WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. WhoisGuard, Inc. / Sara Benhadi
Case No. D2019-0379
1. The Parties
Complainant is Carrefour, Massy, France, represented by Dreyfus & associés, France.
Respondent is WhoisGuard, Inc. of Panama city, Panama and Sara Benhadi of Meknes, Morocco (together, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <carrefour-promo.club> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 28, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 5, 2019, adding registrant Ms. Benhadi to the previously named Respondent WhoIsGuard, Inc.
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 March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 28, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 15, 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
Complainant is a global leader in food retail with its headquarters in France. Founded in 1958, Complainant operates more than 12,300 stores and e-commerce sites in more than 30 countries, employing more than 375,000 people worldwide and generating EUR 88.24 billion in sales in 2017. Complainant has acquired considerable goodwill and renown in France and worldwide in connection supermarkets and banking and insurance services. In 2018, Complainant’s Carrefour trademark ranked among the top 10 most valuable French trademarks in the world. Complainant regularly uses promotional periods on its goods and services.
Complainant is the proprietor of trademark registrations containing the CARREFOUR mark (the “Mark”) in a number of countries, including the following:
- French trademark No. 1487274 for CARREFOUR (word mark) in classes 35, 36, 37, 38, 39, 40, 41, and 42, registered on September 2, 1988;
- European Union trademark No. 008779498 for CARREFOUR (word mark) in class 35, registered on July 13, 2010;
- European Union trademark No. 005178371 for CARREFOUR (word mark) in classes 9, 35, and 38, registered on August 30, 2007;
- International trademark No. 1010661 for CARREFOUR (word mark) in class 35, registered on April 16, 2009.
Complainant receives 1.3 million unique visitors per day to its websites, including <carrefour.com>, registered on October 25, 1995, and <carrefour.fr>, registered on June 23, 2005.
Respondent Benhadi registered the Domain Name on December 31, 2018 using a privacy shield. The Domain Name does not currently resolve to an active website. Previously, the Domain Name resolved to a website that invited users to complete a survey to win a voucher allegedly from Complainant.
Complainant had notified the Registrar of fraudulent content on the website to which the Domain Name resolved, requesting the Registrar to deactivate the website and suspend the Domain Name.
5. Parties’ Contentions
In relation to the first element, Complainant states that the Domain Name is confusingly similar to Complainant’s trademark CARREFOUR. The Domain Name reproduces Complainant’s well-known trademark CARREFOUR in its entirety. The addition of the generic term “promo”, which is an abbreviation of the French term “promotions” (same meaning in English), is insufficient to distinguish the Domain Name from Complainant’s trademark. This addition is likely to cause confusion because it clearly refers to Complainant’s sales and promotions provided through its promotion catalogues, and does not dispel any likelihood of confusion. The presence of a hyphen is likewise insufficient to distinguish the Domain Name from Complainant’s trademark. The extension “.club” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademarks and the Domain Name, since it is well-established that a generic Top-Level-Domain (“gTLD”) is insufficient to avoid a finding of confusing similarity.
In relation to the second element, Complainant contends that Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not a licensee of or otherwise affiliated with Complainant.
Complainant’s rights in the Mark predate the registration of the Domain Name. Respondent is not commonly known by the Domain Name or by the name “Carrefour”.
Respondent cannot assert that it was using or preparing to use the Domain Name in connection with any bona fide offering of goods or services. Rather, Respondent’s use of the Domain Name to operate a fake website impersonating Complainant confirms that Respondent has no rights or legitimate interests in the Domain Name.
Respondent cannot assert legitimate noncommercial use of the Domain Name. Email servers have been configured on the Domain Name, causing a high risk that Respondent intends to or has engaged in a phishing scheme. Given the goodwill and renown of Complainant, there is no plausible circumstance under which Respondent could legitimately use the Domain Name, and the use of which would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
In relation to the third element, Complainant alleges that that Domain Name was registered and is being used in bad faith. According to Complainant, it is implausible that Respondent was unaware of Complainant when it registered the Domain Name for several reasons.
First, Complainant’s Mark enjoys considerable goodwill and renown around the world, as has been acknowledged by previous Panels.
Second, the combination of the Domain Name reproducing Complainant’s Mark in connection with the term “promo” suggests that Respondent had Complainant’s trademark in mind when registering the Domain Name and indicates opportunistic bad faith.
Third, Complainant’s trademark rights in the Mark significantly predate the registration of the Domain Name. Previous Panels have found that knowledge of a corresponding trademark at the time of registration is strong evidence of bad faith.
Finally, Complainant submits that there is no possibility that Respondent chose the Domain Name for any reason other than to deliberately cause confusion among Internet users as to its source, thereby taking unfair advantage of Complainant’s goodwill and reputation.
Complainant states that Respondent is using the Domain Name to direct Internet users to a fake website impersonating Complainant, and that said website used Complainant’s logo and color codes to mislead users into completing a survey. Respondent has configured email servers on the Domain Name, making it likely that Respondent has or is intending to send fraudulent emails. Complainant was unable to reach Respondent, and Registrar did not reply to cease and desist letter.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is 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 Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark CARREFOUR, through trademark registrations in at least in France, the European Union, and internationally, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name <carrefour-promo.club> wholly incorporates Complainant’s Mark. The addition of the generic word “promo” does not prevent a finding of confusing similarity under the first element, and this word may even cause Internet users to believe that the Domain Name is related to Complainant’s services. The use of the hyphen does not alter the assessment of confusing similarity. It is the consensus view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview, section 1.11.1, and cases cited therein).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name. Complainant’s rights in the trademark predate the registration of the Domain Name by many years.
The Domain Name contains Complainant’s Mark along with the term “promo”, which tends to suggest sponsorship or endorsement by the trademark owner and therefore is incompatible with a finding of fair use. See WIPO Overview 3.0, section 2.5.1.
The Domain Name resolves to an inactive website and no information is provided on what rights or legitimate interests Respondent may have in the Domain Name. Complainant provides credible evidence that the Domain Name previously resolved to a website inviting users to complete a “survey” to receive Carrefour sales vouchers, which is blatantly fraudulent activity that cannot support a finding of legitimate rights. See WIPO Overview 3.0, section 2.5.3.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s trademark.
The Panel finds that Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith. As previous Panels have found, Complainant’s Mark is well-known. (See Carrefour v. Jose Gaudet, WIPO Case No. D2018-2864, 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. Yunjinhua, WIPO Case No. D2014-0257).
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of attracting Internet users seeking information about Complainant’s services. Complainant’s use of its Mark predates the registration of the Domain Name by more than 60 years. The Domain Name contains the Mark in its entirety. The addition of the term “promo” and the gTLD “.club” provide additional evidence of Respondent’s intentions to create the appearance of association with Complainant. There can be no question that Respondent chose the Domain Name in full awareness of this Mark and for the purpose of attracting Internet users for its own commercial gain.
The Domain Name previously resolved to an active website that displayed use of Complainant’s logo and corporate colors to entice users to enter their personal information to receive fraudulent “Carrefour” promotional vouchers. Such a website does appear to be a phishing website and such activities, together by the configuration of email servers using the Domain Name, manifestly demonstrate bad faith.
Respondent’s concealing of its identity, and its failure to submit a response or to provide any evidence of actual or contemplated good-faith use, further demonstrate bad faith.
The totality of the circumstances, supported by the evidence supplied by Complainant, demonstrates bad faith wherein Respondent has intentionally attempted to capitalize on Complainant’s trademark rights in pursuit of an illegitimate business enterprise. See WIPO Overview 3.0, section 3.1.
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-promo.club> be transferred to Complainant.
Date: April 29, 2019