WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Milen Radumilo
Case No. DCO2020-0020
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <carrefur.co> (the “Domain Name”) is registered with Communigal Communications Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 24, 2020.
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 of the Complaint, and the proceedings commenced on April 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2020.
On April 27, 2020, the Center sent an email communication to the Registrar, noting that the Domain Name is set to expire on July 2, 2020, and requesting confirmation that “1) the disputed domain name will be placed in Registrar lock status, and that the disputed domain name will remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded, and 2) whether any action is required by the Parties (either now by the Respondent, or by the Complainant in the event that the domain name is deleted or expires during the dispute) to keep the disputed domain name under Registrar lock so that the administrative procedure can continue as required under the UDRP.” After several reminders, the Registrar replied on June 8, 2020, promptly followed by an email communication by the Center to the Parties, informing them of their required actions to ensure that the Domain Name remains active.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 8, 2020. 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 a French multinational company, which specializes in retail services, such as supermarket, hypermarket, and online store services. In addition, the Complainant offers banking, travel, ticketing and other services. The Complainant is the registered owner of many CARREFOUR trademarks, which include:
- the International Registration No. 351147, registered on October 2, 1968;
- the International Registration No. 353849, registered on February 28, 1969;
- the International Registration No. 563304, registered on November 6, 1990;
- the European Union Registration No. 008779498, registered on July 13, 2010.
The Respondent registered the Domain Name on July 2, 2019. At the time of filing of the Complaint, the Domain Name resolved to dynamic redirections, including the official website of the Complainant or the website displaying pay-per-click (PPC) links related to the Complainant’s business. At the time of the decision, the Domain Name directs to a parking webpage displaying PPC links of grocery/supermarket services and a link “Click Here To Buy This Domain.”
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s CARREFOUR trademark because the Domain Name incorporates the Complainant’s trademark in its entirety. The only difference between the Complainant’s mark and the Domain Name is the omission of the letter “o” after the letter “f”. The Complainant submits that inclusion of the country code Top-Level Domain (“ccTLD”) “.co” into the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark because the ccTLD is the standard registration requirement and should be disregarded as such.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent has no trademark rights in the Domain Name. The Complainant contends that the Respondent is not commonly known by the Domain Name. The Complainant asserts that the Respondent is using the Domain Name without a license or authorization from the Complainant. The Complainant asserts that before filing of the Complaint, the Respondent had not used or made any demonstrable preparations to use the Domain Name in connection to a bona fide offering of goods or services. The Complainant contends that the Domain Name resolves to several redirections: “ww2.siteplug.com”, a malicious link, while the host of “www.siteplug.com” seems legitimate. The Complainant argues that the Respondent is using the feature of the “www.siteplug.com”, which can redirect users to a brand’s corporate site when users make domain typos, in this case typing “carrefur” instead of “carrefour”. The Complainant contends that the Domain Name also points to either a malicious website potentially containing malware, or to the official site of the Complainant at the domain name <carefour.fr>. The above use of the Domain Name does not constitute a bona fide use.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the Domain Name with the knowledge of the Complainant’s existence and its trademarks because the Complainant’s CARREFOUR trademark is well known. The Complainant submits that the Respondent chose the Domain Name because of its high similarity to the Complainant’s trademarks to attract Internet users searching for the Complainant’s services or products, to the website at the Domain Name. The Complainant argues that the Respondent registered the Domain Name to prevent the Complainant from reflecting its trademarks in the corresponding Domain Name. The Complainant asserts that the Respondent is using the Domain Name in bad faith because the Domain Name resolves to random websites including the Complainant’s official webpage or a warning page containing the statements, such as “your system is a hacked”, “your system is sending a virus”, etc.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns a trademark registration for the CARREFOUR trademarks. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
The Domain Name consists of the word “carrefur” and the ccTLD “.co”. Where a domain name “consists of a common, obvious, or intentional misspelling of a trademark”,1 the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing2. It is well-established, that the applicable ccTLD should be disregarded under the confusingly similarity test as a standard registration requirement.3
Because the word “carrefur” is a misspelling of the well-known CARREFOUR trademark, the Domain Name is confusingly similar to the Complainant’s trademark. The ccTLD “.co” should be disregarded from the assessment of confusing similarity. Thus, the Domain Name is confusingly similar to the Complainant’s CARREFOUR trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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.
To prove the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
There does not appear to be any direct evidence in the case file showing the website to which the Domain Name resolved was distributing malware. However, the case record shows that the Domain Name resolved to dynamic redirections, including the official website of the Complainant or the website displaying PPC links related to the Complainant’s business.
Therefore, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Name. The evidence on file shows that the Respondent has not been commonly known by the Domain Name. The Respondent has not had a permission or authorization from the Complainant to use the Complainant’s trademark in domain names.
Nor has the Respondent used the Domain Name in connection with a bona fide offering of goods or services. It is well-established among UDRP panels that “the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” 4. Here, the Respondent is using the Domain Name comprised of the misspelling of the Complainant’s trademark to direct to a parked page comprising of PPC links that offer grocery/supermarket services similar to those of the Complainant.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name because the Respondent is deriving commercial gain from the PPC links and most likely, intends to profit from its offer to sell the Domain Name that is displayed on the website at the Domain Name.
Finally, the Respondent has been engaged in a pattern of registering domain names corresponding to the Complainant’s trademark, which also shows lack of rights or legitimate interests in the Domain Name. See, Carrefour v. Contact Privacy Inc. Customer 0153822170 / Milen Radumilo, WIPO Case No. D2019-0762; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-0409; Carrefour v. Contact Privacy Inc. Customer 0153824515 / Milen Radumilo, WIPO Case No. D2019-2280; Carrefour v. Contact Privacy Inc. Customer 0153830825 / Milen Radumilo, WIPO Case No. D2019-1591; Carrefour S.A. v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2018-2818.
Because the Complainant has made out the prima facie case, the burden of producing evidence demonstrating the Respondent has rights or legitimate interests in the Domain Name has shifted to the Respondent. The Respondent has failed to present any rebutting evidence.
The Panel concludes that the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
Paragraph 4(b) of the UDRP provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel finds that it is likely that the Respondent registered the Domain Name with the intent to profit from the Complainant’s trademark’s goodwill and reputation because the Respondent registered the Domain Name being confusingly similar to the Complainant’s well-known trademark and directs it to various websites, including the website that displays sponsored links of grocery/supermarket services and a link “Click Here To Buy This Domain.” It is likely that the Respondent is deriving financial gain from such activities.
Further, the Panel finds that the Respondent registered and is using the Domain Name in bad faith because the Respondent, who has engaged in a pattern of abusive domain name registration, has registered the Domain Name to prevent the Complainant from reflecting the mark in a corresponding domain name. It is well-established among UDRP panels that a pattern of conduct preventing a trademark holder from reflecting its trademark in a domain name is found where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.5 Here, the Respondent registered the domain names that were confusingly similar to the Complainant’s trademark on multiple occasions. Carrefour v. Perfect Privacy, LLC / Milen Radumilo, supra; Carrefour v. Contact Privacy Inc. Customer 0153822170 / Milen Radumilo, supra; Carrefour v. Contact Privacy Inc. Customer 0153824515 / Milen Radumilo, supra; Carrefour v. Contact Privacy Inc. Customer 0153830825 / Milen Radumilo, supra; Carrefour S.A. v. Perfect Privacy, LLC / Milen Radumilo, supra.
Finally, the registration of the Domain Name, which contains a misspelling of the Complainant’s well-known CARREFOUR trademark, constitutes registration and use bad faith. See, Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (where the panel found that typosquatting is virtually per se registration and use in bad faith).
In view of the above, the Panels finds that the Domain Name was registered and is being used in bad faith. The Complainant satisfied the third element of the UDRP.
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 Domain Name <carrefur.co> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 15, 2020
1 Section 1.9, WIPO Overview 3.0.
2 Id.
3 Section 1.11.1, WIPO Overview 3.0.