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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Zhuhai Yingxun Keji Limited / PAUL LOUTIN, LOUTIN SAS

Case No. D2019-0548

1. The Parties

The Complainant is Carrefour of Massy, France, represented by Dreyfus & associés, France.

The Respondent is Zhuhai Yingxun Keji Limited of Zhuhai, China / PAUL LOUTIN, LOUTIN SAS (city and country information unknown).

2. The Domain Names and Registrar

The disputed domain name <moncarrefour-banque.net> is registered with Eranet International Limited; and the disputed domain name <moncarrefour-banque.org> is registered with Todaynic.com, Inc. (collectively the “Registrar”). Together, <moncarrefour-banque.net> and <moncarrefour-banque.org> are referred to as the “Disputed Domain Names” in this decision.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 18, 2019, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email communication to the Complainant regarding a Complaint Deficiency. The Complainant filed an amended Complaint on March 26, 2019.

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 March 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2019.

The Center appointed John Swinson as the sole panelist in this matter on May 6, 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 Carrefour, a company incorporated in France. The Complainant owns a number of trade marks for BANQUE CARREFOUR including French trade mark number 3585968, registered on July 2, 2008 (“Trade Mark”).

According to the Complaint, the Complainant is a global leader in food retail and was established in 1958. The Complainant operates 12,300 stores and e-commerce sites in more than 30 countries and regions. In 2017, the Complainant generated EUR 88.24 billion in sales. The Complainant also owns a domain name which incorporates the Trade Mark (being <carrefour.com>) which was registered on October 25, 1995.

The Respondent is Zhuhai Yingxun Keji Limited of Zhuhai, China / PAUL LOUTIN, LOUTIN SAS.
No Response was received from the Respondent and therefore little information is known about the Respondent.

The <moncarrefour-banque.org> domain name was registered on August 29, 2018 and the <moncarrefour-banque.net> domain name was registered on August 31, 2018. According to the evidence provided by the Complainant, the <moncarrefour-banque.net> domain name resolved to a forbidden/error page (Annex 1 of the Complaint), and the <moncarrefour-banque.org> domain name resolved to a login page asking for customers' login details for the Customer area.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Disputed Domain Names incorporate the Trade Mark entirely, only with the additional term “mon”.
The Disputed Domain Names have inverted the positions of the word BANQUE and CARREFOUR with a hyphenation between them.

The additions of “.net” and “.org” can be disregarded in assessing identity or confusing similarity.

The Disputed Domain Names are therefore confusingly similar to the Trade Mark.

Rights or Legitimate Interests

The Respondent has no prior rights or legitimate interests in the Disputed Domain Names because:

- the Respondent is not commonly known by the Disputed Domain Names;
- the Respondent does not own any trade marks associated with the Disputed Domain Names;
- the Respondent has not made any attempt to use the website at the Disputed Domain Names in connection with a bona fide offering of goods and services;
- the Complainant has not licensed or otherwise permitted the Respondent to use the Trade Mark; and
- the Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Names.

Registered and Used in Bad Faith

The Complainant and the Trade Mark are well known throughout the world. The combination of the Disputed Domain Names with the term “mon” strongly suggests that the Respondent had the Trade Mark in mind when registering the Disputed Domain Names.

A quick search of CARREFOUR or BANQUE CARREFOUR would have revealed the existence of the Complainant and the Trade Mark. The Complainant’s goodwill and reputation mean that the Respondent was aware of the Trade Mark at the time of registration of the Disputed Domain Names.

The website at the <moncarrefour-banque.org> domain name was previously used for a phishing scam. The Respondent was using the website at the <moncarrefour-banque.org> domain name to impersonate the Complainant and request the credit card details of consumers. This clearly amounts to bad faith.

The <moncarrefour-banque.net> domain name resolves to a forbidden/error page which can be considered an inactive website. This passive holding can amount to bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondents have 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.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents’ lack of a Response.

A. Procedural Issues

The Complaint has been filed against multiple Respondents and relates to multiple domain names. Paragraph 3 (c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In considering whether to consolidate a complaint panels look at whether:

- the domain names or corresponding websites are subject to common control; and

- the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation (see WIPO Jurisprudential Overview 3.0, section 4.11.2).

In assessing common control, panels have considered a range of factors to determine whether such consolidation is appropriate. These include similarities in or other relevant aspects of the registrants’ identities, the nature of the marks at issue and naming patterns in the disputed domain names.

In this case, both Disputed Domain Names have been registered by the same individual, and the same privacy service was used to conceal that individual’s identity. Further, there is clearly a similarity in the naming pattern of the Disputed Domain Names – both domain names incorporate the Complainant’s Trade Mark entirely and include the prefix “mon”. Due to these factors, the Panel considers it procedurally efficient to consolidate the Complaint.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case the Disputed Domain Names have inverted the positions of the word BANQUE and CARREFOUR with a hyphenation between them. The Disputed Domain Names incorporate the Trade Mark entirely, only with the additional term “mon”. The Panel finds that the added term, hyphen and inverted position do not prevent a finding of confusing similarity between the Disputed Domain Names and the Trade Mark. The Trade Mark is recognizable in the Disputed Domain Names.

The addition of the generic Top-Level Domains (“gTLDs”) “.com” and “.net” can be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Network, Inc. v. Emil Boc, WIPO Case No. D2009-1535.

The Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers that the Complainant has made out a prima face case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant has made submissions that the website at <moncarrefour-banque.org> was previously used for a phishing scam. The Panel accepts these submissions and finds that this is clearly not a bona fide use of that domain name. <moncarrefour-banque.net> resolves to an error page, which can be considered to be an inactive website. In the circumstances, this is also not a bona fide use of that domain name.

- The Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names, nor has registered or common law trade mark rights in relation to these names.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. As mentioned above, the website at <moncarrefour-banque.net> is inactive and the website at <moncarrefour-banque.org> was previously used for a phishing scam.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. 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 Names in bad faith.

If circumstances indicate that the Respondent’s intent in registering the Disputed Domain Names was to profit in some fashion from, or otherwise exploit, the Complainant’s Trade Mark, panels will find bad faith on the part of the Respondent (see section 3.1.1 of the WIPO Overview 3.0).

The Complainant’s brand is well known internationally, having been operated since 1958.

There have been a number of WIPO decisions which have recognized that the Trade Mark is famous (see, e.g., Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586; Carrefour v. Contact Privacy Inc. Customer 1242379769 / Le Berre, WIPO Case No. D2018-1552; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Jose Gaudet, WIPO Case No. D2018-2145).

The Respondent registered the Disputed Domain Names in August 2018. Given that the Disputed Domain Names incorporate the entire Trade Mark (which is not a descriptive or generic term) and the Complainant has a strong reputation in the Trade Mark, the Panel finds it highly likely that the Respondent was aware of the Trade Mark at the time the Disputed Domain Names were registered.

The Complainant submits that the website at <moncarrefour-banque.org> was previously used for a phishing scam. The Respondent was using the website at <moncarrefour-banque.org> to impersonate the Complainant and request the credit card details of consumers. This clearly amounts to use in bad faith. The <moncarrefour-banque.net> domain name resolves to an error page, which can be considered to be an inactive website. In the circumstances, this passive holding can amount to bad faith.

The Respondent also registered the domain names <banque-carefour.com> and <banque-carefour.net> on February 16, 2018, which were the subject of a panel decision in favour of the Complainant (Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS, WIPO Case No. D2018-1949). This demonstrates that the Respondent has a pattern of conduct of registering the Complainant’s Trade Marks to trade off their reputation.

In the circumstances, the Panel finds evidence evidence of registration and use in bad faith under the Policy for both Disputed Domain Names.

7. Decision

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 <moncarrefour-banque.net> and <moncarrefour-banque.org> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: May 20, 2019

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