registered on June 23, 2005.

The disputed domain name <carrefourbank.com> was registered on April 3, 2018, long after the Complainant has used and registered its trade mark CARREFOUR in China. According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website and appear never to have done so in the past.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name has been registered and used to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant therefore contends that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

Although the Respondent appears to be a Chinese native individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and

(b) the disputed domain name comprises the term “carrefour” and an English word “bank”.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in CARREFOUR and BANQUE CARREFOUR by virtue of its use and registration of the same as trade marks.

The disputed domain name effectively incorporates the Complainant’s trade mark CARREFOUR in its entirety. The addition of the English word “bank” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The addition of the generic Top-Level-Domain (gTLD) “.com” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the CARREFOUR trade mark or to seek registration of any domain name incorporating the CARREFOUR trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “carrefour”.

As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to offer any explanation for its registration of the disputed domain names, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Panel notes that, according to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview 3.0, section 3.3.

The CARREFOUR trade mark has been used and registered in China since 1995. Being a fanciful term, CARREFOUR is indeed distinctive. The Complainant and its trade mark CARREFOUR enjoy a strong reputation worldwide and a significant Internet presence. A cursory Internet search would have disclosed the CARREFOUR trade mark and its extensive use by the Complainant. A strong presumption therefore arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.

Given that the Complainant, through its subsidiary, also offers banking services, the Respondent’s choice of the domain name (being a combination of the Complainant’s trade mark CARREFOUR and the descriptive word “bank”) appears to be an attempt to prevent the Complainant from reflecting its trade mark in a corresponding domain name. Furthermore, the addition of the word “bank” may contribute further to the confusion as Internet users may mistakenly believe that the disputed domain name is owned or controlled by Banque Carrefour (since the French word “Banque” can be translated to “bank” in English”) or that it will be used as the Complainant’s officially endorsed website offering banking and related financial services targeted at the China market.

The Panel notes that the Respondent had immediately engaged a domain name privacy shield service upon receipt of the Complainant’s cease and desist letter. The Panel considers the deliberate attempt by the Respondent to conceal its identity as further indication of a lack of bona fides.

The Respondent has not categorically denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances of this case, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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 <carrefourbank.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: September 13, 2018