WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Ebrar Acur
Case No. D2017-1582
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & Associés, France.
The Respondent is Ebrar Acur of Brey, Germany.
2. The Domain Name and Registrar
The disputed domain name <carrefoursa-web.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2017. On August 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 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 August 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 21, 2017.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on September 29, 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.
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is English and also the Complaint was submitted in English.
Therefore, in consideration of the above circumstances and in accordance with paragraph 11 of the Rules, the Panel hereby decides that English shall be the language of the administrative proceeding in the present case.
4. Factual Background
The Complainant is a leading food retailer with nearly 12,000 stores in more than 30 countries. Together with its local partner, it has been operating several stores in Turkey since 1993 under the name of Carrefour SA.
The Complainant has registered the word and figurative trademark CARREFOUR mainly in classes 9, 35 and 38 in numerous jurisdictions, including Turkey. According to the case record, the first international trademark covering protection in Turkey was registered in 2009, hence, many years before the registration of the disputed domain name. The Complainant is the owner of a European Union trade mark CARREFOUR, No. 005178371 registered on August 30, 2007; an international trademark CARREFOUR, No. 1010661 registered on April 16, 2009; and a Turkish trademark CARREFOUR, No. 107597 registered on January 11, 1989.
The Complainant has further registered and operates domain names including the trademark CARREFOUR under several generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD"), e.g., <carrefour.com>, <carrefour.fr>, <carrefoursa.com>, and <carrefoursa.com.tr>.
On May 11, 2017, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights, where it requested the Respondent to cease the use of the disputed domain name <carrefoursa-web.com> and to transfer it to the Complainant free of charge. However, the Respondent did not reply despite several reminders.
According to the current record, the disputed domain name <carrefoursa-web.com> was registered on March 27, 2017.
The Respondent seems to be a Turkish citizen or individual of Turkish origin located in Germany. According to the publicly available online records, the Respondent obtained similar domain names such as <bimex-market.com> and <teknomedyamarket.com> which also resolve to a page in Turkish entitled "LG" offering LG Smart Televisions for sale.
At the time of the decision, i.e., on October 11, 2017, the Panel visited the disputed domain name and observed that it resolved to a page in Turkish entitled "LG" offering LG Smart Televisions for sale. The page also contains an online form which requires the entry of personal data like bank account details to confirm the order. The Complainant also provided screenshots which display the website's content.
The Complainant believes the disputed domain name is confusingly similar to the Complainant's well-known CARREFOUR trademark. The Complainant argues that the disputed domain name reproduces the Complainant's CARREFOUR trademark in its entirety, which previous UDRP panels have considered to be well known. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark.
The Complainant argues that the only difference between the disputed domain name and the Complainant's trademark is that the disputed domain name additionally comprises the letters "sa". In view of the Complainant, the letters "sa" can be assessed as a direct reference to the Turkish partner of the Complainant, namely Carrefour SA, as well as to the legal form of the Complainant, namely "société anonyme". In any case, the Complainant is of the opinion that the addition of the letters "sa" does not negate the confusing similarity with its CARREFOUR trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection with or affiliation to the Complainant and has not received any license or authorization to use the CARREFOUR trademark in a domain name or in any other manner. The Respondent has no trademark registrations for CARREFOUR and is not known by the name Carrefour. The Complainant's CARREFOUR trademark predates the registration of the disputed domain name. Additionally, the Complainant argues that the Respondent's failure to respond to the Complainant's cease-and-desist letter further indicates that it can be assumed that there are no rights or legitimate interests in the disputed domain name.
The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that the trademark CARREFOUR is a well-known and reputed mark throughout the world and Turkey. The Complainant asserts that the Respondent's behaviour shows that the Respondent is attempting to take undue advantage from the registration of a domain name which is confusingly similar in all aspects with the Complainant. Such a use of the domain name might be hazardous for consumers as
well as for the Complainant's business and reputation.
The Respondent did not reply to the Complainant's contentions.
5. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
In the event of a lack of a response, the Panel may – as appropriate – accept the reasonable factual allegations provided in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the CARREFOUR trademark of the Complainant. Through many trademark registrations and extensive use, Complainant has obtained rights in the CARREFOUR mark. As such, the Complainant has clearly established that it has rights in the CARREFOUR trademark. See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") ("Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for the purpose of standing to file a UDRP case.")
Although not identical, the disputed domain name fully incorporates the Complainant's CARREFOUR trademark. The disputed domain name differs from the Complainant's trademarks only by the addition of the letters "sa". The Panel shares the Complainant's view that the addition of these letters does not negate the confusing similarity between the Complainant's trademark CARREFOUR and the disputed domain name. The Panel rather notes that this additional incorporation may relate to the Complainant's Turkish partner and/or to its legal form, which is commonly abbreviated with "SA" for "société anonyme".
The Panel is of the opinion that the addition of the word "web" does not negate the confusing similarity between the Complainant's trademarks and the disputed domain name. The Panel further finds that the addition of gTLDs such as ".com" may generally be disregarded when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that 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 Panel recognizes the Complainant's trademark rights and concludes that the disputed domain name is identical or confusingly similar with the Complainant's CARREFOUR trademark.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel also finds that the Respondent has not demonstrated a right or legitimate interest in the disputed domain name.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests, is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is required to make out a prima facie case to shift the burden of production to the Respondent to come forward demonstrating its rights or legitimate interests. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's CARREFOUR trademark in the disputed domain name.
In the present case, the Complainant states that the Respondent has no relationship with or permission from the Complainant for using its trademarks, as well as that the Complainant's rights in its trademarks precede the Respondent's registration of the disputed domain name. The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Previous UDRP panels have found that unauthorised use (that is, use without licence or permission from the Complainant), can indicate an absence of actual or contemplated bona fide or legitimate use. The Panel does not consider the Respondent's use of the disputed domain name to drive consumers to its website where the Respondent offers LG televisions for sale to be a legitimate use of the disputed domain name.
Finally, the Respondent did not respond to the Complainant's cease and desist letter requesting that the Respondent cancel the disputed domain name registration. The Panel concludes that the Respondent has no evidence to rebut the Complainant's assertions. Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
The Panel finds that it can be safely concluded that the Respondent was fully aware of the Complainant's extensive goodwill and reputation in its CARREFOUR trademarks, especially by taking into account that the Complainant is a well-known company in Turkey and that the Respondent is a Turkish citizen or individual of Turkish origin. The likelihood that the Respondent came up with the same name for the disputed domain name without being aware of the Complainant's earlier rights over the CARREFOUR trademark when creating the disputed domain name, is extremely low, almost impossible, particularly given the Respondent's disputed domain name use as evidenced by the Complainant.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the 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.
In accordance with the earlier UDRP Panel decisions referred to in the first paragraph of the Complainant's contentions above, the Panel finds that the Complainant's CARREFOUR trademark is well-known. See Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; 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; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067.
The Panel confirms the reputation and recognition of the Complainant's trademark CARREFOUR and is convinced that the Respondent must have known of the Complainant and its trademark when it registered the disputed domain name.
Prior UDRP panels have held that registering and using domain names which correspond to well-known trademarks may in appropriate circumstances suggest bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant's CARREFOUR trademark, apparently for illegitimate commercial gain particularly for the following reason: the disputed domain name currently resolves to a page in Turkish entitled "LG" offering LG Smart Televisions for sale. The page also contains an online form which requires the entry of personal data like bank account details in order to confirm the order. The Panel considers that the Respondent is engaged in a phishing or other illegitimate scheme and clearly aims at stealing valuable information such as personal banking information from the Complainant's customers through the use of an online form present on the website to which the disputed domain name resolves. Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a "phishing" website is perhaps the clearest evidence of registration and use of a domain name in bad faith. The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093.
The Panel also believes that the Respondent's lack of a response and that the Respondent provided inaccurate contact details while registering the domain name additionally supports the impression that it has registered the disputed domain name in bad faith without any legitimate interest to use them, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under 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 <carrefoursa-web.com> be transferred to the Complainant.
Date: October 12, 2017