WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Cooperative Union Sweet
Case No. D2018-2823
1. The Parties
The Complainant is Carrefour, of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Cooperative Union Sweet of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name <carrefour-services.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 December 12, 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 December 14, 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 December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 10, 2019. 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.
The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.
4. Factual Background
The Complainant, founded in France in 1958, is an international supermarket chain of 12,300 stores and e-commerce sites in more than 30 countries spanning Europe, Latin America and Asia.
The Complainant owns numerous trademark registrations around the world, including, but not limited to, the following:
European Union Trade Mark (“EUTM”) No. 005178371, for CARREFOUR, filed on June 20, 2006 and registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38;
European Union Trade Mark (“EUTM”) No. 008779498, for CARREFOUR, filed on December 23, 2009 and registered on July 13, 2010, covering services in class 35;
International trademark No. 1010661, for CARREFOUR, registered on April 16, 2009, designating inter alia, Japan, Turkey, Turkmenistan, Ghana, and the Syrian Arab Republic and covering services in class 35.
The disputed domain name was registered on October 10, 2018, and has since resolved to a website under construction. Irrespective of the inactivity, a lookup search of <carrefour-services.com> on MXToolbox.com shows that the disputed domain name is associated with an email server under the hostname mail.carrefour-services.com at the IP address 188.8.131.52.
5. Parties’ Contentions
The Complainant makes the following submissions:
i) The Complainant’s CARREFOUR mark has been found to be “well-known” or “famous” by prior UDRP panels;
ii) The disputed domain name reproduces the Complainant’s CARREFOUR mark in its entirety, which coupled with the addition of the generic term “services”, actually increases the confusing similarity between the disputed domain name and the Complainant’s mark for Policy purposes;
iii) The extension “.com” is generally not taken into consideration when assessing identity or confusing similarity as is a functional element of domain names at large;
iv) The Respondent is neither affiliated with the Complainant in any way, nor has it been authorized by the Complainant to register and use the CARREFOUR mark as a domain name;
v) The Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the CARREFOUR mark predates the disputed domain name for many years;
vi) There is simply no evidence that the Respondent may be commonly known by the CARREFOUR name;
vii) The Respondent cannot assert that, before any notice of this dispute, it was using, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy;
viii) Prior UDRP panels have found that in the absence of any license or permission from the Complainant to use a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed;
ix) It is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the time of registering the disputed domain name because the Complainant’s CARREFOUR mark is well-known throughout the world;
x) The composition of the disputed domain name, which points to services associated with the Complainant’s CARREFOUR mark, indicates that the Respondent knew about the Complainant and its activities;
xi) Given the reputation of the Complainant’s mark, registration of the disputed domain name in bad faith can be inferred;
xii) A quick CARREFOUR trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent’s failure to do so is a contributory factor to its bad faith;
xiii) In view of the Complainant’s goodwill and notoriety worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s CARREFOUR mark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s trademark rights;
xiv) The disputed domain name’s current state of inactivity does not preclude a finding of bad faith under the Policy;
xv) A further indication of the Respondent’s bad faith use of the disputed domain name is the fact that email servers have been configured on the disputed domain name, and so there is a risk that the Respondent is using, or intending to use, the disputed domain name to send fraudulent emails misrepresenting itself as the Complainant.
The Respondent did not submit a Response to the Complaint. The Panel notes that, on January 7, 2019, that is one day after the due date for the Response, a third party sent an email to the Center distancing itself from the administrative proceeding, without providing any material facts or arguments in response to the Complaint.
6. Preliminary question. Proper Respondent
The Complainant named Domain Privacy Service Fbo Registrant, The Endurance International Group, Inc. as the Respondent in the Complaint. Following a response from the Registrar to the Center’s request for Registrar verification, the Complainant added Cooperative Union Sweet as co-respondent in the amended Complaint.
Because the Registrar confirmed that Cooperative Union Sweet was the sole registrant for the disputed domain name, the Panel holds that said entity alone is the proper Respondent in the instant UDRP proceeding. This holding is without prejudice to any other claims or proceedings, if any, that may be available to the Complainant against the entity or entities initially named in the Complaint.
7. Discussion and findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for confusing similarity under the UDRP involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark(s).
The Complainant holds EUTM registrations, and an international trademark registration, for CARREFOUR, all of which predate registration of the disputed domain name for several years.
The disputed domain name consists of the terms “carrefour” and “services”, separated by a hyphen.
To the Panel’s eye, the Complainant’s well-known CARREFOUR mark is immediately recognizable within the disputed domain name, which suffices to find confusing similarity within the meaning of the Policy. See section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of generic or descriptive terms do not prevent a finding of confusing similarity under the first element”.
Here, the joinder of the generic term “services” with the disputed domain name increases the likelihood of confusion by association with the CARREFOUR mark as the Complainant operates in the services industry in Europe, Latin America, and Asia. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by respondent is descriptive of the complainant’s goods or services marketed in relation to the trademark”).
For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s CARREFOUR European and international marks.
The Complainant has therefore satisfied its burden of proof for this element of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “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 [the Respondent’s] 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.
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Respondent has not been authorized by the Complainant to use the CARREFOUR marks in connection with the disputed domain name or otherwise. There is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.
The Panel notes that the Complainant’s marks are well-known in Spain, where the Respondent is located. See Carrefour S.A., Viajes Carrefour S.L. v. Xavier Buck, WIPO Case No. DES2009-0051 (the complainant has produced abundant evidence of the notoriety of its trademarks in the Spanish market 1 ).
The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less proved, that it has rights or legitimate interests in the context of the Policy.
Furthermore, by looking at the overall circumstances of the case, namely the notoriety of the Complainant’s marks, the Respondent’s failure to appear in this proceeding, the absence of an active website showing a bona fide use of the disputed domain name, and ultimately, the possibility that the Respondent use the disputed domain name in email communications to impersonate the Complainant and defraud consumers, negate, in the Panel’s view, rights and legitimate interests within the purview of the Policy.
In sum, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has satisfied its burden of proof for this element of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] 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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
Several UDRP panels have considered the Complainant’s CARREFOUR mark to be either famous or well-known internationally. See for instance Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; and Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248.
It follows that the Respondent could not have been unaware of the fame or notoriety of the CARREFOUR mark when it registered the disputed domain name, which suggests opportunistic bad faith on the part of the Respondent. See Carrefour v. Lamienne Ambada, Help.com, WIPO Case No. D2018-0637 (considering that the complainant’s CARREFOUR trademark is famous or at least well-known, the panel concludes that the respondent must have been aware of the complainant’s trademark and that it registered the disputed domain name in opportunistic bad faith).
Having found that the disputed domain name is deemed to have been registered in bad faith, the Panel considers that the use of the disputed domain name in connection with an active email server could be considered further evidence of bad faith, as the most likely intention of the Respondent, considering the CARREFOUR mark’s notoriety, would be to defraud consumers with emails purporting to originate from the Complainant.
In any case, from the totality of the circumstances, the Panel finds that the Respondent’s passive holding of the disputed domain name does not avoid a finding of bad faith registration and use as the degree of distinctiveness of the Complainant’s mark and the implausibility of any good faith use to which the disputed domain name may be put convinces the Panel that the Respondent is in bad faith. See WIPO Overview 3.0, Section 3.3.
All in all, the Panel is persuaded that the disputed domain name was registered and has been used in bad faith within the realm of the Policy.
Thereby, the Complainant has discharged its burden in relation to 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 disputed domain name <carrefour-services.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
January 25, 2019
1 The original text of the decision in Spanish reads “la Demandante ha aportado abundante –y muy bien sistematizada- prueba del carácter notorio de sus marcas en el mercado español, desde luego en cuanto que distintivas de una cadena de supermercados…”