WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casino Guichard Perrachon v. Contact Privacy Inc. Customer 0153135447 / Privacy Inc. Customer 0153136304 / Sophie Vermeille, SteeleHolt
Case No. D2018-2633
1. The Parties
Complainant is Casino Guichard Perrachon of Saint Etienne, France, represented by Baker & McKenzie AARPI, France.
Respondent is Contact Privacy Inc. Customer 0153135447 of Toronto, Canada / Privacy Inc. Customer 0153136304 of Toronto, Canada / Sophie Vermeille, SteeleHolt of Paris, France, self-represented.
2. The Domain Names and Registrar
The disputed domain names <rallyecasino.com> and <rallyecasino-info.com> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 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 Complainant on November 19, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 20, 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2018. The Center received a communication from Respondent on November 27, 2018. The Center informed the Parties it will proceed to Panel Appointment on December 14, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 19, 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
Complainant is a French mass-retail group also known under the name “Casino Group”. Complainant was founded in 1989 and is a mature player in the mass retail market in France. Today Casino Group is present across all mass retail spectrum including hypermarkets, supermarkets, convenience stores, discount and wholesale stores, under various brand names (CASINO, MONOPRIX, FRANPRIX, LEADER PRICE, etc.). Casino Group’s majority shareholder is the Rallye company since a merger between the two groups in 1992.
Complainant has adduced evidence that it is the owner of a large number of trademarks consisting of or comprising the terms CASINO and RALLYE, protected in France, including the following:
- French trademark CASINO No. 1440103, filed on December 13, 1977, registered on December 9, 1987 (duly renewed), and covering goods in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34;
- French trademark CASINO No. 3988799, registered on March 8, 2013, and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- French semi-figurative trademark CASINO No. 3342114, registered on February 18, 2005 (duly renewed) and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;
- French semi-figurative trademark RALLYE No. 1293000, registered on December 12, 1984 (duly renewed) and covering goods and services in classes 16, 35 and 39;
- French semi-figurative trademark GROUPE RALLYE No. 1485030, registered on August 26, 1988 (duly renewed) and covering goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42 and 43.
Respondent is a French lawyer specialized in restructuring and advising debtor companies, credit institutions and distressed investors on out-of-court refinancing and restructuring.
The disputed domain names <rallyecasino-info.com> and <rallyecasino.com> were registered on November 5, 2018. On November 14, 2018, the disputed domain name <rallyecasino-info.com> was resolving to a website in French presenting, inter alia, Respondent’s statement before the Autorité des Marchés Financiers about Casino and Rallye Groups. Both disputed domain names are now inactive.
5. Parties’ Contentions
Under paragraph 4(a)(i) of the Policy, Complainant claims that the disputed domain names are confusingly similar to its RALLYE and CASINO trademarks, as both trademarks are identically reproduced in the disputed domain names. Complainant further claims that the juxtaposition of its trademarks and the generic term “info” do not negate the confusing similarity, the two trademarks being each owned by Complainant and the generic term “info” being understood as meaning “information”, so Internet users are likely to be confused by the disputed domain names.
Under paragraph 4(a)(ii) of the Policy, Complainant states that Respondent does not have any rights or legitimate interests in the disputed domain names. In this regard, Complainant claims that Respondent has no connection or affiliation with Complainant, nor with the Casino Group. Complainant also affirms that Respondent has never been commonly known by the disputed domain names, as it is a lawyer specialized in restructuring. Finally, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names as it is trying to criticize the Casino Group with domain names confusingly similar to its trademarks in a commercial way. According to Complainant, Respondent intends, with its website, to promote its services as a lawyer and to obtain publicity in a detrimental way for Complainant that will benefit its clients – short-selling investors speculating on the decline in the stock market price of Rallye and Casino shares.
Finally, under paragraph 4(a)(iii) of the Policy, Complainant claims that the disputed domain names were registered and are being used in bad faith. Complainant states that Respondent was obviously well aware of the existence of the prior trademarks, in particular in view of the content of its website, dedicated to Casino and Rallye Groups. Complainant further claims that Respondent is trying to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the RALLYE and CASINO trademarks.
Respondent did not reply to Complainant’s contentions. However, Respondent stated in a communication to the Center dated November 27, 2018 that it is surprised to learn about the filing of a complaint and is willing to automatically transfer the disputed domain names to Complainant.
6. Discussion and Findings
6.1. Preliminary Issue: Consent to Transfer
Noting Respondent’s consent to transfer, the Panel also notes that section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") considers whether a UDRP panel can decide a case based on the respondent's consent to transfer:
"In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent's consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights."
The Panel has decided to accept Respondent’s willingness to transfer the disputed domain names to Complainant and to also issue some substantive observations on the merits for completeness (and also noting that Complainant has inexplicably cast some doubt on its agreement to such Respondent consent to transfer).
6.2. Substantive Matters
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain names, Complainant must prove that each of the following three elements are present:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Paragraph 15(a) of the Rules provides that “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) of the Rules provides that “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Taking the foregoing provisions into consideration the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether Complainant has established relevant trademark rights. In the present case, Complainant has adduced evidence that it has registered trademark rights in CASINO and RALLYE in connection with goods and services, including food products and retail services. The Panel is therefore satisfied that Complainant has established relevant trademark rights.
The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain names are identical or confusingly similar to Complainant’s trademarks.
Here, the disputed domain names <rallyecasino-info.com> and <rallyecasino.com> fully incorporate Complainant’s RALLYE and CASINO trademarks with the mere addition of the generic term “info” in the domain <rallyecasino-info.com>.
The Panel finds that the full incorporation of two different Complainant’s trademarks is sufficient to establish confusing similarity for the purposes of the Policy (see Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118). Indeed, the RALLYE and CASINO trademarks being both owned by Complainant, Internet users viewing the combination of these trademarks in the disputed domain names would be likely to confuse the domain names with Complainant’s trademarks, assuming that they refer to Casino and Rallye Groups which are closely connected.
The addition, the generic term “info” separated by a hyphen does not avoid the confusing similarity between the disputed domain names and Complainant’s trademarks as the trademarks RALLYE and CASINO remain recognizable within the disputed domain names (see Dr. ing. h.c.F. Porsche AG v. “Porsche”, WIPO Case No. D2013-0623; Confédération Nationale du Crédit Mutuel v. Pavol lcik/CREDITMUTUEL-INFOS.COM, WIPO Case No. D2013-1864). .
The generic Top-Level Domain “.com” is irrelevant when comparing the trademarks and the disputed domain names, as it is a functional element.
The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s trademarks and that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Registration and Use in Bad Faith
This is a case where, as described in section 2.15 of the WIPO Overview 3.0, it is convenient to consider the issues of “Rights or Legitimate Interests” and “Registration and Use in Bad Faith” together. According to Complainant, Respondent intends, with its website, to obtain publicity for its services as a lawyer in a way that unfairly capitalizes on Complainant’s mark and that will benefit Respondent’s clients (namely short-selling investors speculating on the decline in the stock market price of Rallye and Casino shares).
Paragraph 4(a)(ii) and (iii) of the Policy requires complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name and that it was registered and used in bad faith.
Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights to or legitimate interests in a domain name, including:
“(i) before any dispute notice sent to [respondent], [respondent’s] 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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trademark or service mark rights; or
(iii) [respondent is ] 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.”
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that [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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [respondent’s] website or location.”
Respondent has not submitted a formal Response and has therefore not rebutted Complainant’s prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain name <rallyecasino.com> contains Complainant’s trademarks in their entirety with no additional elements. Previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0). Therefore, no fair use could be contemplated as the disputed domain name contains no additional terms which might suggest there is no affiliation with the trademark owner. At the time of drafting this Decision the disputed domain name <rallyecasino.com> did not resolve to an active website. Taking the above into consideration the Panel considers that Respondent has no rights or legitimate interests in the <rallyecasino.com> disputed domain name.
The disputed domain name <rallyecasino-info.com> contains Complainant’s trademarks in their entirety with the additional term “-info”. Complainant provided a printout of the website made before the filing of the Complaint, showing a website entitled “Rallye Casino” with a disclaimer in French: “this website is intended for those who want to be able to consult the various public elements that Sophie Vermeille has communicated on the Casino Group and its holdings”. According to the website, Respondent is “a lawyer of a small number of investors having taken short positions in the debt of Rallye and Casino”. In circumstances where a disputed domain name that is confusingly similar to a trademark is being used for free speech and criticism, previous UDRP panels have found that the right to legitimate criticism does not necessarily extend to registering or using a domain name even where such domain name consists of a trademark plus an additional term, if it impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). In the present case, the term “-info” could trigger an inference of affiliation with Complainant. Moreover, the use of the disputed domain name <rallyecasino-info.com> supposes unfair commercial gain for Respondent (and not any fair use or criticism), which includes reputational gain. Such use cannot be considered as fair use and would not support a claim to rights or legitimate interests.
The Panel is convinced that Respondent was well aware of Complainant’s trademarks at the time of registration of the disputed domain names and finds that the disputed domain names were registered and are being used in bad faith.
Given this, the Complainant has made out the requirements of paragraphs 4(a)(ii) and (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 disputed domain names <rallyecasino.com> and <rallyecasino-info.com> be transferred to Complainant.
Date: January 2, 2019