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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. USDIET, Tony Mancini

Case No. D2016-0571

1. The Parties

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

The Respondent is USDIET, Tony Mancini of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names <carrefournutrition.com>, <lapharmaciecarrefour.com>, <magasincarrefour.com> and <parapharmaciecarrefour.com> are registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2016. On March 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on March 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2016.

The Center appointed Torsten Bettinger as the sole panelist in this matter on April 27, 2016. 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 Carrefour of, Boulogne-Billancourt, France. The Complainant states that over the past 50 years it has grown to become the largest retailer in Europe and the second-largest retailer in the world. The Complainant currently operates more than 10,800 stores in 34 countries, offering a wide range of products and services to more than 10 million customers daily. The Complainant communicates directly to its customers via various websites including "www.carrefour.com".

The Complainant is the owner of many national, international and European trademark registrations for CARREFOUR, including International Trademark Registration No. 1010661 dated of April 16, 2009 covering services in class 35, and European Trademark Registration No. 008779498 dated of December 23, 2009, also covering services in class 35.

The Respondent registered the disputed domain names on July 24 and July 25, 2013, long after the Complainant began using its <carrefour.com> domain name (1995) and the registration of its CARREFOUR trademarks.

The Complainant states that the Respondent does not have, and never has had, permission to use the CARREFOUR trademarks or to register and use domain names incorporating said trademarks.

The Respondent is not currently making any active use of the disputed domain names. Although the Complainant states that the disputed domain names resolved to websites with various contents (<parapharmaciecarrefour.com> and <lapharmaciecarrefour.com> resolved to a website in French relating to an online drugstore, <carrefournutrition.com> directed to a website linked to parapharmacy and <magasincarrefour.com> resolved to a website with no content), the Panel visited the disputed domain names on May 1, 2016, and observed that disputed domain names all resolve to a generic "site under maintenance" page.

5. Parties' Contentions

A. Complainant

The Complainant states that each of the three elements of paragraph 4(a) of the Policy are satisfied.

With regard to the first element of the Policy, the Complainant states that the disputed domain names are identical to its registered CARREFOUR mark, distinguished only by generic terms.

Concerning the second element of the Policy, the Complainant states that the Respondent is not entitled to use the disputed domain names and has never been, and is not currently, commonly known by the disputed domain names. The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.

Finally, with regard to the third element of the Policy, the Complainant notes that the Respondent does not make any legitimate use of the disputed domain names, and that the disputed domain names were acquired long after the Complainant established its trademark rights. The Complainant states that the Respondent is aware of the Complainant's trademarks and has registered and used the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. The Policy simply requires the Complainant to demonstrate that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark CARREFOUR as evidenced in the annexes to the Complaint.

The disputed domain names incorporate the Complainant's trademark in their entirety. The incorporation of a trademark in its entirety into a domain name may often be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941.

The disputed domain names each include a dictionary term to the Complainant's trademark; "parapharmacie", "pharmacie", "nutrition" and "magasin" (shop or stores in English). These terms are all descriptive of some aspect of the Complainant's business. Adding a dictionary or descriptive term to the Complainant's mark does not reduce the confusing similarity between a trademark and a domain name. See Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; and Compagnie Générale des Etablissements Michelin v. isman to, WIPO Case No. D2012-0739.

The Panel also finds that the addition of generic Top-Level Domains ("gTLDs") such as ".com," in this case may be disregarded when determining whether the disputed domain names are confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.

The Panel thus finds that the disputed domain names each are confusingly similar to the Complainant's CARREFOUR mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. However, it is the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show that it has rights or legitimate interests in the domain name (indicating one of the three circumstances under paragraph 4(c) of the Policy or otherwise), then the complainant is generally deemed to have satisfied this limb of the Policy). See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant confirms that it has not licensed or authorized the Respondent to use its CARREFOUR mark in any fashion and that there is no connection between the Respondent and the Complainant..

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has demonstrated that the disputed domain names resolved to websites with various contents, in particular <parapharmaciecarrefour.com> and <lapharmaciecarrefour.com> resolved to a website in French relating to an online drugstore which displayed the Complainant's CARREFOUR mark as well as competing brands; <carrefournutrition.com> directed to a website linked to parapharmacy with hyperlinks to another website offering goods for sale and <magasincarrefour.com> resolved to a website with no content. Those uses (or lack thereof) do not constitute bona fide, legitimate noncommercial or fair use of the disputed domain names. The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not provided any evidence of its rights or legitimate interests in the disputed domain names, or otherwise replied to the Complainant's contentions.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has been active online at least as early as 1995 and has maintained registered rights in its CARREFOUR mark as early as 1968. The disputed domain name differs from the Complainant's trademark only in the addition of some dictionary terms, indicating that the Respondent was likely aware of the potential for Internet user confusion. Therefore, in the Panel's view, it is very likely that the Respondent was aware of the Complainant at the time he selected the disputed domain names for registration.

Moreover, the Respondent has previously been the respondent in domain name proceedings brought by the Complainant, and is therefore undoubtedly aware of the Complainant's trademarks. The Respondent's serial registrations of domain names containing the Complainant's mark is convinving further evidence of bad faith.

The Panel further agrees with the Complainant's substantiated argument that by using the disputed domain names as described above, the Respondent has been trying to capitalize or on otherwise take advantage of the Complainant's trademark rights.

As noted above, the disputed domain names currently resolve to a generic "site under maintenance" page, which is characterized as passive holding. The Panel notes that the apparent lack of so-called active use of the disputed domain names does not as such prevent a finding of bad faith, Telstra Corporation Limited v. Nuclerar Marshmallows, WIPO Case No. D2000-0003.

Accordingly, and in light of all the circumstances of this case, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy has also been met.

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 names <carrefournutrition.com>, <lapharmaciecarrefour.com>, <magasincarrefour.com> and <parapharmaciecarrefour.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: May 10, 2016

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