WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS
Case No. D2018-1949
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Zhuhai Yingxun Keji Limited of Zhuhai, China / Paul Loutin, Loutin SAS, France (the Panel notes that the Registrar did not provide the country of the Respondent, however, according to the telephone and fax number of the Respondent, it appears that the Respondent is located in France).
2. The Domain Names and Registrar
The disputed domain names <banque-carefour.com> and <banque-carefour.net> are registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 September 11, 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 September 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on October 22, 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 an international retailer that operates nearly 12,000 stores and e-commerce sites in more than 30 countries. It owns notably a banking subsidiary, Carrefour Banque, offering more than 30 years a wide range of banking-related products and services. To date, Carrefour Banque has more than 2.5 million customers and manages total outstanding loans of EUR 2.9 billion and a total of EUR 2.3 billion for its customer savings.
The Complainant owns numerous trademark registrations in France and other jurisdictions around the world, in particular:
- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, designating services in class 36;
- European Union Trade Mark CARREFOUR No. 008779498, registered on July 13, 2010, designating goods and services in class 35;
- European Union Trade Mark CARREFOUR No. 005178371, registered on August 30, 2007, designating goods and services in classes 9, 35 and 38.
The Complainant is also the owner of the following domain names reflecting its trademarks:
- <carrefour.com> registered on October 25, 1995;
- <carrefour-banque.fr> registered on October 7, 2009;
- <banque-carrefour.fr> registered on October 7, 2009.
The Respondent appears to be a French company. The disputed domain names <banque-carefour.com> and <banque-carefour.net> were registered on February 16, 2018 using a privacy service.
The disputed domain name <banque-carrefour.com> used to resolve to the website of a restaurant in Colmar, France, and was deactivated following a formal letter sent by the Complainant to the Registrar. However, this disputed domain name was activated again and resolved to a login page reproducing the Complainant’s logo.
The disputed domain name <banque-carefour.net> has not been used in connection with an active website.
Both of the disputed domain names are now inactive.
5. Parties’ Contentions
(i) The Complainant contends that the disputed domain names are confusingly similar to the trademark registrations of the Complainant, since the disputed domain names reproduce identically the CARREFOUR and BANQUE CARREFOUR trademarks in which the Complainant has rights.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further submits that the Respondent is not affiliated with the Complainant in any way, nor authorized or licensed by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating its trademarks.
The Complainant also contends that the Respondent is making a non-legitimate use of the disputed domain names, with intent for commercial gain to misleadingly divert consumers from the Complainant’s official website.
(iii) The Complainant contends that the disputed domain names were registered in bad faith. The Complainant submits that its trademarks are well known throughout the world and the Respondent knew or should have known the existence of the Complainant’s rights.
The Complainant further contends that the disputed domain names are being used in bad faith, in particular, demonstrated by the use of the disputed domain name <banque-carrefour.com> that used to resolve to a website imitating the Complaint’s official website. Such use would create a strong likelihood of confusion with the Complainant’s official website for Internet users and demonstrates the Respondent’s intention to abusively benefit from Internet users by obtaining their financial data such as credit card numbers through the disputed domain names.
The Complainant also submits that the lack of response of the Respondent to the Complainant’s pre-complaint correspondence accounts for another evidence of bad faith.
(iv) The Complainant requests that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving each of the following:
(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 Respondent has 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 provideds evidence that it has rights in the CARREFOUR and BANQUE CARREFOUR trademarks, which designate France, well before the Respondent registered the disputed domain names. This satisfies the Panel that the Complainant has registered trademark rights in the CARREFOUR and BANQUE CARREFOUR marks for the purposes of the Policy.
The disputed domain names <banque-carefour.com> and <banque-carefour.net> closely reproduce the Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR in their entirety.
According to Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Consequently, the Panel finds that the “.com” and “.net” TLDs in the disputed domain names shall be disregarded for the assessment under the first element.
The relevant part shall therefore be “banque-carefour” which is close to the Complainant’s trademark BANQUE CARREFOUR, but contains a misspelling of the mark CARREFOUR with only one letter “r” instead of two and an additional hyphen between “banque” and “carefour”.
In this respect, previous UDRP panels have consistently found that a domain name that consists of a common, obvious or intentional misspelling of a trademark is confusingly similar to the relevant mark (section 1.9, WIPO Overview 3.0).
Moreover, the use of the hyphen, a punctuation mark, does not alter the assessment of confusing similarity. Previous UDRP panels have regularly ruled that hyphenation in domain names would not prevent a finding of confusing similarity “because the dominant portion of each domain name is the Complainant’s [trademark]”. See Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768, TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER, WIPO Case No. D2012-2001, and Carrefour v. Jean-Claude Bot / Albert Pierre, WIPO Case No. D2017-0969.
Hence, the Panel finds that the mere addition of a hyphen and the common misspelling of the Complainant’s trademarks do not avoid the confusing similarity resulting from the entire capture of the Complainant’s trademarks in the disputed domain names.
Thus, the requirements under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use its trademarks and that there is no business relationship existing between the Complainant and the Respondent.
In addition, the disputed domain names are not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain names.
Indeed, the Complainant provided evidence that the website associated to the disputed domain name <banque-carefour.com> used to resolve toward an imitation of the user-account login page of the official website of the Complainant, attempting to fraudulently obtain sensitive information like personal data and credit card information from the clients of the Complainant. Meanwhile, the disputed domain name <banque-carefour.net> does not appear to have been used in connection with an active website.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and thus the requirement under paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
It has been proven to the Panel’s satisfaction that the Complainant’s trademarks are well -known in France and all around the world, and the Panel accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s activities.
In addition, the composition of the disputed domain names entirely reproduces the Complainant’s trademark BANQUE CARREFOUR, except for the omission of one “r” in the middle of the term “carrefour”. Moreover, the previous website of the disputed domain name <banque-carefour.com> was referring to the Complainant, its logo and its activities in banking services.
Also previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre, supra.
The above elements all indicate that the disputed domain names have been registered in bad faith.
The Complainant provided evidence that the disputed domain name <banque-carrefour.com> used to resolve towards a website imitating the user-account login page of the official website of the Complainant, attempting to fraudulently obtain personal data and credit card information from the Complainant’s customers.
Previous UDRP panels have regularly ruled that bad faith may be established when a fraudulent scheme was set up with the help of a domain name containing the trademark of a company, since the customers or Internet users are being misled and deceived into believing that they are dealing with the owner of the trademark. See The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 and OLX, Inc. v. J D Mason Singh, WIPO Case No. D2014-1037. The disputed domain name <banque-carefour.net> having been registered on the same day by the same Respondent is presumably intended for such fraudulent activity.
Lastly, the Panel notes that the disputed domain names are now inactive. In any event, the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3).
By not submitting a Response, the Respondent offered no information that might have led the Panel to question the Complainant’s arguments that the Respondent is using the disputed domain names in bad faith.
Therefore, this Panel finds that the intention of the Respondent to take undue advantage of the Complainant’s trademarks has been demonstrated.
For the above reasons, the Panel finds the Respondent registered and is using the disputed domain names in bad faith, and thus the condition of paragraph 4(a)(iii) 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 names <banque-carefour.com> and <banque-carefour.net> be transferred to the Complainant.
Date: November 5, 2018