WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Susan Gazzola / Wawan Kurnia
Case No. D2018-1608
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondents are Susan Gazzola of Vancouver, Canada (the "First Respondent") and Wawan Kurnia of Jawa Tengah, Indonesia (the "Second Respondent") (collectively the "Respondents").
2. The Domain Names and Registrar
The disputed domain names <carrefourés.com> (<xn--carrefours-j7a.com>), <carrefourespana.com>, <carrefourespaña.com> (<xn--carrefourespaa-2nb.com>), <carrefour-pass.com>, <carrefour-pass.online>, <carrefourspain.com> ("Domain Names") are registered with Google Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2018. The Complaint was originally filed regarding the Domain Names together with the domain names <carrefourspaine.com> and <esspagnecarefour.com>. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names and to DNC Holdings, Inc. in relation to <carrefourspaine.com> and <esspagnecarefour.com>. On July 19, 2018, DNC Holdings, Inc. informed that it was able to transfer the domain names <carrefourspaine.com> and <esspagnecarefour.com> to the Complainant. On July 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On August 16, 2018, the Complainant filed an amended Complaint removing <carrefourspaine.com> and <esspagnecarefour.com> from the Complaint. The Center sent an email communication to the Complainant on August 16, 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 the second amended Complaint on August 21, 2018. Following a further communication from the Center to the Complainant regarding the proper identity of the Registrar, on August 22, 2018, the Complainant filed the third amended Complaint.
The Center verified that the Complaint together with the amended Complaints (hereafter 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 Respondents of the Complaint, and the proceedings commenced on August 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 21, 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 retail group with operations throughout Europe, Latin America and Asia. The Complainant operates nearly 12,000 stores and e-commerce sites in over 30 countries and employs more than 380,000 people worldwide. The Complainant operates in Spain and in that country has developed the "Carrefour Pass" service. The Carrefour Pass is a financial payment product offered by the Complainant in Spain that allows customers to make payments. Over two million Spanish consumers hold the Carrefour Pass. The Complainant operates numerous websites at which the Complainant's products are displayed along with a logo consisting of two arrows pointing left and right respectively (the "Complainant's Logo").
The Complainant is the owner of numerous trade mark registrations for the word "carrefour" (the "CARREFOUR Mark"), including a French trade mark registered on September 2, 1988 (registration number 1487274) for various services in classes 35 to 42.
The Domain Names <carrefourés.com>, <carrefourespana.com>, <carrefourespaña.com> and <carrefourspain.com> were registered on April 7, 2018 by the First Respondent, using a privacy service. The Domain Names <carrefour-pass.com> and <carrefour-pass.online> were registered on April 7, 2018 and April 8, 2018, respectively, by the Second Respondent using a privacy service.
Each of the Domain Names is presently inactive but prior to the commencement of the proceeding each of the Domain Names resolved to a website ("the Respondent's Website") in Spanish that reproduced the CARREFOUR Mark and the Complainant's Logo and invited individuals to enter their "Carrefour Pass" membership details.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant's CARREFOUR Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the CARREFOUR Mark, having registered the CARREFOUR Mark in France, Spain and the European Union. The Domain Names each reproduce of the CARREFOUR Mark along with additional words which refer to the Complainant's Carrefour Pass or a geographical term.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial fair use of the Domain Names. Rather the Respondents are using the Domain Names for a phishing scheme by which the Respondents acquire the personal and financial information of consumers, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for a website that reproduces the Complainant's Logo and refers to the "Carrefour Pass", the Respondents are clearly aware of the CARREFOUR Mark and are using it to engage in a criminal scheme to acquire personal data from the Complainant's customers. Such conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Respondents
The named registrant of the Domain Names <carrefourés.com>, <carrefourespana.com>, <carrefourespaña.com> and <carrefourspain.com> is the First Respondent. The named registrant of the Domain Names <carrefour-pass.com>, <carrefour-pass.online> is the Second Respondent.
UDRP proceedings are normally brought against a single respondent. However paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 4.11.2, states:
"Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)."
Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against both the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered within the same week of each other with the same Registrar using the same privacy service. Each of the Domain Names has redirected to an identical website clearly under the control of a single entity, being the Respondent's Website. Finally, the Panel notes that neither the Respondent has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
6.2. Substantive Matters
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the CARREFOUR Mark, having registrations for CARREFOUR as a trade mark in France as well as in various other jurisdictions.
Each of the Domain Names incorporates the CARREFOUR Mark in its entirety with the addition of one or more descriptive or geographical terms, one of which is the word "pass" which refers to the financial payment product offered by the Complainant. The addition of such a term to a complainant's mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview 3.0 and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.
An individual viewing any of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant's CARREFOUR Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the CARREFOUR Mark or a mark similar to the CARREFOUR Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
Rather it appears that the Respondent has used the Domain Names to operate a website that, without the permission of the Complainant, passes itself off as the Complainant's official "Carrefour Pass" website in order to defraud the Complainant's customers by persuading them to provide the Respondent with their "Carrefour Pass" details (thereby enabling the Respondent to gain access to their personal and financial details). Such conduct, generally known as "phishing", is fraudulent, and does not amount to a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
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 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark 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 its 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 the respondent's website or location or of a product or service on the respondent's website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the CARREFOUR Mark at the time the Domain Names were registered. The Respondent's Website contains numerous references to the Complainant, including reproducing the Complainant's Logo and referring to the "Carrefour Pass". The registration of the Domain Names in awareness of the CARREFOUR Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent had used the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's Website, by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website has been used as part of a phishing campaign, to deceive the Complainant's customers and manipulate them into divulging sensitive financial information. This means that the Respondent likely receive a financial reward from Internet users who visit the Respondent's Website under the impression (created by the Domain Names and the content of the Respondent's Website) that it is somehow connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under 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 Domain Names, <carrefourés.com> (<xn--carrefours-j7a.com>), <carrefourespana.com>, <carrefourespaña.com> (<xn--carrefourespaa-2nb.com>), <carrefour-pass.com>, <carrefour-pass.online> and <carrefourspain.com> be transferred to the Complainant.
Date: September 25, 2018