WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. whoisprotection.biz / Sedat Gedik
Case No. D2014-1107
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is whoisprotection.biz / Sedat Gedik of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <carrefourgroup.com> is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2014. On June 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2014, 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 2, 2014 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 3, 2014.
On July 2, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On July 3, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Turkish, and the proceedings commenced on July 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2014.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on August 4, 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. Over the past 50 year, the Complainant has grown to become one of the largest retailers of the world.
The Complainant owns and operates various websites in order to present the Complainant’s services and products, including “www.carrefour.com” and “www.carrefour.com.tr”.
The Complainant, in particular, is the owner of a Community trademark CARREFOUR no. 008779498 dated December 23, 2009; an international trademark CARREFOUR no. 1010661 dated April 16, 2009; a US trademark CARREFOUR no. 3720625 dated December 8, 2009; and a Turkish trademark CARREFOUR no. 107597 dated January 11, 1989.
The Complainant sent a cease-and-desist letter to the Respondent via email on March 25, 2014 and received a reply from Sedat Gedik in Turkish asking for EUR 5,000 in exchange for the transfer of the disputed domain name.
The Respondent is Sedat Gedik and is located in Istanbul, Turkey. The disputed domain name <carrefourgroup.com> was registered on February 4, 2014.
5. Parties’ Contentions
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 trademarks enjoy a worldwide reputation. The Complainant has registered numerous CARREFOUR trademarks in countries around the world. The Complainant further has registered a number of domain names that incorporate the CARREFOUR trademark.
The disputed domain name is confusingly similar to the Complainant’s CARREFOUR trademark and company name. The disputed domain name reproduces the Complainant’s CARREFOUR trademark in its entirety, which previous UDRP panels have considered to be well-known. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. The disputed domain name is confusingly similar to the Complainant’s trademark since Internet users may expect to land on a website of the Complainant when typing in the Complainant’s trademark CARREFOUR together with the term “group”, which is commonly understood and used for a group of companies. Addition of generic terms to well-known trademarks does not prevent the risk of confusion between the trademark and the domain name at issue.
The Complainant opened the first hypermarket in Icerenkoy followed by another in 1996 in Istanbul. Now, there are up to 8000 employees 243 shops, hypermarket and supermarket formats in Turkey.
The Complainant is the owner of many different trademark registrations in Turkey. 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 many years.
As the disputed domain name is identical to the famous CARREFOUR trademark of the Complainant, the Respondent cannot reasonably claim to have intended to develop legitimate activity through the disputed domain name.
Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) The disputed domain name registered by the Respondent 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 was registered and is being used in bad faith.
Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, Panel has discretion to determine a different language.
According to the information received from the Registrar, the language of the registration agreement for the disputed domain name is Turkish. The Complainant has submitted the Complaint in English and requested that the language of the administrative proceeding be English. The Respondent has not submitted any objection to the Complainant’s request, despite the Center’s invitation sent in both English and Turkish. The Panel notes that the notification of this Complaint to the Respondent has been done both in English and Turkish by the Center. The Panel also considers it relevant that the Complainant’s trademark is not a Turkish term, suggesting that the Respondent has sufficient grasp of English. For this reason, the Panel agrees to hold the proceeding in English as requested by the Complainant.
A. Identical or Confusingly Similar
The Complainant has registered the CARREFOUR trademark in a number of jurisdictions, including in Turkey. The Complainant submits that the disputed domain name is confusingly similar to its trademark as the disputed domain name incorporates the CARREFOUR trademark in its entirety. The Panel finds the Complainant’s CARREFOUR trademark to be well-known worldwide.
The Panel agrees with the Complainant that the disputed domain name <carrefourgroup.com> is confusingly similar to the Complainant’s trademark, since the term “carrefour” is the most distinctive element in the disputed domain name. The Panel also finds that due to the fame of the Complainant’s CARREFOUR trademark, the addition of the merely generic or descriptive element “group” to this trademark in the disputed domain name does nothing to avoid a finding of confusing similarity in this case.
Finally, as regards the generic Top-Level Domain name “.com”, it is a consensus view among the UDRP panels that it may be ignored for the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, in particular but without limitation, demonstrate a respondent’s rights or legitimate interests in a domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Panel notes that the Respondent has defaulted in this administrative proceeding and has not demonstrated that any of the above situations apply in this case.
Moreover, the Panel notes that the Respondent does not appear to have any relevant registered trademarks for or trade names relating to “carrefour” and no license or authorization of any other kind has been given to the Respondent by the Complainant to use its registered CARREFOUR trademark.
It is well-established that for the purposes of paragraph 4(a)(ii) of the Policy, it is sufficient for the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production of evidence to the Respondent. As the Respondent has not rebutted the Complainant’s prima facie case in this administrative proceeding nor provided any evidence of having rights or legitimate interests in the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of 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 Panel confirms that the reputation and recognition of the Complainant’s trademark CARREFOUR and is convinced that the Respondent must have known of the Complainant and its trademark when it registered the disputed domain name.
Prior UDRP panels have held that registering and using domain names which correspond to well-known trademarks may in appropriate circumstances suggest bad faith (Carrefour v. Simon Lundgren, WIPO Case No. DAE2014-0001; LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)
Moreover, the Panel has noted that the Respondent does not appear to have used the disputed domain name after the proceeding had been initiated by the Complainant. The Panel finds that the Complainant has demonstrated that the Respondent’s has registered and is using the disputed domain name in bad faith as it offered to sell the disputed domain name to the Complainant for EUR 5,000. This behaviour falls clearly within the definition of bad faith under the Policy, cf. paragraph 4(b)(i) (see Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173).
As such, taking into account all the circumstances of this case, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <carrefourgroup.com> be transferred to the Complainant.
Ugur G. Yalçiner
Date: August 24, 2014