WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Gandiyork, SL - B98466980
Case No. D2014-1759
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Gandiyork, SL - B98466980 of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name <carrefour.land> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 6, 2014. The Response was filed with the Center on November 5, 2014. The Center received a supplemental submission from the Complainant and a reply thereto from the Respondent on November 7, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 12, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is one of the largest retailers in the world, currently employing nearly 365,000 people, operating over 10,000 stores in 34 countries, and generating revenues of EUR 100.2 billion in 2013. In Spain, the Complainant launched its brand in 1982. Today, almost 1,000 businesses, mostly supermarkets in different sizes but also travel agents belong to the Complainant in Spain.
The Complainant is the registered owner of numerous trademarks for CARREFOUR, inter alia, Community trademark registration no. 008779498 CARREFOUR, applied for on December 23, 2009 and registered on July 13, 2010 in connection with various services in class 35, and Community trademark registration no. 005178371 CARREFOUR, applied for on June 20, 2006 and registered on August 30, 2007 in connection with goods and services in classes 9, 35 and 38 (the "CARREFOUR Marks"). Furthermore, the Complainant owns numerous domain name registrations reflecting its trademarks, inter alia, <carrefour.com> and <carrefour.es>. The CARREFOUR Marks have already been considered to be "well-known" or "famous" by previous panels in proceedings under the UDRP (Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour v. PrivacyProtect.org I Ruben, WIPO Case No. D2013-2001; Carrefour v. yxp, WIPO Case No. DLA2013-0002; Carrefour v. Virtual Services Corporation, WIPO Case No. D2014-1179; Carrefour v. whoisprotection. biz I Sedat Gedik, WIPO Case No. D2014-1107).
The disputed domain name was registered on February 26, 2014 and presently resolves to a blank page. Previously, it was used to direct towards a website named "Stelapps", an online store for applications (apps). The Complainant sent a first cease-and desist letter to the Respondent on March 25, 2014, and received a reply on April 1, 2014. In its reply, the Respondent referred to the generic meaning of "Carrefour" and stated as follows:
"Our company is a startup company, building the new way how consumers will talk to each other and in front of retailers, seeking an overall gain in efficiency and satisfaction. And Carrefour is a key target for us, because of her being a leading retailer with + 10.000 stores, as you say in your letter."
The Respondent is the registered owner of more than 1,100 domain names, including <benetton.land>, <burberry.land>, <chesterfield.land>, <cimarron.land>, <gap.land>, <hyundai.land>, <honda.land>, <kellogg.land>, <kfc.land>, <lancaster.land>, <levis.land>, <mediamarkt.land>, <moet.land>, <red-bull.land>, <swarovski.land> and <whatsapp.land>. Moreover, it has been engaged in several URS procedures in which the registration of the respective domain name has been found to be illegitimate (Media-Saturn-Holding GmbH v. Gandiyork, SL - B98466980 et al., NAF Claim No. 1552029 <mediamarkt.land>; Lidl Stiftung & Co. KG v. Gandiyork, SL - B98466980 et al., NAF Claim No. 1547344 <lidl.land>; Deutsche Lufthansa AG v. Gandiyork, SL - B98466980 et al., NAF Claim No. 1549328 <lufthansa.land>).
5. Parties' Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is identical to the CARREFOUR Marks, which enjoy a worldwide reputation, as the generic Top_Level Domain ("gTLD") ".land" need not be considered for the purposes of determining identity or confusing similarity under the Policy.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not affiliated with the Complainant in any way, as it has not been authorized by the Complainant to use and register the CARREFOUR Marks, or to seek registration of any domain name incorporating said marks, as the Respondent has no prior rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the name "Carrefour" or the disputed domain name, as, based on the fact that the CARREFOUR Marks are widely known, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed, as the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent's prior use of the disputed domain name to forward Internet users to an online store for applications named "Stelapps" was no bona fide use, and as the Respondent seems to have engaged in a cybersquatting pattern of conduct and therefore it cannot be inferred that the Respondent is making any legitimate use of the disputed domain name or has any rights in it.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name as the Complainant is well-known throughout the world and owns trademark rights in the Respondent's home country, as the Respondent received a trademark claim notification before registering the disputed domain name because the CARREFOUR Marks are lodged with the Trademark Clearinghouse, as the Respondent engaged in a pattern of registering well-known trademarks as domain names, and as the Respondent revealed that it is well aware of the Complainant and its reputation and has admitted that Carrefour is its main target in its reply to the Complainant's cease and desist letter. With regard to bad faith use, the Complainant states that no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed in the absence of any license or permission from the Complainant to use such widely-known trademark, and that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. The Complainant finally argues that the Respondent's use of the disputed domain name is illegitimate and that it is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would not be illegitimate and that therefore, the actual passive holding of the disputed domain name does not preclude a finding of bad faith either.
The Respondent requests the Administrative Panel to deny the remedies requested by the Complainant.
First of all, the Respondent states that the Complainant is not "a valid Complainant", as it is not clear to which company of the Complainant's group of companies the disputed domain name should be transferred. The Respondent further states that the Complaint is an attempt to acquire a domain name that the Complainant could have bought during the Sunrise period.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:
(1) The CARREFOUR Marks only have limited scope of protection in classes 9, 35 and 38 and therefore, the Complainant has no exclusive rights. In this regard, the Respondent points to a number of third party websites (all connected to domain names registered under the country-code Top-Level Domain ("ccTLD") ".ch") which use "Carrefour" as well. Furthermore, the Respondent argues that "Carrefour" is a common French word meaning "crossroads" in English, and that the Respondent is entitled to use the disputed domain name outside the scope of the Complainant's trademarks as the disputed domain name refers to land located at a crossroad.
(2) The Respondent states that Mr. J. V. Gomar Llácer, the natural person registered in the WhoIs database with the disputed domain name, has 29 years activity in land development, both in agriculture and in real estate development, and is well-known by customers in his area for building in crossroads. In this regard, the Respondent provides evidence that Mr. J. V. Gomar Llácer has a degree as Superior Engineer in Agriculture and obtained a Master's degree in Real Estate Development companies.
(3) The Respondent argues that the Complainant did not provide evidence that the Respondent is a cybersquatter, even though the Respondent owns many domain names. The Respondents concedes to have known the Carrefour supermarkets and to have received a trademark claim notification before registering the disputed domain name, however, such notification only referred to activities related to goods and services in classes 9, 35 and 38. The Respondent therefore assumed that it was entitled to buy the disputed domain name and to use it for activities in relation to land. It states that it did not ask for money and that the Complainant has provided no evidence that the disputed domain name was registered to prevent the Complainant from registering it. With regard to the URS cases the Respondent lost, it argues that "this happened for different reasons, for instance in the case of Media-Saturn, that the Complainant said that they had invested millions on the brand and that they absolutely needed the domain for the international expansion, so that the panel decided based on that." Furthermore, it points to the URS proceeding re "bbva.land", which was decided in favor of the Respondent although BBVA is a world famous bank (Banco Bilbao Vizcaya Argentaria, S.A. Gandiyork SL et al., URS Claim No. 1548656).
6. Discussion and Findings
The first point to be dealt with is the admissibility of the Complainant's supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if a respondent raises objections that reasonably could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant's unsolicited additional submission (cf. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Response itself, besides the fact that the natural person registered in the WhoIs database with regard to the disputed domain name is active in land development, disclose any new facts or new legal authority unavailable at the time the Complaint was submitted. Instead, the Complainant appears to have made the supplemental filing solely to reply to the Response. In the present case, such a reply is not justified under the Rules (cf. AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485). Therefore, the Panel elects not to accept the Complainant's supplemental submission and has not relied on it in reaching this Decision.
As a consequence, the Panel did not consider the Respondent's supplemental submission, responding to the Complainant's supplemental submission, either.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's CARREFOUR Marks and is identical to such marks. It is well established that the specific gTLD is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). There is no reason to depart from this principle in the present case, as the gTLD ".land" is comprised of a generic term. In this regard, the Panel wishes to point out that it is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words. The Panel concludes that the combination of a trademark as second level of a domain name together with a generic term on the first level allow for the same reasoning and should not be handled differently.
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent refers to the generic meaning of the disputed domain name and states that the natural person registered in the WhoIs database with the disputed domain name has been active for 29 years in the business of land development. It is well established that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning and not, for example, to trade off third-party rights in such word or phrase (cf. Octopustravel Group Limited v. Alexander Rosenblatt aka Yana Belkova, WIPO Case No. D2011-0417, with further references). The Respondent, however, did not provide any evidence with regard to the use, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or in connection with its generic meaning. Rather, the Complainant provided evidence that the disputed domain name was connected to an online store offering applications.
Finally, on balance, the Panel is not convinced by the fact that the Respondent - who is located in Spain and registered numerous domain names under the gTLD ".land" which include (famous) third parties' trademarks - registered the disputed domain name because of its generic meaning in French.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration 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 disputed domain name; or
(ii) the respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 its website or location.
The Respondent knew the Carrefour supermarkets and received a trademark claim notification before registering the disputed domain name. The Respondent nonetheless proceeded with the registration of the disputed domain name and therefore, given the circumstances of this case, registered the disputed domain name in bad faith under the Policy.
Furthermore, the Panel finds that the Respondent registered the disputed domain name in a pattern of registering third parties' trademarks as domain names as set out in paragraph 4(b)(ii) of the Policy and used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy by forwarding it to an online shop offering applications.
As a result, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant also satisfied the requirements of paragraph 4(a)(iii) 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 <carrefour.land> be transferred to the Complainant.
Date: November 23, 2014