WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Jose Gaudet
Case No. D2018-2145
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 / Jose Gaudet, of Gourfaleur, France.
2. The Domain Name and Registrar
The disputed domain name <moncompte-carrefour.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2018. On September 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 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 September 24, 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 25, 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2018.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on October 25, 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 Europe’s leading retailer and the second-largest retailer in the world, with a 2016 turnover of EUR 103.7 billion. It daily welcomes in its stores 13 million customers.
The Complainant carries on its business globally, with close to 12,000 stores in more than 30 countries, including in France, where the Complainant is headquartered and where the Respondent appears to be located.
The Complainant employs more than 380,000 persons throughout the world.
The CARREFOUR trademark has been registered around the world by the Complainant, including in France.
The registrations include, inter alia, a French Trademark number 1487274, registered on September 2, 1988; a European Union Trademark number 005178371, registered on August 30, 2007; and International Trademarks number 563304 registered on November 06, 1990 and number 1010661, registered on April 16, 2009, all for the word CARREFOUR (together, the “Mark”).
The Complainant is also the registrant of many domain names containing the Mark. Its main domain name, <carrefour.com>, registered on October 25, 1995, resolves to the Complainant’s official website.
The disputed domain name <moncompte-carrefour.net> was created on March 5, 2018 and resolves to an inactive page.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <moncompte-carrefour.net>, contains the distinctive element “carrefour” in its entirety. The Complainant also asserts that the fact that the descriptive words "mon" and "compte" (meaning respectively "my" and "account" in French), followed by a hyphen, precede the distinctive element “carrefour”, does not serve to distinguish the disputed domain name <moncompte-carrefour.net> from the Mark, and increases the likelihood of confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent is not affiliated with the Complainant and that it never authorized the Respondent to use the Mark in any manner.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being famous and well known, the Respondent had knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that passively holding the disputed domain name, the Respondent is using it in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English.
The Complainant in its Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or to object.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and French, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
B. Failure to respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.1 Requirements of paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <moncompte-carrefour.net>, it is evident that the latter consists solely of the Mark, preceded by the descriptive words "moncompte" and a hyphen and followed by the generic Top-Level Domain (“gTLD”) “.net”.
It is also well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <moncompte-carrefour.net> is confusingly similar to the Mark, which is incorporated in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business.
The website associated with the disputed domain name resolves to an inactive page.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) is not affiliated with the Complainant and (ii) has not been authorized by the Complainant to register or use the disputed domain name or the Mark.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Mark is famous, a s was recognized in a number of previous UDRP cases (see, e.g., Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067; Carrefour v. groupe carrefour, WIPO Case No. D2008-1996; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0769; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586; Carrefour v. Contact Privacy Inc. Customer 1242379769 / Le Berre, WIPO Case No. D2018-1552), the Panel finds that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028); and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the fact that the Respondent used a privacy shield service to hide his identity and contact details prevented the Complainant from contacting him. Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725 and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729).
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <moncompte-carrefour.net>, be transferred to the Complainant.
Date: November 8, 2018