WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Dwayne Bolanos
Case No. D2018-2419
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Dwayne Bolanos of Hollywood, United States of America.
2. The Domain Name and Registrar
The disputed domain name <carrefour-moncompte.org> is registered with Todaynic.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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.
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 of the Complaint, and the proceedings commenced on November 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 29, 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.
3A. Language of the Proceedings
Although, in response to the routine enquiry by the Center, the Registrar has indicated the Complaint (filed in English) was filed in the language of the Registration Agreement, reference to the Registrar’s website shows the Registration Agreement to be in Chinese and it is on that assumption that the Complainant has included in the Complaint a request that the language of the proceedings be in English, It does so on the following grounds:
(i) the Complainant is located in France and has no knowledge of Chinese and proceeding in that language would impose a significant cost burden on the Complainant.
(ii) the fact that the disputed domain name is in Latin characters suggests that the Respondent has a knowledge of languages other than Chinese.
(iii) the Respondent appears to be based in the United States of America. The Registrar’s website is available in English which is the primary language for international relations.
On the basis of the Complainant’s submissions and in the absence of a response from the Respondent, and the Registrar’s confirmation that the Registration Agreement used by the Respondent is English, the Panel accepts the Complaint in English.
4. Factual Background
The Complainant is a French company founded in 1958. According to the Complaint, it provides supermarket, banking and insurance services throughout Europe, Asia and Latin America through over 12,000 stores and e-commerce sites in more than 30 countries and regions and employs more than 375,000 people worldwide. In 2017, it generated sales in excess of EUR 88 billion, 53% of which were from outside France. The Complainant offers its services through websites which include the name “Carrefour” including <carrefour.com> and <carrefour-banque.fr> through which it offers banking and other financial services.
The Complainant is the owner of several trade mark registrations including European Union Trade Mark CARREFOUR, No. 0051758371, filed June 20, 2006 and registered on August 30, 2007, and International Trade Mark CARREFOUR, No. 1010661, registered April 16, 2009.
The Complainant has been successful in several prior decisions under the Policy in which its CARREFOUR trade mark has been recognised as a well-known or famous mark.
The disputed domain name was registered on May 8, 2018; it currently does not direct to an active website.
Nothing is known of the Respondent save for that which is shown in the WhoIs for the disputed domain name.
5. Parties’ Contentions
The Complainant’s submissions may be summarised as follows:
(i) The Complainant is the owner of numerous trade mark registrations around the world for its well-known trade mark CARREFOUR and is also the owner of several domain names including that trade mark.
(ii) The disputed domain name reproduces the Complainant’s CARREFOUR trade mark in its entirety which is sufficient to establish the identity or at least confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the “ - “ and the words “moncompte” (“my account” in English) does not influence the similarity between the disputed domain name and the trade mark, nor does the addition of the generic Top-Level Domain (“gTLD”) “.org”.
(iii) The Respondent has no affiliation with the Complainant and has not been aurthorised to use or register its trade marks or seek registration of any domain name incorporating the mark; nor is it commonly known by the disputed domain name.
(iv) The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or, to the Complainant’s knowledge, for any other legitimate purpose.
(v) Given the Complainant’s goodwill and renown, it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name as it would inevitably result in misleading diversions taking an unfair advantage of the Complainant’s rights.
(vi) The fact that the disputed domain name includes the term “moncompte”, which relates to the Complainant’s financial services, further indicates that the Respondent had the Complainant’s trade mark in mind when registering the disputed domain name.
(vii) In view of the Complainant’s wide and well-known reputation in the trade mark CARREFOUR the Respondent could not honestly have represented and warranted that to its knowledge registration of the disputed domain name would not infringe the rights of any third party.
(viii) Given the Complainant’s goodwill and renown, the Respondent could not have chosen the disputed domain name for any reason other than to deliberately cause confusion and to take advantage of the Complainant’s goodwill and reputation.
(ix) The Complainant’s inactive holding of the disputed domain name constitutes use in bad faith on the basis of the doctrine of “passive holding” in the circumstances referred to in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has a clearly established right and reputation in the trade mark CARREFOUR, including through international and European Union trade mark registrations. The disputed domain name wholly includes the Complainant’s trade mark, the addition of the words “moncompte” and the gTLD does not avoid a finding of confusing similarity, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Panel therefore finds that the disputed domain name is confusingly similar to the CARREFOUR trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complaint has not licensed or otherwise authorised the Respondent to use the disputed domain name and there is no evidence of any other basis upon which the Respondent might claim rights or legitimate interests in the disputed domain name.
The Panel accepts and adopts the Complainant’s submission that it is not possible to conceive circumstances in which the Respondent could legitimately use the disputed domain name.
The Complainant has established a prima face case which the Respondent has not sought to rebut and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, see WIPO Overview 3.0, section 2.1.
C. Registered and Used in Bad Faith
The international renown of the Complainant’s name and trade mark has been recognised in many prior decisions under the Policy. The fact the Complainant has had to resort so often to the Policy in order to protect its rights in its name and trade mark is something which, in itself, speaks to the extent of its reputation and the Respondent must have known of it when choosing to register the disputed domain name. It is therefore reasonable to assume that the Respondent chose the disputed domain name with intent to benefit from the goodwill attached to the CARREFOUR trade mark.
The disputed domain name does not currently resolve to an active website and there is no evidence on the record of any other use of the disputed domain name. Nevertheless, in the light of the Complainant’s very extensive reputation in its CARREFOUR trade mark, the Respondent’s continued passive holding of the disputed domain name may be regarded as use in bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Panel notes further that the inclusion in the disputed domain name of the French words meaning “my account” has the potential to cause deception as to access to the Complainant’s account-holders’ accounts and could facilitate fraudulent use.
The Panel therefor finds that the disputed domain name has been registered and is being used in bad faith.
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 <carrefour-moncompte.org> be transferred to the Complainant.
Desmond J. Ryan AM
Date: December 12, 2018