WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Chou Andi, MOBILE-18922449999

Case No. D2015-1074

1. The Parties

The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.

The Respondent is Chou Andi, MOBILE-18922449999 of Guangzhou, China.

2. The Domain Name and Registrar

The disputed domain name <vipcarrefour.com> is registered with Xin Net Technology Corp. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2015. On June 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2015, 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.

On June 29, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in both Chinese and English, and the proceeding commenced on July 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 27, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on July 30, 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.

Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <vipcarrefour.com> consists of Latin-script letters, rather than Chinese characters;

b) The disputed domain name includes the Complainant's mark, as well as the English acronym - VIP;

c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

4. Factual Background

The Complainant is a world leader in the retail sector. The Complainant operates more than 10,800 stores in 34 countries. More than 10 million customers visit the Complainant's stores around the world every day.

The Complainant is the owner of numerous trademark registrations for the CARREFOUR mark around the world. For example: China Registration No. 795806 – CARREFOUR of November 28, 1995; China Registration No. 8696287 – CARREFOUR of November 7, 2011; and many more.

Through extensive use around the world, the CARREFOUR trademark has generated vast good will and has become well known and recognized with the Complainant's stores and services.

The Complainant has also developed a presence on the Internet and is the owner of domain names which contain the trademark CARREFOUR. For example: <carrefour.com> and <carrefour.com.cn>.

The disputed domain name <vipcarrefour.com> was registered on February 25, 2015. The disputed domain name resolves to an inactive website.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name consists of two elements – "carrefour" and "vip". The Complainant further contends that the generic term "vip", which is descriptive, is not sufficient to prevent confusing similarity with the Complainant's trademark.

The Complainant further argues that the use of the Complainant's CARREFOUR trademark strongly suggests there is an official or authorized link with the Complainant.

The Complainant further argues that it is undeniable that the Respondent was aware of the Complainant's trademark prior to that acquisition of the disputed domain name.

The Complainant further argues that the Respondent is not known by the disputed domain name, nor does the Respondent claim to have made legitimate, noncommercial use of the disputed domain name. The Complainant further argues that it has never granted permission to the Respondent to register the disputed domain name.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the website under the disputed domain name is inactive and that the disputed domain name is passively held by the Respondent.

The Complainant further argues that it has sent the Respondent a cease and desist letter which the Responded never answered.

Finally, the Complainant argues that the Respondent failed to provide correct contact details and provided a false postal address in the WhoIs record.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant has also developed a presence on the Internet and is the owner of domain names which contain the trademark CARREFOUR. For example: <carrefour.com> and <carrefour.com.cn>.

The Panel finds the disputed domain name integrates the Complainant's CARREFOUR trademark in its entirety, as a dominant element.

The additional word "vip" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark, as it is a common term in the Complainant's field of business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702).

Also see: "the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e. (shows), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity". (See Yahoo! Inc. v. Jesper Hansen, WIPO Case No. D2011-2227).

The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a gTLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CARREFOUR trademark, or a variation thereof.

The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the CARREFOUR trademark in China since at least the year 1995. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark's vast goodwill. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Further the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

Further, the Complainant sent cease and desist letter to the Respondent and received no response. This constitutes additional evidence of the Respondent's bad faith. See Alstom v. Yulei, WIPO Case No. D2007-0424.

Lastly, the Respondent provided a false postal address which also constitutes additional evidence of bad faith. See Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademark (which was included in the disputed domain name in its entirety), and the failure of the Respondent to respond to the cease and desist letter the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <vipcarrefour.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: August 13, 2015