WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Sarah Malki and Patrice Laura
Case No. D2017-2265
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondents are Sarah Malki of Paris, France and Patrice Laura of Paris, France.
2. The Domain Names and Registrar
The disputed domain names <carte-carrefour2017.com>, <fidelite-cartecarrefour.com> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 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 November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2017.
The Center appointed William Lobelson as the sole panelist in this matter on January 17, 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
Carrefour is a global leader in food retail and operates nearly 12,000 stores and e-commerce sites in more than 30 countries. It generates more than 53% of its sales outside France.
The Complainant owns numerous CARREFOUR trademark registrations, and in particular:
- French trademark CARREFOUR No. 1 487 274, dated September 2, 1988, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41, 42;
- European Union trademark CARREFOUR No. 008 779 498, dated July 13, 2010 that covers services in class 35;
- European Union trademark CARREFOUR No. 005 178 371, dated August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 36.
The Complainant also owns the domain names <carrefour.com> registered on October 25, 1995 and <carrefour.fr> registered on June 23, 2005.
The disputed domain names are <carte-carrefour2017.com> and <fidelite-cartecarrefour.com> and were both registered on August 23, 2017 by the Respondents. The disputed domain names resolve to inactive pages.
On August 25, 2017, the Complainant sent a cease-and-desist letters to the Respondents requesting that they cease the use of the disputed domain names and that they transfer them free of charge.
No response was obtained from the Respondents.
The Complainant therefore filed the present Complaint with the Center.
5. Parties' Contentions
The Complainant requests that the dispute be consolidated against all the Respondents on the basis that there are several commonalities in the WhoIs records of the disputed domain names, including the same registration date, the registration of domain names that refer to Complainant's loyalty card, the use of very similar addresses that start and end with the figure "5", the use of the same Registrar, the same hosting company and the same email servers.
The Complainant contends these factors demonstrate that the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert.
The Complainant contends that the disputed domain names are identical or at least confusingly similar to its earlier trademarks, tradename and domain names formed with the word "Carrefour"; that the Respondents lack of any rights or legitimate interests therein; finally, that the Respondents registered and use the disputed domain names in bad faith for it could not ignore the Complainant's rights.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Procedural Issues - Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion, and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules.
In this respect, the Panel takes note of the general principle espoused by the panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 that "the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties."
The Panel also takes a note of section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which states that "The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint. In all cases, the burden falls to the party seeking consolidation to provide evidence in support of its request."
In the Complaint, the Complainant sought consolidation and contended, among others, that, whilst there are certain differences in the WhoIs information among the disputed domain names, both of the disputed domain names list very similar addresses, that both of the disputed domain names were created on the exact same date, using the exact same Registrar, hosting company and email server and that both of the disputed domain names use a very similar naming pattern involving variations of the Complainant's loyalty card name ("Carrefour carte fidélité").
The Respondents had the opportunity but did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are subject to common ownership or control.
The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
6.2 Substantive Issues
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns numerous trademark and domain name registrations worldwide for the trademark CARREFOUR, the reputation of which has already been acknowledged in previous UDRP decisions.
The trademark CARREFOUR is entirely reproduced within the disputed domain names <carte‑carrefour2017.com> and <fidelite-cartecarrefour.com>, and it is associated with the French descriptive words "carte" and "fidelite", which happen to be used by the Complainant to identify its loyalty card named "Carrefour carte fidélité".
The disputed domain name <carte-carrefour2017.com> also contains the numerical figure "2017" which is insufficient to avoid any likelihood of confusion since it only qualifies the previous terms "carte Carrefour" and inform Internet users about the year. The disputed domain name is still dominated by the trademark CARREFOUR.
The disputed domain names, even if not identical to the Complainant's trademark, clearly appear confusingly similar thereto.
The gTLD ".com" should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
The Panel concludes that the disputed domain names are confusingly similar to the Complainant's mark and finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondents do not have any rights or legitimate interests in the disputed domain names, particularly by asserting that the Respondents are not affiliated with it in any way and that it never authorized the Respondents to use its trademark as part of the disputed domain names.
The Panel further finds that the Respondents are not making a bona fide offering of goods and services, nor a legitimate noncommercial or fair use, as the disputed domain names resolve to inactive pages.
The Respondents have not denied any of the Complainant's assertions and have not brought any element showing that they have a right or legitimate interest in the disputed domain names.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondents do not have any rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
1) Registration in bad faith
The Respondents have declared, at the time of registration of the disputed domain names that they reside in France, where the Complainant's trademark CARREFOUR benefits from an indisputable reputation and notoriousness.
The Panel cannot believe that the Respondents could be unaware of the Complainant's rights in the trademark CARREFOUR and of the Complainant's massive exploitation of the generic term "carte fidelite" to identify its loyalty card in France, when they sought to register the disputed domain names.
The Panel is convinced therefore that the Respondents had the Complainant's trademark in mind when they registered the disputed domain names, and thus acted in bad faith.
2) Use in bad faith
Even after receiving a cease-and-desist letter from the Complainant, notifying its earlier proprietary rights in the name CARREFOUR, the Respondents did not grant back the disputed domain names to Complainant.
The Panel regards this unjustified retention of the disputed domain names as passive holding qualifying as use in bad faith.
Most of all, the Complainant has demonstrated that the Respondents were involved in phishing activities.
Through a fraudulent email displaying a domain name <carte-fidelite-carrefour.com>, sent from an address "carte-fidelitéemail@example.com", Internet users were invited to visit a web site under the URL "www.carte‑carrefour2017.com", where a page imitating the Complainant's official web site was designed to deceive users and obtain the details of their credit cards and banking information.
More precisely, recipients of the fraudulent message were directed to an electronic form that was supposed to allow Carrefour's customers to win a EUR 150 gift card. This form required that customers enter their credit card and banking information, and that they pay the sum of EUR 2,99 as delivery fees.
The Complainant managed to obtain from the concerned Registrar the deactivation of the pages to which the disputed domain names resolved, and which were used by the Respondents for phishing purposes, before filing the present Complaint.
Pursuant to the cease-and-desist letter sent to the Respondents by the Complainant, the domain name <carte-fidelite-carrefour.com>, which resolved to the same phishing website described above, was deleted.
The two disputed domain names <carte-carrefour2017.com> and <fidelite-cartecarrefour.com> were not deleted.
Even though, at the time when the Complaint was filed, neither of the two disputed domain names were active, it has been established that the Respondents were using the disputed domain name <carte-carrefour2017.com>, and intended to use the disputed domain name <fidelite‑cartecarrefour.com> in bad faith, in the frame of a phishing scheme for the purpose of abusing the Complainant's customers and extort financial information.
Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are 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 names, <carte-carrefour2017.com> and <fidelite-cartecarrefour.com>, be transferred to the Complainant.
Date: January 30, 2018