WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Virtual Services Corporation
Case No. D2014-1179
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Virtual Services Corporation of Nassau, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cartaocarrefour.com> is registered with Name.net LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2014 the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2014.
The Center appointed Eduardo Machado as the sole panelist in this matter on August 15, 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 is a multi-format, multi-channel and multi-location French retailer on the market for over fifty years, currently being one of the largest retailers in the world with more than 10,000 stores in 34 countries. The Complainant also offers services as financing, savings and insurance solutions and, in France, more than 2.4 million customers have the “Carte Pass” (Carrefour’s Banque card).
Also, the Complainant is the owner of domain names such as <carrefour.com>, <carrefour.fr> and <carrefour.es>.
The Complainant, before filing the Complaint, tried to resolve the matter amicably via a cease and desist letter but did not obtain any response from the Respondent.
The Complainant is the owner of several trademarks registrations around the world, including the registration nº 1010661 for the International trademark CARREFOUR and the registration for the Community trademark CARREFOUR nº 008779498, both in class 35.
The trademark CARREFOUR has been considered “well known” and “famous” by previous UDRP panels (see Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe Carrefour, WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067).
The Complainant states that the disputed domain name directs Internet users to a parking page with pay-per-click links.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to its trademark CARREFOUR because it fully incorporates said marks, with the mere addition of the generic term “cartao” which means, in Portuguese, “card”. The Complainant affirms that, since the generic term used is related to one of its activity, the disputed domain name is likely to mislead Internet users.
The Complainant also states that the generic Top Level Domain (gTLD) “.com” has not to be taken into account when comparing the disputed domain name with a previously registered trademark, as it is a technical and necessary part of the domain name with no distinguishing nor legal significance.
The Complainant argues that it is not related in any way to the Respondent or has authorized or licensed the registered trademark CARREFOUR to be used as a domain name. The Complainant states that the Respondent is not known by CARREFOUR and did not demonstrate use of, or preparations to, the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant asserts that the Respondent clearly was aware of Complainant’s trademark and that the Respondent’s bad faith can be inferred since the Complainant’s trademark is well known and is being used by someone with no connection or authorization.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s CARREFOUR trademark. The Panel finds that the addition of the “.com” and the generic term “cartao” is not enough to escape a finding of confusing similarity.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the CARREFOUR trademark.
With respect to the paragraph 4(c )(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to the paragraph 4(c )(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name,
With respect to the paragraph 4(c )(iii) of the Policy, Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in a connection of a bona fide offering of goods or services.
In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy,
C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain name which reproduces Complainant’s famous trademark CARREFOUR. By the time the disputed domain name was registered, it was highly unlikely that Respondent did not know about the Complainant’s rights on the trademark CARREFOUR.
The Panel finds that Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name. Complainant’s allegations in this regard were not contested by Respondent.
Also, under the Policy, it is evidence of bad faith that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement or your web site or location of a product or service on you web-site or location”, Policy paragraph 4(b)(iv). This is what happened in this case.
Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith and that Complainant has established the third element of the paragraph 4(a) 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 <cartaocarrefour.com> be transferred to the Complainant.
Date: August 29, 2014