WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. PrivacyProtect.org / Ruben

Case No. D2013-2001

1. The Parties

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

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia / Ruben of Murcia, Spain.

2. The Domain Name And Registrar

The disputed domain name <carrefouronline.info> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Ruben 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 November 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2013.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on January 16, 2014. 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, Carrefour, is a worldwide group of companies that owns numerous well-known CARREFOUR trademarks around the world in the field of retail, ticket offices, travel, banking and insurance. Including franchises and partners, the Carrefour Group has around 10,000 shops in 34 countries. The Complainant has grown to become the second-largest retailer in the world and the largest in Europe, operating hypermarkets, supermarkets, convenience stores and cash and carry shops for professionals.

The Complainant opened the first hypermarket in Spain in 1973 and currently has 173 hypermarkets, 114 Supermarkets Express, 415 Travel Agencies, 115 Supermarkets Market, 103 service stations in Spain.

The Complainant owns and operates various websites in order to present the Complainant’s services and products, including “www.carrefour.com” (registered October 25, 1995), ”www.carrefour.fr” (registered June 23, 2005) and ”www.carrefour.es” (registered on November 14, 2000).

The Complainant, in particular, is the owner of a Community trademark CARREFOUR no. 008779498 dated December 23, 2009.

The Complainant is also the owner of a Community trademark CARREFOUR ONLINE no. 007245913 dated September 10, 2008.

The Complainant sent a cease-and-desist letter to the Respondent via email and registered mail on September 3, 2013 requesting the Respondent to transfer the disputed domain name to the Complainant free of charge.

Upon sending of a reminder on September 10, 2013 by the Complainant, the Respondent replied positively to the cease-and-desist letter on the same day and asked for the procedures to be followed in order to proceed with the transfer. Representatives of the Complainant replied back on the next day to confirm the procedures for the transfer of the disputed domain name.

On September 13, 2013 the Respondent sent an email stating that now the Respondent required a payment of EUR 1000 via PayPal for the transfer of the disputed domain name. Representatives of the Complainant made another attempt for the Respondent to accede to the request to transfer the disputed domain name from the Respondent. However the Respondent replied that the EUR 1000 payment for the transfer was non-negotiable and invited the Complainant to otherwise take further legal action if the Complainant was unwilling to meet the demands. The Complainant’s representative made a last attempt at requesting the transfer of the disputed domain name without cost but the Respondent did not reply to this last attempt.

The disputed domain name <carrefouronline.info> was registered on July 21, 2013.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

- The Complainant and its CARREFOUR and CARREFOUR ONLINE trademarks enjoy a worldwide reputation. The Complainant has registered numerous and CARREFOUR ONLINE trademarks in countries around the world. The Complainant further has registered a number of websites around the world that incorporate the CARREFOUR trademark.

- The disputed domain name is identical to the Complainant’s CARREFOUR ONLINE trademark and reproduces entirely the CARREFOUR trademark and company name of the Complainant. The disputed domain name reproduces the Complainant’s CARREFOUR ONLINE and CARREFOUR trademarks in their entirety, which previous UDRP panels have considered to be “well-known” and “famous”. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark.

- Due to popularity of the Complainant’s trademarks CARREFOUR and CARREFOUR ONLINE, the public has learnt to perceive goods and services offered under those trademarks to be those of the Complainant. Therefore the public would reasonably assume that the disputed domain name is owned or related to the Complainant.

- The disputed domain name is identical in all material respects to the Complainant’s company name and trademarks CARREFOUR and CARREFOUR ONLINE and as such is likely to mislead Internet users into believing that the disputed domain name is authorized by or is otherwise affiliated with the Complainant or the Complainant’s business. It may lead Internet users to wrongly believe that the Complainant has endorsed, or otherwise created the disputed domain name.

- The addition of the generic Top Level Domain (gTLD ) “.info” is irrelevant and it is well established practice that gTLDs do not impact on the overall impression of the dominant portion of the disputed domain name.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent is not affiliated with the Complainant in any way nor has been authorized by the Complainant to use and register its trademark or to register any domain name incorporating the said trademark.

- The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the CARREFOUR trademark preceded the registration of the disputed domain name by years.

- As the disputed domain name is identical to the famous CARREFOUR and CARREFOUR ONLINE trademarks of the Complainant, the Respondent cannot reasonably claim to have intended to develop legitimate activity through the disputed domain name.

- The Respondent is neither commonly known by the Carrefour or Carrefour Online names, nor is he in any way affiliated with the Complainant, nor authorized or licensed to use the CARREFOUR and CARREFOUR ONLINE trademarks or to seek registration of any domain name incorporating the said trademarks. In the absence of any permission or license from the Complainant to use such widely known trademarks, the Respondent cannot reasonably claim any actual or contemplated bona fide or legitimate use of the disputed domain name.

- The Respondent did not demonstrate any use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name used to resolve to a website reproducing CARREFOUR + logo and displaying non-official information on Complainant’s online services. After the start of the UDRP proceedings the disputed domain name resolved to an index page equating to an inactive page. Thus it is hard to believe that the Respondent could have selected the disputed domain name without knowing of the Complainant’s CARREFOUR and CARREFOUR ONLINE trademarks.

- According to an online dictionary the term “carrefour” has no meaning in English, the language of the Registration Agreement.

- The Respondent did not demonstrate any reason for the dispute domain name to be identical to the Complainant’s trademarks, activity, domain names and products and this cannot correspond to a legitimate interest in the disputed domain name.

- The Respondent’s first reply to the cease-and-desist letter accepting to transfer the disputed domain name to the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name. If the Respondent had any rights or legitimate interests in connection with the disputed domain name, he would have defended his rights by not accepting the transfer at first reply and would subsequently not have asked for a large sum of money in exchange for the transfer.

- Legitimate noncommercial or fair use of the disputed domain name cannot be inferred due to Respondent’s clear intention for commercial gain. It appears that the only reason behind the Respondent’s registration of the disputed domain name was the intention of selling it to the Complainant for valuable consideration and in excess of out-of-pocket expenses directly related to the disputed domain name.

(c) The disputed domain name was registered and is being used in bad faith:

- It is implausible that the Respondent was unaware of the Complainant when the disputed domain name was registered since the Complainant is well known throughout the world and its trademark registrations cover, amongst other countries, Spain, the home country of the Respondent.

- The Respondent’s reproduction in its entirety of the Complainant’s CARREFOUR and CARREFOUR ONLINE trademarks in the disputed domain name clearly proves that the Respondent was aware of the existence of the Complainant’s trademarks. Opportunistic bad faith has been found in previous UDRP decisions where a well-known trademark is used in a disputed domain name by someone with no connection to the trademark.

- It was the Respondent’s duty to establish that the registration of the disputed domain name does not infringe on any rights or any third party. A quick Internet search would have revealed the Complainant’s CARREFOUR trademark to the Respondent. Failure to do such a search is a contributory factor to bad faith.

- It is hard to believe that the Respondent was unaware of the Complainant’s CARREFOUR trademark when the disputed domain name was registered. This knowledge at the time of registration proves that the disputed domain name was registered in bad faith.

The Respondent did not try to defend its position, nor did the Respondent provide any arguments as to why the disputed domain name was registered. Instead the Respondent first accepted to transfer the disputed domain name to only later change his mind and for a sum of money in exchange.

- The Respondent used a privacy shield service to hide the Respondent’s true identity and contact details thus preventing the Complainant from contacting him. Prior UDRP panels confirmed that a deliberate concealment of identity and contact information may itself indicate registration in bad faith.

- Additionally the disputed domain name remains inactive. This demonstrates lack of legitimate interest in the disputed domain name and suggests evident bad faith behind the registration.

- It is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. There is no doubt that Internet users attempting to visit the Complainant’s website have ended up on the domain name registered by the Respondent. As the disputed domain name is confusingly similar to the Complainant’s trademarks, a likelihood of confusion is presumed and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to that of the Respondent.

- The disputed domain name resolved to a website reproducing the CARREFOUR trademark of the Complainant and logo and displaying non-official information on the Complainant’s online services. It is impossible to infer in such circumstances that the Respondent was unaware of the Complainant and the Complainant’s trademarks at the time of registration. Using a confusingly similar domain name to direct Internet users to one’s own website does not constitute a bona fide offering of goods or services.

- Later the Respondent stopped the use of the disputed domain name and it then led to an index page equating to an inactive page. It is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate, such as trademark infringement or an infringement of consumer protection legislation. Passive holding of a disputed domain name does not preclude the finding of bad faith.

- The Respondent did not provide any evidence of actual or contemplated good faith use of the disputed domain name. The Respondent’s request for monetary consideration in return for the transfer of the disputed domain name reveals bad faith use of the disputed domain name by the Respondent. It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain name can be compelling evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered the CARREFOUR and CARREFOUR ONLINE trademarks in a number of jurisdictions. The Complainant submits that the disputed domain name is identical to its trademark as the disputed domain name incorporates the CARREFOUR ONLINE trademark in its entirety.

The addition of a gTLD “.info” does nothing to distinguish the disputed domain name from the Complainant’s distinctive and well-known CARREFOUR and CARREFOUR ONLINE trademarks.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Accordingly, the Panel finds the disputed domain name <carrefouronline.info> to be confusing similarity to the Complainant’s trademark CARREFOUR and identical to the Complainant’s CARREFOUR ONLINE trademark.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) 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 complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights or legitimate interests in the disputed domain name.

The Panel further notes that there is no evidence that before any notice of the dispute the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain name is currently inactive, while previously it was linking to a website that incorporated a logo of the Complainant as well as some unofficial information on Complainant’s online products. Clearly, either such use of the disputed domain name in the Panel’s view cannot constitute a bona fide offering of goods and services in the circumstances of this case due to the unauthorized use of the Complainant’s trademarks CARREFOUR and CARREFOUR ONLINE in their entirety in the disputed domain name. There is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on July 21, 2013. The Complainant asserts that the Complainant has been trading under the CARREFOUR and CARREFOUR ONLINE trademarks long before the registration of the disputed domain name and the CARREFOUR and CARREFOUR ONLINE trademarks have acquired worldwide reputation and are globally known.

Therefore, the disputed domain name was registered with the knowledge of the CARREFOUR and CARREFOUR ONLINE trademarks and their reputation.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s CARREFOUR and CARREFOUR ONLINE trademarks as well as the goodwill associated with it. Even if the Respondent was not aware of the Complainant’s CARREFOUR and CARREFOUR ONLINE trademarks, a simple Internet search would have put the Respondent on notice of the Complainant’s rights in the CARREFOUR and CARREFOUR ONLINE trademarks and goodwill associated with them.

The disputed domain name may further mislead Internet customers as to the affiliation between the disputed domain name and the Complainant. Further the Complainant presented clear evidence that the Respondent offered the disputed domain name for sale to the Complainant.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 complainants, for valuable consideration in excess of its 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 online location, by creating a likelihood of confusion with the complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the disputed domain name was registered for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name with the CARREFOUR and CARREFOUR ONLINE trademarks of the Complainant.

The Panel finds that the disputed domain name has created a risk of confusion with the Complainant’s products and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel also finds that paragraph 4(b)(i) of the Policy applies since the Complainant presented evidence that the Respondent registered and is using the disputed domain name primarily for the purpose of selling it to the Complainant for consideration in excess of out-of-pocket expenses. This is evidenced by the offer made by the Respondent of transferring the disputed domain name to the Complainant for EUR 1000. It is clearly evident from correspondence between the Complainant and the Respondent that offering it for sale to the Complainant (or anyone else who comes along) is the Respondent’s primary purpose for the disputed domain name

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint as well as from the offer to sell the disputed domain name to the Complainant.

The Panel holds that the Respondent has registered and is using the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products must have been aware of the CARREFOUR and CARREFOUR ONLINE trademarks of the Complainant. The Panel is not aware and cannot conceive of the Respondent conducting any legitimate business activity using the disputed domain name. The above findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.

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, <carrefouronline.info> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: January 30, 2014