WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Joseph Azuka
Case No. D2014-1276
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Joseph Azuka of Toronto, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <carrefour.company> is registered with 101domain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2014. On July 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25 and 28, 2014, the Registrar transmitted by email to the Center its verification responses 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 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. The Response was filed with the Center on August 20, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 1, 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 retailer which operates in four formats: hypermarkets, supermarkets, convenience stores and cash and carry shops. It has apparently been operating for more than 50 years. Now, it has 10,000 stores in 34 countries and generated EUR 100.2 billion in revenues in 2013. Each day more than 10 million customers pass through its doors. More than 55% of its sales are generated outside France. The countries where it has stores, however, do not appear to include the United States of America ("USA") or Canada. Its activities appear to be carried on by reference to the trademark CARREFOUR. It also provides a range of services by reference to its trademark including customer finance and insurance.
The Complainant is the owner of two registered trademarks:
- International Registration No. 1010661 for CARREFOUR registered on April 16, 2009 for a range of services in International Class 35;
- Community Trademark No. 008779498 for CARREFOUR registered on July 13, 2010 for a range of services in International Class 35.
The disputed domain name was registered on March 20, 2014. At about the time the Complaint was initiated, it resolved to a website "under construction". Before the Complainant sent a cease and desist letter to the Respondent, however, the disputed domain name resolved to a website at which a number of domain names were offered for sale. It does not appear from the record that the disputed domain name was one of the domain names being offered for sale.
According to the Response, the Respondent is computer systems technologist by profession. According to a printout of his LinkedIn profile submitted by the Complainant, he has been a service technician at Toronto Zoo since March 2014. Prior to that, he was a computer technician there for a number of years. The Respondent also manages a business "TechDelegate". At this business, he has been offering domain names for sale. According to the Response, he also offers computer repairs and website designs from this site for free.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Panel notes that the Response appears to have been received by the Centre on August 20, 2014, the day after it was required to be filed under the Rules1. The Respondent has not sought to explain this delay nor requested an extension of time. The Complainant, however, has not objected to its reception. Pursuant to paragraph 10(d) of the Rules, the Panel admits the Response into the record principally on the basis that, although it was filed out of time, it was only one day late and the Complainant quite rightly has not claimed to have suffered any prejudice as a result. In addition, the Panel considers it more likely to promote a resolution of the dispute between the parties if the dispute is dealt with on its substantive merits rather than procedural matters.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for CARREFOUR identified above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) ".company" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252. On that basis the disputed domain name is identical to the Complainant's trademark.
The Complainant also points out that the gTLD in this case, ".company", tends to reinforce the potential for confusion suggesting that it is the domain name of the company called Carrefour: citing Canyon Bicycles GmbH v Domains by Proxy LLC / Rob van Eck, WIPO Case No. D2014-0206 and Hultafors Group AB v my domain limited, WIPO Case No. D2014-0597. The Panel accepts the general proposition but, given the disputed domain name encompasses the whole of the Complainant's trademark even without reference to the gTLD and nothing else, it is not necessary to decide the issue on this basis.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
It is not in dispute between the parties that the Complainant has not authorised the Respondent to use the disputed domain name or the Complainant's trademark. Nor is it in dispute that the Respondent is not affiliated with the Complainant. It is also not disputed that the disputed domain name is not derived from the Respondent's name.
The Complainant points out that its trademarks were registered long before the disputed domain name was registered. Further, it has been using its trademark for much longer than they have been registered. Relying on its longevity of use and registration and the scale of its operations, the Complainant contends its trademark is very well-known throughout the world, indeed famous. In this connection, it notes that a number of UDRP panels have previously recognized its trademark is famous. It contends, therefore, that no actual or contemplated bona fide use could reasonably be claimed for the disputed domain name.
The Panel is not of course bound by the decision of a prior panel. In the interests of consistency and predictability, however, the Panel accepts that these prior determinations should generally be accepted unless something in the record leads to a different conclusion.
A differentiating factor is arguably that the previous cases did not concern the Complainant's rights or reputation in Canada where, on its own Complaint, it does not have any business operations. In addition, many of the prior UDRP decisions were not contested by the respondents. The Panel notes, however, that the UDRP panels from a number of different countries and backgrounds have found that the Complainant's trademark is famous. Given the scale of the Complainant's operations, their longevity and the acceptance that it is famous by a number of prior UDRP panels, the Panel accepts that the Complainant's trademark is very well-known and it is likely that reputation extends to circles in Canada as well.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent contends that Carrefour is a generic or descriptive word which his business TechDelegate is using as a virtual crossroads for companies and businesses in Canada to register and become operational on the Internet.
"Carrefour" is "crossroads" in French. Annex 1 to the Response includes print outs of the home pages of a number of organisations in Belgium, Canada and other parts of the world which use Carrefour as a primary part of their name. They include <carrefour.be>, <carrefour.ca> and the website of Carrefour International, which appears to be a volunteer organization in Quebec, Canada and <carrefournunavut.ca> which appears to be a recruitment agency or center in Canada. A noticeable feature of each of these is that they appear to be in quite different fields of activity compared to the Complainant.
The Response includes in Annex 2 print outs of three websites which the Respondent says his TechDelegate business set up.
The Complainant's lack of registered trademarks or business in Canada makes its claim that there is no possible legitimate use of Carrefour by the Respondent very difficult to sustain. As noted above, the Panel accepts that the Complainant's trademark is famous and it appears likely its fame extends to circles in Canada. However, there are also other businesses or organisations operating in Canada, unrelated to the Complainant, who are named Carrefour, or whose names include Carrefour as a prominent element.
The Respondent, however, does not claim any rights or connection with these other businesses or organizations. Rather, he asserts his intention to use it to extend his TechDelegate business into the French speaking audience in Canada. For that use to qualify as a right or legitimate interest under the Policy, it must be in connection with a bona fide offering of goods or services or demonstrable preparations to use it that way.
Here, however, the disputed domain name originally resolved to a website from which domain names were offered for sale. After the Complaint was received, that usage ceased and the disputed domain name now resolves to an "under construction" page. The Respondent has not explained why that change occurred.
The Respondent does state that the disputed domain name was not offered for sale on the former website. From the screenshot included in the record, that website just offered for sale "premium" domain names. It does not appear to offer other IT services which the Respondent claims he provides. The Respondent is correct in stating that the disputed domain name is not one of the names specifically listed in the screenshot. However, the "banner" at the top of the screenshot states "All listed domain names & redirected domain names to this website are currently for sale". So far as the record shows, the disputed domain name redirected to this web page. Thus, it appears to have been, or would be likely to be seen by Internet users as being, offered for sale. That is not consistent with his claim that he was, or intends, to use the disputed domain name in connection with his own business.
In addition to not explaining the change in the nature of his use, the Respondent has not explained why the website is only "under construction" given it was registered in March 2014 and he is apparently in the business of setting up websites.
The Panel notes that some of the domain names listed as available for sale appear to be generic: for example, <shopcenter.ca>. Others appear to have trademark significance. For example, one of the domain names is <trulia.estate> – the domain name <trulia.com> resolves to what appears to be a very substantial real estate agency business or listings service in the United States and, so far as the Panel is aware, "trulia" is not descriptive of real estate services. Another of the listed domain names is <dlf.estate> – DLF Limited is one of the largest real estate businesses in India. While three letter acronyms can have many different significances, ".estate" is a TLD that may be used by businesses operating in the real estate field.
In these circumstances, the Panel is not prepared to find that the Respondent is, or is intending, to use the disputed domain name in connection with a bona fide offering of goods or services. Accordingly, the Respondent has not rebutted the prima facie case established by the Complainant and the Panel finds that he does not have rights or legitimate interests in the disputed domain name under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent does not deny that he was aware of the Complainant's trademark when he registered the disputed domain name. Instead, he asserted an entitlement to use the disputed domain name for an unrelated business purpose based on its generic or descriptive nature.
Based on the record in this case, however, the Panel has been unable to accept that explanation for the reasons explained in section 5.B. above. It appears from the record in this case, therefore, that the Respondent most likely registered the disputed domain name with knowledge of its significance as the Complainant's trademark with the intention of offering it for sale. As also noted in section 5.B. above, the Respondent appears to have sought to register and sell a number of other domain names for their trademark significance.
In these circumstances, the Panel finds that the disputed domain name has been registered in bad faith. The offering of it for sale in circumstances where the Panel has not accepted the Respondent's claim to rights or legitimate interests also constitutes use of it in bad faith. Accordingly, the Complainant has made out the third requirement under 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 <carrefour.company> be transferred to the Complainant.
Warwick A. Rothnie
Date: September 15, 2014
1 It is not clear however whether the Response was sent timely by the Respondent at his location.