WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Suayp Ozbey
Case No. D2017-1653
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Suayp Ozbey of Diyarbakir, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <carrefoursa.shop> is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 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. In response to a notification by the Center that the Complaint was administratively deficient on August 31, 2017, the Complainant filed an amendment to the Complaint on September 1, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated August 28, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on August 31, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On September 1, 2017, the Complainant confirmed that it had nothing to add to its request for English to be the language of the proceeding already included in the Complaint. The Respondent sent an email to the Center on September 4, 2017, requesting Turkish as language of the proceeding.
The Center verified that the Complaint together with the amended 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 September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. The Response was filed with the Center on September 6, 2017. On the same date, following the Center's request, the Respondent confirmed to have filed its complete Response.
The Center appointed Kaya Köklü as the sole panelist in this matter on September 11, 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.
4. Factual Background
The Complainant is a famous and leading food retailer with nearly 12,000 stores in more than 30 countries. Together with its Turkish partner Carrefour SA, it also runs many stores in Turkey since 1993.
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 trademark covering protection in Turkey was registered in 2009 and, hence, many years before the registration of the disputed domain name.
The Complainant has further registered and operates the trademark CARREFOUR as domain names under several generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD"), e.g., <carrefour.com>, <carrefour.fr> and <carrefoursa.com>.
According to the current record, the disputed domain name <carrefoursa.shop> was registered on May 12, 2017.
The Respondent seems to be an individual from Diyarbakir, Turkey.
As evidenced by the Complainant, the Respondent has asked for "a reasonable fee" in return for the transfer of the disputed domain name before initiating the present administrative proceedings.
At the time of the decision, the disputed domain name was parked only. As evidenced in the Complaint, the disputed domain name seems never to be actively used so far. The Complainant however provided screenshots demonstrating that for a certain period of time, an email address of the Respondent was shown on a website linked to the disputed domain name.
5. Parties' Contentions
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's well-known CARREFOUR trademark.
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.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its CARREFOUR trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademarks in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent submitted informal email communications in Turkish.
In its Response, the Respondent mainly argues that he checked the Turkish trademark register before creating and registering the disputed domain name. In this regard, the Respondent alleges that he was not able to identify any relevant trademark registration of the Complainant in Turkey.
Additionally, the Respondent argues that the Complainant had had the chance to register the disputed domain name itself.
6. Discussion and Findings
6.1. Language of the Proceedings
Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant. The Respondent made use of the granted opportunity by the Center to respond in Turkish language and submitted informal communications in Turkish. Furthermore, the Respondent confirmed in its communication to the Center that it has reviewed the Complaint, which was filed in the English language. The Panel concludes that the Respondent must be well able to read and understand the English language.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.
Hence, the Panel determines in accordance with the Complainant's request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
6.2. Substantive Issues
According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint 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 trademarks 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 replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and, where appropriate, will decide consistent with the WIPO Overview 3.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the CARREFOUR trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in CARREFOUR. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks with regard to the CARREFOUR mark in many jurisdictions worldwide, including in Turkey.
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. Quite the opposite, the Panel rather finds that this additional incorporation directly relates to the Complainant's Turkish partner and/or to its legal form, which is commonly abbreviated with "SA" for "société anonyme". Additionally, the Panel is of the opinion that the gTLD ".shop" also directly refers to the Complainant's core retail business.
All this supports the Panel's finding that the disputed domain name is confusingly similar to 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
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. 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 Panel's view, the Respondent's argumentation contains only general statements and has no impact on the legal assessment of the present case. Particularly the alleged failure of the Complainant to register the disputed domain name itself is in the Panel's opinion irrelevant from a legal point of view. Trademark owners have no general obligation to register any or all domain names containing their trademarks.
As the disputed domain name is apparently parked only without being actively used so far, the Panel concludes that the Respondent is neither commonly known by the disputed domain name, nor is the Respondent using the disputed domain name in a bona fide manner.
Based on the findings above, the Panel believes that in the present case the Complainant has made a prima facie case and the evidence available in the case file does not provide a basis for the Panel to find any rights or legitimate interests of the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
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 and/or to disrupt the Complainant's business, particularly for the following reasons.
First, the Panel believes that the Respondent must have been well aware of the Complainant's trademarks when it registered the disputed domain name. At the date of registration of the disputed domain name, the Complainant's CARREFOUR trademark was already well-known worldwide, including in Turkey, for many years. The Respondent's allegation that it was not able to find a respective trademark registration of the Complainant is in view of the Panel not convincing and assessed as a self-serving allegation only.
Second, the Respondent apparently tried to sell the disputed domain name to the Complainant for "a reasonable fee" in return for the transfer of the disputed domain name. In view of the Panel, the used wording "reasonable fee" clearly indicates that the Respondent expected a fee which goes beyond of the out-of-pocket costs for registering and maintaining the disputed domain name.
Third, the Respondent was not able to provide any convincing argument for what legitimate purpose it registered the disputed domain name, although he had the chance to do so in his Response.
The fact that the disputed domain name does currently not resolve to an active website does not change the Panel's findings in this respect.
All in all, the Panel cannot conceive of any good faith use of the disputed domain name which is not related to the trademark owned by the Complainant.
Hence, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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.shop> be transferred to the Complainant.
Date: September 22, 2017