WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Nikolay Shevchenko
Case No. D2018-2850
1. The Parties
The Complainant is Carrefour, of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Nikolay Shevchenko of Koh Lipe, Thailand.
2. The Domain Name and Registrar
The Disputed Domain Name <carrefour-carte-fidelite.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 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 December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 21, 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.
4. Factual Background
The Complainant is a multi-local, multi-format and omni-channel retail Group, which operates more than 12,300 stores and e-commerce sites in 30 countries.
Currently, the Complainant operates on three major markets: Europe, Latin America and Asia.
The Complainant owns numerous trademark registrations for the term CARREFOUR. Among others, the Complainant is the owner of the following trademark Registrations:
- French trademark CARREFOUR No. 1487274, registered on September 2, 1988;
- European Union trademark CARREFOUR No. 008779498, registered on July 13, 2010; and
- European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007.
In addition, the Complainant operates several domain names reflecting its trademark in order to promote its services, among others:
- <carrefour.com> registered on October 25, 1995; and
- <carrefour.fr> registered on June 23, 2005.
The Disputed Doman Name <carrefour-carte-fidelite.com> was registered on December 31, 2017.
The Disputed Domain Name resolves to an inactive page.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s trademark CARREFOUR, since the Disputed Domain Name reproduces the Complainant’s trademark CARREFOUR in its entirety.
The Complainant alleges that the Disputed Domain Name associates the Complainant’s trademark with the French descriptive term “carte”, which means “card” in English and “fidelite”, translated as “loyalty”. These additions to the Disputed Domain Name are insufficient to avoid confusing similarity.
Moreover, these additions enhance the false impression that the Disputed Domain Name is somehow related to the Complainant. Thus, Internet users will believe that the Disputed Domain Name will direct them to a website dedicated to the Complainant’s loyalty cards.
Furthermore, the generic Top-Level Domain (“gTLD”) “.com” in the Disputed Domain Name does not affect the likelihood of confusion.
Finally, the Complainant submits that it is likely that the Disputed Domain Name could mislead Internet users into thinking that it is associated with the Complainant.
Rights or legitimate interests
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 trademark, or to seek registration of any domain name incorporating its trademark.
Moreover, the Respondent cannot claim prior rights or legitimate interests in the Disputed Domain Name as the Complainant’s trademark precede the registration of the Disputed Domain Name for years.
What is more, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
Registration and use in bad faith
The Complainant contends that it is implausible that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name.
Moreover, the composition of the Disputed Domain Name reproduces the Complainant’s trademark and the terms “carte” and “fidelite” makes reference to the Complainant’s loyalty cards.
Furthermore, the Complainant’s trademark registrations significantly predate the registration date of the Disputed Domain Name.
The Complainant’s submits that a quick trademark search would have revealed to the Respondent the existence of the Complainant and its trademark.
In addition, the Disputed Domain Name resolves to an inactive page.
Finally, the Complainant states that the fact that the Respondent has not replied to any cease and desist letters and reminders constitute bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) the 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademarks rights over the term CARREFOUR.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <carrefour-carte-fidelite.com> is confusingly similar to the Complainant’s CARREFOUR trademark. The Complainant’s trademark is clearly recognizable within the Disputed Domain Name.
Furthermore, the Disputed Domain Name contains the Complainant’s CARREFOUR trademark in its entirety and the addition of the dictionary terms “carte” and “fidelite” and the use of hyphens do not alter the assessment of confusing similarity. Moreover, the addition, of the gTLD “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name by several years.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has used its trademarks long before the Disputed Domain Name was registered.
The Disputed Domain Name was registered on December 31, 2017, while the Complainant’s CARREFOUR Trademark Registration No.1487274, was granted on September 2, 1988.
The Complainant’s trademarks are well known as it has been recognized by previous decisions under the Policy (See Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; 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; Carrefour v. Yujinhua, WIPO Case No. D2014-0257).
In light of this, the Respondent had evidently knowledge of the Complainant’s trademarks when he registered the Disputed Domain Name. The addition to the Disputed Domain Name of the dictionary terms “carte” and “fidelite” to the well-known trademark CARREFOUR is further evidence of bad faith since these terms clearly refers to the Complainant’s loyalty cards.
The Disputed Domain Name <carrefour-carte-fidelite.com> is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and his failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Name also amounts to bad faith.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name 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-carte-fidelite.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: January 28, 2018.