WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Zhuhai Yingxun Keji Limited / LOUTIN SAS

Case No. D2019-0766

1. The Parties

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

The Respondent is Zhuhai Yingxun Keji Limited of China / LOUTIN SAS of France.

2. The Domain Name and Registrar

The disputed domain name <carefour-banque.com> is registered with Eranet International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2019, 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 April 12, 2019 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 April 16, 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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2019.

The Center appointed Fabrice Bircker as the sole panelist in this matter on May 22, 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 French company operating a retail business founded more than 60 years ago, currently counting more than 12,300 stores and e-commerce sites in more than 30 countries and employing more than 370,000 people worldwide.

In 2017, the Complainant generated EUR 88.24 billion in sales.

The Complainant serves more than 13 million customers around the world on a daily basis.

According to the 2018 Brandz ranking, CARREFOUR is the 10th most valuable French brand.

The Complainant also offers banking and financial services.

The Complainant is in particular the owner of the following CARREFOUR and BANQUE CARREFOUR trademarks registrations:

- Chinese trademark CARREFOUR No. 8696287, filed on September 25, 2010, registered on November 7, 2011 and covering services in class 35;

- Chinese trademark CARREFOUR No. 795806, filed on February 25, 1994, registered on November 28, 1995, duly renewed and covering services in class 35;

- French trademark CARREFOUR No. 1487274, registered on September 2, 1988 (consisting in the renewal of the filing made on September 11, 1978 under the former French trademark law, and registered under No. 1066804), duly renewed, and notably covering services in classes 35, 36, 37, 38, 39, 40, 41, and 42,

- French trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed and covering services in class 36,

- European Union trademark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010 and covering services in class 35.

In addition, the Complainant operates, among others, the following domain names which reflect its trademarks:

- <carrefour.com> registered on October 25, 1995;
- <carrefour.fr> registered on June 23, 2005;
- <carrefour-banque.fr> registered on October 7, 2009.

The disputed domain name has been registered on January 3, 2019.

At the time of the drafting of the decision, the disputed domain name appears to be inactive.

According to the record of the case, the disputed domain name previously resolved to a website reproducing the Complainant’s page through which its clients can access, by typing their identification code, to their personal area dedicated to banking services.

The Panel notes that the Registrar did not provide the country of the Respondent, however, according to the phone and fax numbers of the Respondent, it appears to be located in France.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar:

The Complainant contends that the disputed domain name is confusingly similar to its CARREFOUR and BANQUE CARREFOUR well-known trademarks because it imitates them.

The Complainant notably puts forward that the disputed domain name consists in misspelling its trademarks by removing one of the two letters “r” in “Carrefour” what constitutes typosquatting, and that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is confusingly similar to said trademark.

The Complainant adds that the presence in the disputed domain name of a hyphen and of the “.com” extension is insufficient to prevent a finding of confusing similarity.

Rights or legitimate interests:

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In this respect, the Complainant notably asserts that the Respondent is neither affiliated with it, nor has been authorized by it to seek registration of any domain name incorporating its trademarks.

Furthermore, the Complainant claims that the Respondent has no prior rights or legitimate interests in the disputed domain name and is neither commonly known by the disputed domain name or the names “Carrefour” and/or “Banque Carrefour”.

Besides, according to the Complainant, the Respondent cannot assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, because the disputed domain name previously resolved to a page reproducing the Complainant’s trademarks and logos, and providing access to a customer area.

The Complainant also contends that, as the disputed domain name incorporates its well-known trademarks, the Respondent cannot reasonably pretend it was intending to develop a legitimate activity.

The Complainant also submits that the disputed domain name is currently resolving to an inactive page and that previous Panels decisions held that the Respondent’s absence of use of a disputed domain name is a strong indication of its lack of rights or legitimate interests.

Additionally, the Complainant indicates that another proof that the Respondent lacks rights and legitimate interests in the disputed domain name lies in the fact that the Complainant was recently successful in others UDRP proceedings involving the Respondent and domain names similar to the one presently in dispute.

Registration and use in bad faith:

According to the Complainant, it is implausible that the Respondent was unaware of it when it registered the disputed domain name notably because its trademarks significantly predate the registration date of the disputed domain name and are well known throughout the world.

The Complainant adds that another proof of bad faith registration is that the Respondent was previously involved in others UDRP proceedings initiated by the Complainant toward domain names which were very similar to the one concerned by the present dispute, and where the transfer of the disputed domain names has been ordered.

The Complainant also asserts that the Respondent has provided incorrect contact details what constitutes a breach of the registration agreement of the disputed domain name.

Besides, the Complainant contends that the disputed domain name has been used to direct Internet users to a fraudulent phishing website impersonating the Complainant and collecting the codes used by the clients of the Complainant to access to their personal area into the Complainant’s official website for banking services. The Complainant puts forward that, as a consequence, the Respondent used the disputed domain name in order to fraudulently obtain personal data and credit card information of the Complainant’s customers.

Among its numerous others arguments, the Complainant notably adds that in view of its worldwide renown and of the composition of the disputed domain name (which imitates the Complainant’s famous trademarks), no possible use in good faith of the disputed domain name is possible.

As a remedy, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, the Complainant must prove, according to paragraph 4(a) of the Policy, each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Besides, paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Annex 4 to the Complaint shows trademarks registrations for BANQUE CARREFOUR and CARREFOUR in the name of the Complainant, namely:

- Chinese trademark CARREFOUR No. 8696287 registered on November 7, 2011;

- Chinese trademark CARREFOUR No. 795806 registered on November 28, 1995 and duly renewed;

- French trademark CARREFOUR No. 1487274 registered on September 2, 1988 and duly renewed;

- French trademark BANQUE CARREFOUR No. 3585968 registered on July 2, 2008 and duly renewed;

- European Union trademark CARREFOUR No. 008779498 registered on July 13, 2010.

Thus, the Panel can conclude that the Complainant has established its trademarks rights in the CARREFOUR and BANQUE CARREFOUR denominations.

The Panel further finds that the disputed domain name <carefour-banque.com> is confusingly similar both to the BANQUE CARREFOUR and CARREFOUR trademarks.

Indeed, it is of constant practice among the UDRP panels that generic Top-Level Domains (“gTLDs”) may be ignored for the purpose of assessing the confusing similarity, because they only play a technical function.

As a consequence, the disputed domain name is extremely close to the BANQUE CARREFOUR trademark.

The differences between the disputed domain name and the BANQUE CARREFOUR trademark resulting from the presence of the hyphen, of the inversion of the “banque” and “carrefour” words and of the removing of one of the two “r” are only minor details which do not prevent the trademark from remaining clearly recognizable within the disputed domain name.

Indeed, there is a consensus view among UDRP panels that a domain name which contains a common or obvious misspelling of a trademark (such as omitting a letter) is normally found to be confusingly similar to said trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).

This is the same regarding the use of a hyphen: previous UDRP panels have already ruled that hyphenation in domain names does not prevent a finding of confusing similarity (e.g., Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768 or TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER, WIPO Case No. D2012-2001).

Besides the disputed domain name is also confusingly similar to the well-known CARREFOUR trademark.

As indicated above, the removing of the letter “r” is almost unnoticeable.

Besides, the presence of the word “banque” (which means “bank” in French) does not prevent the CARREFOUR trademark from remaining clearly recognizable in the disputed domain name.

According to a consensus view of UDRP panels, the addition of merely generic or descriptive wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview 3.0, section 1.8).

In the present case, the Panel is even of the opinion that the addition of a descriptive word referring to the Complainant’s banking activities enhances confusion.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

The Complainant claims that the Respondent is not affiliated with it in any way nor has been authorized or licensed to use and register its trademarks CARREFOUR and CARREFOUR BANQUE or to seek registration of any domain name incorporating the aforesaid trademarks.

Besides, it results from the WhoIs database that the Respondent does not appear to be commonly known by the disputed domain name.

Furthermore, the disputed domain name previously resolved to a page reproducing the page of the Complainant’s website dedicated to its banking services and through which its clients log-in to access to their personal area. It is hard to conceive that such use was intended to something else than attempting to fraudulently obtain personal data from the Complainant’s clients.

Currently, the disputed domain name is inactive.

In these circumstances, the Panel considers that the Respondent cannot assert that, before any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden now shifts to the Respondent to show that he does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

As a consequence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has satisfied the second element in 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 is using the disputed domain name in bad faith.

The elements listed in paragraph 4(a)(iii) of the Policy are only examples and therefore are not exhaustive of the situations of bad faith.

1. Registration in bad faith

As evidenced by the Complainant:

- its prior trademarks are well known (in particular, many UDRP decisions have already recognized the well-known feature and/or the fame of its trademarks, for instance: Carrefour v. Jean-Pierre Andre Preca, WIPO Case No. D2018-2857; 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. 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 disputed domain name imitates two prior trademarks of the Complainant and includes the word “banque” which directly refers to one of the Complainant’s fields of activities;

- as highlighted by the Complainant, before registering a domain name, one has to check that the disputed domain name will not infringe upon the rights of any third party. A quick trademarks search or even a simple search on a search engine would have revealed the Complainant’s marks on the Internet;

- the Respondent appears to be located in France, which is the country where the Complainant originates and has its headquarters;

- the Respondent has already been involved in others UDRP proceedings concerning the CARREFOUR and BANQUE CARREFOUR trademarks (Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS, WIPO Case No. D2018-1949 and Carrefour v. Zhuhai Yingxun Keji Limited / PAUL LOUTIN, LOUTIN SAS, WIPO Case No. D2019-0548).

- the disputed domain name redirected toward a page impersonating the Complaint’s website and displaying its logo, trademarks, name and address.

All the above elements enable the Panel to conclude that the disputed domain name has been registered in bad faith, that is to say with full knowledge of the Complainant and of its trademarks.

2. Use in bad faith

Given the fact that the disputed domain name resolved to a page reproducing the page of the Complaint’s website dedicated to its banking services and through which its clients have to log-in to access to their personal area, this situation clearly falls within the scope of paragraph 4(b)(iv) of the Policy, which states:

“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 your web site or location or of a product or service on your web site or location”.

Indeed, it is hard to conceive that the disputed domain name was used to something else than attempting to fraudulently obtain personal data from the Complainant’s clients in relation with banking services (and hence for commercial gain).

Besides, even if the disputed domain name is currently inactive, this does not prevent the Panel from a finding of bad faith under the doctrine of passive holding.

Indeed, in the present case, all the conditions for a finding of passive holding are met (see WIPO Overview 3.0, section 3.3):

- the disputed domain name includes a very well-known trademark;

- the Respondent has been remaining silent as from the beginning of this dispute and therefore has not denied the assertions made by the Complainant (while if the Respondent had legitimate purposes for registering and using the disputed domain name, he would have responded to these assertions);

- the Respondent has not only concealed its identity through a proxy service, but has also provided incomplete contact details;

- given the composition of the disputed domain name (a famous trademark plus a word describing one of the fields of activity where said trademark is used), the disputed domain name cannot be used in good faith by anybody else than the Complainant (or by someone authorized by the latter).

In addition, the Respondent has already been involved in others UDRP proceedings having concerned domain names similar to the one here at issue and which also redirected toward a page reproducing the login page to the official website of the Complainant dedicated to banking services (in order to try to fraudulently obtain personal data and credit card information from the Complainant’s customers), before being deactivated (Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS, WIPO Case No. D2018-1949 and Carrefour v. Zhuhai Yingxun Keji Limited / PAUL LOUTIN, LOUTIN SAS, WIPO Case No. D2019-0548).

As a consequence, the Respondent is engaged in a pattern of conduct of registering domain names identical or confusingly similar to the Complainant’s trademarks.

This situation also falls within the scope of paragraph 4(b)(ii) of the Policy: “[the Respondent has] registered the [disputed] domain name in order to prevent the [Complainant] from reflecting [its] mark in a corresponding domain name, [and is] engaged in a pattern of such conduct.”

Accordingly, the Panel finds evidence of registration and use in bad faith of the disputed domain name.

Taken into account all the above, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 name <carefour-banque.com> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: June 5, 2019