WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Shangguan Zhi Qiang

Case No. D2018-1132

1. The Parties

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

The Respondent is Shangguan Zhi Qiang of Xiamen, Fujian, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <carrefourpay.net> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, 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. On May 23, 2018, the Respondent submitted an email in Chinese.

On May 30, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. On May 31, 2018, the Respondent submitted a request that Chinese be the language of the proceeding, and indicating its willingness to sell the disputed domain name to the Complainant. In light of the Respondent’s communication of May 31, 2018, the Complainant was invited to submit a request for suspension to explore possible settlement. The Complainant did not request suspension. The Respondent submitted a further communication in Chinese on June 1, 2018. On June 5, 2018, the Respondent submitted a further request that Chinese be the language of the proceeding. On June 8, 2018, the Complainant confirmed its request that English be the language of the proceeding. On June 9, 2018, the Respondent reiterated its request that Chinese be the language of the proceeding, as well as its willingness to sell the disputed domain name to the Complainant.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2018. On June 12, 2018, the Center received an informal email communication from the Respondent. The Respondent did not file a formal Response. Accordingly, on July 3, 2018, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Joseph Simone as the sole panelist in this matter on July 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

The Carrefour Group is one of the largest retailers in the world, operating more than 12,300 stores and e-commerce sites in more than 30 countries. In 2017, it generated EUR 88.4 billion in sales. More than 53 percent of its sales are generated outside of France. The Carrefour Group operates in three major markets: Europe, Latin America and Asia. In Asia, Carrefour has 365 hypermarkets and 58 supermarkets, including 216 hypermarkets in China.

The Complainant is the owner of the following trademark registrations:

- Chinese trademark CARREFOUR No. 795806, filed on February 25, 1994, registered on November 28, 1995, covering services in class 35, duly renewed;

- Chinese trademark CARREFOUR No. 8696287, filed on September 25, 2010, registered on November 7, 2011 covering services in class 35;

- International trademark CARREFOUR No. 1010661 designating China, registered on April 16, 2009, covering services in class 35.

In addition, the Complainant operates, among others, the following domain name incorporating its trademark:

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

The disputed domain name <carrefourpay.net> was registered on September 28, 2017. Previously, it resolved to a domain name selling platform offering the disputed domain name for sale for CNY 99,999. Currently, it resolves to a page of the registrar offering the disputed domain name for sale and inviting users to “click here to make an offer”. Prior to commencing this proceeding, the Complainant attempted to resolve the matter amicably as follows:

- On March 22, 2018, the Complainant sent a cease-and-desist letter to the Respondent, via registered letter and email concerning the disputed domain name <carrefourpay.net>. The cease-and-desist letter requested the Respondent to cease the use of the disputed domain name and to transfer it free of charge to the Complainant.

- In response to the Complainant’s cease-and-desist letter, the Respondent offered to sell the disputed domain name for CNY 99,999, stated that he has already sold multiple domain names to large companies and warned the price would increase every 3 days.

- He also added that the term “carrefour” is a generic term meaning crossroads and refers to smart payment.

After the Respondent’s response, the disputed domain name was redirected towards the default page of the registrar. And currently, the disputed domain name resolves towards a page of the registrar offering the disputed domain name for sale.

The Complainant then commenced this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant made comprehensive submissions summarized as follows.

Identical or confusingly similar

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark CARREFOUR in which it has rights, based on the following:

(i) The Complainant is the owner of International and Chinese trademark registrations for CARREFOUR covering services in class 35. In addition, the Complainant operates websites under domain names reflecting its trademarks, including <carrefour.com>.

(ii) The disputed domain name reproduces the Complainant’s trademark CARREFOUR, which previous UDRP panels have considered as well known or famous. Many UDRP decisions have considered that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark. The addition of the generic term “pay” is insufficient to avoid any likelihood of confusion, especially given the Complainant offers payment services to its customers through its subsidiary Carrefour Banque. Hence, Internet users are likely to believe that the disputed domain name is endorsed by the Complainant. The addition of the generic Top-Level Domain (“gTLD”) also does not eliminate the confusing similarity.

(iii) The Complainant has used the trademark CARREFOUR in connection with a wide variety of products and services, such that the public has come to perceive the goods and services offered under this trademark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain name is owned by or at least related to the Complainant.

Rights or legitimate interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name based on the following:

(i) The Respondent is not affiliated with the Complainant in any way and has not been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name as the CARREFOUR trademark preceded the registration of the disputed domain name.

(ii) In previous UDRP decisions, panels found that in the absence of any license or permission from a complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

(iii) 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. Previously, it resolved to a domain name selling platform offering the disputed domain name for sale for CNY 99,999. Later it resolved to the default page of the registrar and currently it resolves to a page again offering the disputed domain name for sale. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. In conjunction with the Respondent’s response to the cease-and-desist letter attempting to sell the disputed domain name, it appears the only reason the Respondent registered the disputed domain name was for the purpose of selling it.

(iv) The Respondent has registered around 75 domain names, including some which replicate trademarks and company names like Apple, iPhone, Gucci and Sina Banking.

Registered and used in bad faith

The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:

(i) It is implausible that the Respondent was unaware of the Complainant’s trademark when he registered the disputed domain name given CARREFOUR is a well-known trademark throughout the world including China where the Respondent is located and the disputed domain name entirely reproduces the mark CARREFOUR. Supposing the Respondent did not have actual knowledge, a quick trademark search for CARREFOUR would have revealed the Complainant’s substantial rights in the mark.

(ii) The Respondent’s pattern of behavior of registering domain names reproducing third party trademarks and company names demonstrates that the Respondent intends to derive profit from this registration. Previous UDRP panels have held such behavior as indications of bad faith. Furthermore, in response to the Complainant’s cease-and-desist letter, the Respondent immediately offered to sell the disputed domain name for a price well in excess of its out-of-pocket costs, without contesting the Complainant’s trademark, and tried to obtain a closing of the sale by threatening to increase the sale price every three days.

The Complainant submits that the disputed domain name is being used in bad faith on the following grounds:

(i) In the absence of any license or permission from the Complainant, no bona fide or legitimate use of the disputed domain name can be claimed.

(ii) The disputed domain name currently resolves towards the default page of the registrar offering the disputed domain name for sale, therefore it can be said to be inactive. Previous UDRP panels have found that passive holding can constitute holding in bad faith and the panel must give attention to all of the surrounding circumstances, and that reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.

(iii) The Respondent’s attempts to sell the disputed domain name to the Complaint are futher evidence of the Respondent’s bad faith.

(iv) It is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, however, in several communications with the Center, the Respondent repeatedly indicated his willingness to sell the disputed domain name to the Complainant.

6. Discussion and Findings

6.1 Language of Proceeding

The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:

(i) The Complainant is located in France and has no knowledge of Chinese. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost of the present proceeding. This would impose a burden on the Complainant which must be deemed significant in view of the cost of the present proceeding.

(ii) An important consideration is the issue of fairness to both parties. Many UDRP decisions have recognized that using the registration agreement’s language would impose an undue burden on the complainant (Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679), it would cause undue delay and the complainant would have to incur substantial expenses (Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

(iii) The disputed domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Chinese. It can thus be assumed that the Respondent has reasonable knowledge of English.

(iv) Today English is the primary language for international relations and it is one of the working languages of the Center.

The Respondent requested that Chinese be the language of the proceeding on May 31, 2018, June 5, 2018 and June 9, 2018.

In accordance with paragraph 11 of the Rules:

“…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Therefore, prima facie, the language of the proceeding shall be Chinese.

However, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement.

The Panel has considered the Complainant’s submissions, and while it does not agree that the Respondent can understand English given the Respondent has only communicated in Chinese, there are other reasons that the proceeding should proceed in English.

The Panel points to the “overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

On 12 June, 2018, the Center formally notified the Respondent in English and Chinese that proceedings had commenced and that the Respondent could file a response in English or Chinese in accordance with paragraph 5 of the Rules.

The Respondent submitted a short, informal response in Chinese by email. The Respondent did not make any attempt to file a formal response nor did the Respondent raise any objections at not being able to understand the Complainant’s submissions.

On the contrary, the Panel has read the Chinese text of the Respondent’s emails to the Center as well as the Respondent’s reply in Chinese to the Complainant’s cease-and-desist letter and is satisfied that the Respondent fully understands the nature of the claims being asserted against him and has stated his position on the matter.

The Panel is satisfied that the Respondent was given a fair opportunity to present its case and will not be prejudiced if English is chosen as the language of the proceeding. By contrast the Complainant would be unduly burdened if required to translate its submissions into Chinese, therefore the Panel will proceed to write the decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).

That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark CARREFOUR for which the Complainant has international and Chinese trademark registrations. The Complainant also has unregistered rights by virtue of using the mark CARREFOUR in connection with a wide variety of products and services around the world.

A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).

When comparing the domain name with the trademark, the gTLD “.net” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).

In this case, the disputed domain name <carrefourpay.net> incorporates the entirety of the Complainant’s trademark CARREFOUR. After removing the “.net” suffix, the element that remains is the descriptive term “pay” and it is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).

The first requirement of the UDRP is therefore satisfied.

B. Rights or Legitimate Interests

A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name.

In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:

(i) There is no evidence that the Respondent is commonly known by the disputed domain name.

(ii) Prior to receiving notice of the dispute, there is no evidence of contemplated or actual bona fide use. Before receiving the Complainant’s cease-and-desist letter, the website redirected to a domain name selling platform offering the disputed domain name for sale CNY 99,999. Given the Respondent is not authorized or licensed to use the trademark CARREFOUR nor to apply for a domain name incorporating the mark, it seems the only reason the Respondent registered the disputed domain name was in order to sell it.

(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Rather, the disputed domain name now resolves to a page of the registrar offering the disputed domain name for sale and inviting users to “click here to make an offer”. In response to the Complainant’s cease-and-desist letter, the Respondent offered to sell the disputed domain name for CNY 99,999 and warned the price would increase every 3 days. Thus, the Respondent is clearly unfairly riding on the reputation of the trademark with a view to commercial gain.

(iv) Moreover, the Respondent has a habit of registering third-party domain names: it is associated with 75 domain names incorporating trademarks and company names including Apple, iPhone, Gucci and Sina Banking. This is reinforced by the Respondent’s own admission that it has already sold multiple domain names to large companies. Therefore, the Respondent’s activity is clearly a commercial endeavor.

Having prima facie established the Respondent’s lack of rights or legitimate interests, the burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0) and the Respondent has not presented any evidence to rebut the Complainant’s assertions. On the contrary, the Respondent’s communications only reinforece the Complainant’s arguments under this element.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

A complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention to subparagraphs (i) and (ii):

(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;

(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.

In respect of subparagraph (i) the Panel believes the Respondent registered the disputed domain name for the primary purpose of selling it to the Complainant for consideration in excess of its out-of-pocket costs. In response to the cease-and-desist letter, the Respondent offered to sell the disputed domain name for CNY 99,999, far in excess of its out-of-pocket costs, which were probably around CNY 75, as currently advertised on the Registrar’s website. The Respondent warned the price would increase every 3 days, presumably in order to intimidate the Complainant into buying the disputed domain name. Additionally, the Respondent explained it did not build a site using the disputed domain name, nor set up a website that conflicts or competes with the Complainant. Indeed, the disputed domain name resolves to a website stating that the disputed domain name is for sale. This further reinforces the Panel’s view that the Respondent’s primary intention was to sell the disputed domain name.

With respect to subparagraph (ii), the Panel also finds the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. In this regard, it is relevant that the Respondent “knew or should have known” of the Complainant’s trademark rights, which is a strong inference for bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051). The Panel is satisfied the Respondent did in fact know of the Complainant’s trademark. The disputed domain name wholly incorporates the Complainant’s trademark which is a well-known brand. In the Respondent’s reply to the cease-and-desist letter and correspondence with the Center, the Respondent explained that Carrefour is a generic term meaning crossroads but did not contest the Complainant’s trademark rights. Rather, the Respondent appealed to the reputation of the Complainant including prior media coverage, advising the Complainant to buy the mark rather than commence proceedings in order to maintain a good image in the minds of Chinese consumers. It is therefore clear the Respondent was aware of the Complainant’s rights and this is a case of opportunistic bad faith. Moreover, it appears the Respondent has engaged in a pattern of such conduct given other domain name registrations containing well-known marks and names such as Apple, iPhone, Gucci and Sina Bank, and the Respondent’s own admission to working in domain name investment for a long time and having sold many domain names to large companies.

The Respondent failed to submit a response to the contrary therefore the Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith.

The third requirement of the UDRP is therefore satisfied.

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 <carrefourpay.net> be transferred to the Complainant.

Joseph Simone
Sole Panelist
Date: July 19, 2018