WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Aurelio Lima Cruz
Case No. D2017-2197
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America / Aurelio Lima Cruz of Joao Pessoa, Brazil.
2. The Domain Name and Registrar
The disputed domain name <promocaocarrefour.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2017. On November 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 30, 2017.
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 December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 26, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on January 11, 2018. 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 French corporation in the food retail business and operates nearly 12,000 stores and e-commerce sites in more than 30 countries. In 2016, it generated total sales of EUR 103.7 billion. More than 53% of its sales is generated outside France. The Complainant's Carrefour hypermarkets have operated in Brazil for several decades, the first having been opened in 1976.
The Complainant owns registrations for the trade mark CARREFOUR in many countries around the world. Amongst others, the Complainant owns a European Union Trade Mark Registration No. 005178371, registered on August 30, 2007, a Brazilian Trade Mark Registration No. 830532692, registered on December 26, 2012, and an International Registration No. 1010661, registered on April 16, 2009.
The Complainant also by itself or its affiliates owns the domain names <carrefour.com> (registered on October 25, 1995) and <carrefour.com.br> (registered on January 18, 1997).
The disputed domain name was registered on August 11, 2017. It does not resolve to any active webpage.
A cease-and-desist letter was sent to the Respondent on August 29, 2017. The Respondent did not comply with the Complainant's request for a transfer of the disputed domain name. On August 29, 2017, the Complainant also sent the Respondent a request for de-activation of the email server on the disputed domain name. The email server provider responded on August 30, 2017 that in the event the use of the disputed domain name was infringing the Complainant's trademark rights, legal action in accordance with the Policy should be initiated.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant CARREFOUR trade mark. It reproduces the Complainant's trade mark, which previous panels in earlier UDRP cases have considered to be well-known (see, e.g., Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; and Carrefour v. Yujinhua, WIPO Case No. D2013-2002).
Further, the disputed domain name links the Complainant's well-known CARREFOUR trade mark to the generic term "promocao" which is the Portuguese word for "promotion". The addition of this generic word does not prevent the confusion. In fact it corresponds to the Complainant's field of activity and the additional word therefore increases the likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name since it is not affiliated with the Complainant, and neither has it been authorized or licensed to use and register the CARREFOUR trade mark, or to seek the registration of any domain name incorporating the said trade mark. The Respondent is not known by the name "Carrefour" or the disputed domain name. The Respondent has no prior rights in the disputed domain name; the registration of the CARREFOUR trade mark by the Complainant long preceded the registration of the disputed domain name.
The disputed domain name is so confusingly similar to the Complainant's well-known CARREFOUR trade mark that it is not plausible that the Respondent was intending to develop a legitimate activity through the disputed domain name. The Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent configured an email server on the disputed domain name which presents a high risk of phishing activities associated with the disputed domain name. Such use of a domain name cannot be deemed as bona fide use or legitimate in nature. Internet users are likely to wrongly believe that emails sent from an email address "@promocaocarrefour.com" are official emails from the Complainant. The use of the privacy shield in registering the disputed domain name indicates that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is used in bad faith. It is not plausible that the Respondent was unaware of the Complainant when it registered the disputed domain name considering the fame of the CARREFOUR trade mark. The addition of the generic term "promocao" which means "promotion" is a further indication that the Respondent has considerable knowledge of the Complainant's business activities. The use of a well-known trade mark to attract Internet users to a website for commercial gain constitutes bad faith use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established it has rights in the mark CARREFOUR. This mark has been incorporated in its entirety in the disputed domain name and is easily identifiable. The generic Top-Level Domain ("gTLD") ".com" does not serve to remove the confusing similarity between the disputed domain name and the Complainant's trade mark since it is a technical requirement of domain names. It is a well-established principle that the gTLD in a disputed domain name is not a relevant factor for consideration.
The addition of the term "promocao" does not remove the confusing similarity with the Complainant's CARREFOUR trade mark.
The Complainant has therefore satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's CARREFOUR mark is well known in Brazil where the Respondent is located, and it is not at all plausible that the Respondent registered the disputed domain name without any knowledge of the Complainant and its trade mark. It cannot be seen how the Respondent can legitimately claim any rights in the disputed domain name which incorporates the Complainant's CARREFOUR trade mark and which is intended to convey to Internet consumers who speak Portuguese that the online location or website to which the disputed domain name relates is connected to an entity or person who has rights or legitimate interests in the CARREFOUR trade mark. The Respondent has not shown, with evidence, demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent's silence in this proceeding is also a factor from which the Panel draws a negative inference.
On a separate note, the Panel is aware from earlier decisions, e.g., Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147, that "a registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails" (see also Education Testing Service v. Ali Mohammed Ahmed, Afakcenter, WIPO Case No. D2017-1600). There is, however, no allegation by the Complainant of there having been actual phishing activities undertaken by the Respondent.
The Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Respondent chose to register a domain name which incorporates the well-known CARREFOUR trade mark. The Panel finds that the Respondent's choice of the disputed domain name reflects bad faith and an intention on the Respondent's part (i) to prevent the Complainant, the owner of the CARREFOUR trade mark, from reflecting the mark in a corresponding domain name and/or (ii) to attempt to attract, for commercial gain, Internet users to its online location, by creating a likelihood of confusion with the Complainant's CARREFOUR trade mark as to the source, sponsorship, affiliation or endorsement of the said online location. The fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith, especially taking into account that, according to the Complaint, the Respondent configured an email server on the disputed domain name. The disputed domain name is so obviously connected with the well-known CARREFOUR trade mark that its use suggests opportunistic bad faith (See, e.g., Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.)
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <promocaocarrefour.com> be transferred to the Complainant.
Date: January 13, 2018