WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Todd Marsala, NA
Case No. D2017-1321
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Todd Marsala, NA of Goodhue County, Minnesota, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <mabanque-carrefour.com> (the “Domain Name”) is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2017. That day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 15, 2017, 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 Registrar also indicated that English is the language of the registration agreement as used by the registrant for the Domain Name.
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”).
The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4, the Center discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on July 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2017.
The Center appointed Alan L. Limbury as the sole panelist in this matter on August 14, 2017. 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.
In accordance with the Rules, paragraph 11, the language of the proceeding is English, being the language of the registration agreement applicable to the Domain Name.
4. Factual Background
The Complainant is one of the world’s leading retailers, operating nearly 12,000 stores and ecommerce sites in more than 30 countries. Through its subsidiary, Carrefour Banque, it also engages in banking operations.
The Complainant owns, inter alia, International registered trademark CARREFOUR, No. 353849, registered on February 28, 1969 and French registered trademarks BANQUE CARREFOUR, No. 3585968, registered on July 2, 2008 and LA BANQUE CARREFOUR, No. 3765316, registered on September 9, 2010. It is also the registrant of the domain names <carrefour.com>, registered on October 25, 1995 and <carrefour-banque.fr>, registered on October 7, 2009.
The Domain Name, <mabanque-carrefour.com>, was registered on April 25, 2017. As at April 27, 2017 it resolved to a webpage in French which imitated the Complainant’s website; reproduced the name and address of Carrefour Banque; and requested login identification with a username.
On May 3, 2017, the Complainant sent a cease-and-desist letter to the Respondent seeking transfer of the Domain Name free of charge. The Respondent did not reply. As at June 22, 2017 the Domain Name did not resolve to an active website.
5. Parties’ Contentions
The Complainant says the Domain Name is identical or confusingly similar to the trademarks CARREFOUR, LA BANQUE CARREFOUR and BANQUE CARREFOUR, in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use and register its trademarks or to seek registration of any domain name incorporating said marks, which were registered years before the registration of the Domain Name. The Domain Name resolved first to a page imitating the Complainant’s website and requesting a username, which indicates that the Respondent was probably using the Domain Name in phishing operations. After receiving the Complainant’s cease-and-desist letter, the Domain Name resolved to an inactive page, which indicates that the Respondent has not made any reasonable and demonstrable preparations to use the Domain Name. Consequently, the Respondent fails to show any intention of making noncommercial or fair use of the Domain Name.
As to bad faith, the CARREFOUR trademark is well-known throughout the world, although not registered in the United States. The Domain Name reproduces the trademarks CARREFOUR, LA BANQUE CARREFOUR and BANQUE CARREFOUR, together with French generic terms which are linked to the Complainant’s field of activities and aimed at the French market. In light of the reputation of these trademarks, the Respondent’s reproduction of the trademark CARREFOUR in its entirety in the Domain Name clearly proves that the Respondent was aware of the existence of the Complainant’s trademarks.
The Domain Name resolved initially to a webpage imitating the Complainant’s official website and requesting identification by Username. That webpage contained the name and address of the Complainant’s subsidiary Carrefour Banque. It can therefore be assumed that the Respondent had perfect knowledge of the trademark at the time of registration and registered the Domain Name in bad faith. The Respondent is engaged in a fraudulent scheme aimed at stealing valuable information from the Complainant’s customers through the use of an online form present on a website which has been meticulously installed to appear as a service offered by the Complainant. Although the Domain Name is currently inactive, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a 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”.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the registered trademarks CARREFOUR, LA BANQUE CARREFOUR and BANQUE CARREFOUR.
The Domain Name, <mabanque-carrefour.com>, contains the CARREFOUR and BANQUE CARREFOUR trademarks in their entirety, adding the French word “ma” to the latter and a hyphen.
In finding confusing similarity, many Panels have found that the mere addition of descriptive terms to a complainant’s mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211; The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314, WIPO Case No. D2016-1671; and see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Since the Complainant’s subsidiary Banque Carrefour engages in banking, the words “ma banque” do nothing to detract from the distinctiveness of the CARREFOUR mark and the word “ma” does nothing to detract from the distinctiveness of the BANQUE CARREFOUR and LA BANQUE CARREFOUR marks. The hyphen is inconsequential. The specific Top-Level Domain of the Domain Name, “.com”, is generally regarded as irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar. See 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.
Accordingly the Panel finds the Domain Name to be confusingly similar to the Complainant’s CARREFOUR, LA BANQUE CARREFOUR and BANQUE CARREFOUR marks.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Panel finds that the Complainant’s CARREFOUR trademark is distinctive, 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 Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the 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.
Despite the fact that the Complainant has not registered its marks in the United States, where the Respondent appears to reside, the Complainant has shown that its reputation is widespread. Given the use of French words in the Domain Name itself and the content of the website to which it resolved within a few days of registration, the Panel is satisfied that the Respondent must have had the Complainants’ CARREFOUR, BANQUE CARREFOUR and LA BANQUE CARREFOUR trademarks in mind when registering the Domain Name, <mabanque-carrefour.com>, and that the Respondent has used the Domain Name to attract Internet users already familiar with the Complainants’ services to a website purporting to be that of the Complainant’s subsidiary, Banque Carrefour, where personal information was sought from such users. The inference is irresistible that this was fraudulent and was done for commercial gain.
Hence the Panel is satisfied that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered on its website. The fact that the Domain Name ceased to resolve to a website following the Complainant’s cease-and-desist letter does not alter this conclusion.
Accordingly the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith.
The Complainant has established this element.
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 <mabanque-carrefour.com> be transferred to the Complainant.
Alan L. Limbury
Date: August 17, 2017