WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Cossi Jules

Case No. D2018-0129

1. The Parties

The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.

The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / Cossi Jules of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <financecarrefour.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2018, 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 January 23, 2018 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 January 26, 2018.

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 February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2018.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on March 9, 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 and the reference in food retail and operates nearly 12,000 stores and e-commerce sites in more than 30 countries.

As a banking subsidiary of the Carrefour group, Carrefour Banque has for more than thirty years offered a wide range of products that are accessible and efficient, adapted to the needs of customers and consumers: MasterCard PASS card, current account, personal loan, car and home insurance, complementary health, etc. More than 2.5 million customers today benefit from exclusive services and benefits and achieve everyday savings by shopping. Carrefour Banque manages a total outstanding loan of EUR 2.9 billion and a total of EUR 2.3 billion held for its customers.

The Complainant holds several rights to the name “Carrefour”, notably the following trademarks:

- International trademark CARREFOUR, no. 351147, registered on October 2, 1968, duly renewed, protected in classes 1 to 34;

- International trademark CARREFOUR, no. 1010661, registered on April 16, 2009, protected in class 35;

- European Union Trade Mark registration CARREFOUR, no. 005178371, registered on August 30, 2007, protected in classes 9, 35 and 38.

In addition, it owns and maintains the following domain names which resolve to its official website:

- <carrefour.com> registered on October 25, 1995;

- <carrefour-banque.fr> registered on October 7, 2009.

The disputed domain name was registered on November 16, 2017. It resolved to a website impersonating the Complainant’s identity through which banking and insurance services were offered in 10 different languages. The Complainant noticed also that email servers are configured on the disputed domain name <financecarrefour.com>. Thus, a risk of phishing is additionally emphasized.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its CARREFOUR trademarks.

Indeed, the disputed domain name reproduces the Complainant’s trademark CARREFOUR which previous UDRP panels have considered to be “well-known” or “famous”, like Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089, Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962 and several others.

The Complainant relies on the prior UDRP decisions Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150 and RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059, that considered that the incorporation of a trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s registered trademark.

Moreover, the disputed domain name <financecarrefour.com> associates the Complainant’s well-known trademark CARREFOUR to the generic term “finance”. This generic term refers to the financial services of Carrefour. Numerous UDRP decisions rendered by former UDRP panels have established that adding a generic and descriptive term to the Complainant’s trademark does not avoid the similarity between a trademark and a domain name.

The content of the website, to which the disputed domain name used to resolve to, created a false impression that it was officially related to the Complainant’s banking activities. It used the name “Carrefour” to offer financial services in different languages, clearly targeting the Complainant’s clients. Prior UDRP decisions Bayer Healthcare LLC v. Admin, Domain, WIPO Case No. D2016-2342 and Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156, established that the content of the website associated with a domain name is relevant for determining confusing similarity, when such content is targeting complainant’s trademark.

The Complainant sent a cease and desist letter, pursuant to which the litigious website was taken down.

The Complainant proves that there is an email server configured on the disputed domain name, enabling the creation of email addresses using the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is not affiliated with the Complainant in any way nor has it been authorized or licensed by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark CARREFOUR. The Respondent is not known by the name CARREFOUR.

The disputed domain name is so similar to the Complainant’s well-known trademark CARREFOUR that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent was using the disputed domain name for a website impersonating the Complainant’s identity and taking advantage of its reputation for obtaining sensitive information from Internet users.

In addition, the Respondent registered the disputed domain name using a privacy shield service, to hide its identity and to prevent the Complainant from contacting him or her. The personal data that was disclosed pursuant to the filing of the Complaint is obviously false.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant invokes that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name, and relies on the prior UDRP decisions Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113, in which the UDRP panel found that bad faith can be found where the respondent “knew or should have known” of the complainant’s trademark rights and, nevertheless, registered a domain name in which he had no rights or legitimate interests.

The Respondent has deliberately tried to impersonate the Complainant’s identity and his financial and insurance services which means that it was very familiar with the Complainant’s activities.

Moreover, a quick CARREFOUR trademark search or a simple search via Google would have revealed to the Respondent the existence of the Complainant and its trademark.

Furthermore, the Respondent registered the disputed domain name through a privacy shield service to hide its identity and contact details, thus, preventing the Complainant from contacting it. It gave a false address when registering the disputed domain name. Prior UDRP decisions confirmed that deliberate concealment of identity and contact information may in itself indicate registration in bad faith.

The Complainant adds that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name, this type of conduct constitutes another evidence of the Respondent’s bad faith.

The previous UDRP decisions Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 and Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281, considered that in the absence of any license or permission from the complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

As the disputed domain name is confusingly similar to the Complainant’s trademark, previous decisions, like MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765 ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site”.

The Respondent appears to be engaged in a phishing scheme. Although the website is currently deactivated, email servers are still configured and active on the disputed domain name. The Respondent could aim at stealing valuable and sensitive information from customers or employees who are directly related to the Complainant and its business activities.

The Complainant relies on the previous UDRP decisions OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037 and The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 which concluded that the 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.

Furthermore, the previous decision Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225, has found that configuration of an email server on the disputed domain name constitutes use in bad faith since the same represents a real risk that the respondent may be engaged in a phishing scheme, aiming to let Internet users to believe they were dealing with the complainant.

Such use of the disputed domain name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation and particularly from its trademark CARREFOUR to obtain commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its registered well-known CARREFOUR trademark rights.

The disputed domain name is composed of the Complainant’s CARREFOUR trademark, preceded by the French generic term “finance”. This term is descriptive in relation to the Complainant’s financial activities.

In addition, the disputed domain name resolved to an active website containing the Complainant’s CARREFOUR trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CARREFOUR trademarks. The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

The Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name.

The Respondent has not been licensed or authorized to use the CARREFOUR trademarks or to register the disputed domain name.

The Respondent did not make a fair or noncommercial use of the disputed domain name. On the contrary, the disputed domain name resolved to a website impersonating the Complainant’s identity.

In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The condition of paragraph 4(a)(ii) of the Policy has therefore been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a Panel to be evidence of bad faith registration and use of a domain name. It provides that:

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent 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 that complainant, for valuable consideration in excess of the respondent’s 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 your 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 the respondent’s website or location.”

Given the well-known character of the CARREFOUR trademarks and the fact that the Respondent is domiciled in France, the Panel finds that the Respondent could not ignore the Complainant’s rights in the CARREFOUR trademarks when it registered the disputed domain name. In this regard, the addition of the French generic term “finance” aims at targeting the Complainant’s clients.

The Respondent hid its identity, using an identity privacy shield service and gave a false address when registering the disputed domain name. Furthermore, it has provided no evidence whatsoever of good faith use of the disputed domain name.

The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to disrupt the Complainant’s activities.

The Panel finds that the disputed domain name was registered and is being used to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s official website. Thus, the disputed domain name is being used in bad faith.

The Complainant has provided evidence that the Respondent has set up email servers for the disputed domain name. This entails that the Respondent can send emails through the email address “@financecarrefour.com”. The Respondent can therefore use (or may have already used) the disputed domain name to send fraudulent emails such as messages containing spam, phishing attempts, etc.

Given the foregoing, the Panel determines that, according to paragraph 4(b)(iv) of the Policy, 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 the Respondent’s website or location.

For all the above reasons, the Panel is of the opinion that the Respondent’s use of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name was registered and is being used in bad faith by the Respondent.

7. Decision

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, <financecarrefour.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: March 22, 2018