WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. VistaPrint Technologies Ltd.
Case No. D2015-0769
1. The Parties
Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <mafcarrafour.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2015. On April 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on May 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 29, 2015.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 9, 2015. 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
Complainant, Carrefour, is a French company with its principal place of business in Boulogne-Billancourt, France. Complainant has been in business for over 50 years and is a world leader in the retail sector. MAF CARREFOUR, Complainant’s main partner, holds exclusive rights to the Carrefour franchise in 19 markets across the Middle East, North Africa, and Central Asia.
Respondent, VistaPrint Technologies Ltd., registered the Domain Name on August 10, 2014.
The Domain Name links to a default webpage displaying a message about Respondent’s free website hosting services.
5. Parties’ Contentions
Complainant contends that the Domain Name should be cancelled because each of the three elements required in paragraph 4(a) of the Policy has been established.
Complainant, a French multinational retailer headquartered in Boulogne Billancourt, claims to be the second-largest retailer in the world and the largest in Europe. Carrefour operates under four store formats: hypermarkets, supermarkets, convenience stores and cash and carry shops for professionals. Complainant has more than 10,800 stores in 34 countries that generated revenues of EUR 100.5 billion in 2014.
Founded in 1992, MAF CARREFOUR also known as Majid Al Futtaim holds exclusive rights to the Carrefour franchise in 19 markets across MENA and Central Asia. It operates a portfolio of over 50 hypermarkets and over 55 supermarkets in 12 countries. It has become the leading shopping mall, retail and leisure pioneer across the Middle East and North Africa.
Complainant alleges by virtue of its long use and the fame of its CARREFOUR trademark that the CARREFOUR trademark is exclusively associated with Complainant. Complainant further asserts that prior UDRP decisions have found that the Carrefour trademark is famous. See e.g., Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; 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; and Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067.
Complainant argues that the Domain Name is confusing similar to Complainant’s well-known trademark and company name CARREFOUR as it imitates CARREFOUR by replacing the letter “e” with the letter “a”. Complainant asserts that this substitution does not significantly affect the appearance or pronunciation of the Domain Name, rendering it virtually identical in pronunciation to Complainant’s trademark CARREFOUR. Complainant contends that this substitution amounts to “typosquatting” as recognized in Mapfre S.A. y Fundación Mapfre v. Josep Sitijar, WIPO Case No. D2011-0692; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050. Furthermore, Complainant asserts that the inclusion of “maf” within the Domain Name increases the likelihood of confusion because it is the acronym used for Complainant’s main partner MAF CARREFOUR (Carrefour Majid Al Futtaim) in the Middle East.
Complainant also states that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademark and the Domain Name. See e.g., Accor v. Noldc Inc., WIPO Case No. D2005-0016. Complainant argues that the mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity. See e.g., L’Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.
Complainant contends that the Domain Name is so similar to Complainant’s famous trademark CARREFOUR that Respondent cannot reasonably assert it was intending to develop a legitimate activity through the Domain Name. Complainant stresses that a quick trademark search on CARREFOUR would have revealed to Respondent the existence of Complainant and its trademark. According to Complainant, Respondent’s failure to do so is a contributory factor to its bad faith.
Complainant asserts that the Domain Name resolves to the default page of Respondent (advertising Respondent’s website services) and that Respondent did not demonstrate preparations to use the Domain Name in connection with a bona fide offering of goods and services. As such, Complainant concludes that Respondent has no rights or legitimate interests in the Domain Name. Complainant urges that such use does not preclude a finding of bad faith, and that in view of the circumstances, establishes that Respondent registered and is using the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the UDRP requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Ltd. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direct International, WIPO Case No. D2007-0605; see also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in CARREFOUR, which predate the registration of the Domain Name.
Complainant has established that CARREFOUR is a well-known and strong mark. Complainant owns International Trademark Registration for CARREFOUR, Registration No. 1010661 dated of April 16, 2009, covering services in class 35 and a Community Trademark Registration for CARREFOUR, Registration No. 005178371 dated of June 20, 2006 covering goods and services in classes 9, 35, 38. Additionally, Complainant has owned <carrefour.com> since 1995. The Panel accepts that the CARREFOUR mark is widely known and famous. Such a finding has been confirmed by previous UDRP decisions. See e.g., Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; 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; and Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067.
The Domain Name is virtually identical to the trademark CARREFOUR replacing only the letter “e” with the letter “a”. This practice is commonly referred to as typosquatting and is confusingly similar to Complainant’s trademark. Prior UDRP panels have found such similarity to be present in the case of a deliberate misspelling of a mark by adding, deleting, substituting, or reversing the order of letters in a mark. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Yong Li, WIPO Case No. D2004-0296; Alstom v. Telecom Tech Corp v. Prviate Registration, WIPO Case No. D2011-1658; Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. v. Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.
In addition, the Panel finds that the Domain Name associates Complainant’s trademark with the term “maf”, further contributing to the confusing similarity between the Complainant’s trademark and the Domain Name. The term “maf” contributes to a finding of a likelihood of confusion because it is a pre-existing acronym already associated with CARREFOUR referencing Complainant’s main partner in the Middle East, MAF CARREFOUR. As a result, Internet users may wrongly believe that the Domain Name is related to a website developed by Complainant for its consumers in the Middle East.
Also, the addition of the gTLD “.com” to the Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD “.com” is generally without significance for purpose of the Policy since use of a gTLD is technically required to operate the Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the CARREFOUR trademark in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc./Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1145; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant asserts that Respondent is not commonly known by the name “Carrefour”, or is in any way affiliated with Complainant. Likewise, Respondent is not authorized or licensed to use the trademark CARREFOUR, or to seek registration of any domain name incorporating the said mark. Additionally, Complainant explains that Respondent has not demonstrated use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Respondent has failed to show any intention of noncommercial or fair use of the Domain Name.
Although properly notified by the Center, Respondent failed to submit any response in the present procedure. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Finally, the Domain Name resolves to Respondent’s default webpage, advertising Respondent’s website services. Such use in connection with a domain name which is confusingly similar to Complainant’s trademark cannot provide Respondent with any rights or legitimate interests in the Domain Name for purpose of the Policy.
Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where Respondent, by using the Domain Name (in connection with its default website featuring Respondent’s website services), 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 Complainant’s 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. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107.
Complainant contends that the registration by Respondent of the Domain Name, which constitutes a typosquatting variant of Complainant’s trademark in combination with term “maf” referring Complainant’s partner MAF CARREFOUR in the Middle East, establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303.
Bad faith can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s well-known CARREFOUR trademark when it registered the Domain Name. It is alleged by Complainant that there is no explanation for Respondent to have chosen to use “maf” and “carrafour” in its Domain Name other than to trade off the good will and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no Response from Respondent, this claim is undisputed.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name <mafcarrafour.com> be cancelled.
John C McElwaine
Date: June 19, 2015