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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Contact Privacy Inc. Customer 0153824515 / Milen Radumilo

Case No. D2019-2280

1. The Parties

The Complainant is Carrefour, France, represented by Dreyfus & Associés, France.

The Respondent is Contact Privacy Inc. Customer 0153824515, Canada / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <carrefoul.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 20, 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 September 20, 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 amendment to the Complaint on September 24, 2019.

The Center verified that the Complaint together with the amendment to 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 September 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2019.

The Center appointed Michael D. Cover as the sole panelist in this matter on October 18, 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.

The Respondent is Contact Privacy Inc. Customer 0153824515 / Milen Radumilo, the latter with an address in Bucharest, Romania. The Disputed Domain Name was registered on January 31, 2019, and resolves to a parking page, displaying commercial links to shops and supermarkets. The parking page also informs visitors that the Disputed Domain Name is for sale and features a link on which interested visitors can click, which further resolves to another website, where the Disputed Domain Name is offered for sale for USD 688.

The Complainant operates more than 12,000 stores and e-commerce sites in more than 30 countries. The Complainant employs more than 360,000 people worldwide and generated EUR 84.91 billion sales (including VAT) in 2018. The Complainant operates in three major markets, Europe, Latin America and Asia. Whilst based in France, the Complainant generates more than 50 per cent of its sales outside France. The group of which the Complainant is part operates several stores in Romania, the country where the Respondent is located, and also operates an online store at “www.carrefour.ro”.

Before the issue of the Complaint, the Complainant sent notifications of its rights to the registrar of the Disputed Domain Name and the relevant email service provider, requesting blocking or deactivation of the email servers connected to the Disputed Domain Name but no responses were received and no amicable settlement was found.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant states that its trademark CARREFOUR enjoys a worldwide reputation and that the Complainant owns numerous trademark registrations for CARREFOUR around the world. It sets out various of those trademark registrations in Annex 5 to the Complaint and these trademark registrations include European Union Trademark No. 005178371 CARREFOUR registered on August 8, 2007, and International Trademark No. 353849 CARREFOUR registered on February 28, 1969, and protected in a number of European countries and elsewhere.

The Complainant also states that it operates its business under various domain names, which incorporate its CARREFOUR trademark, including <carrefour.com>, <carrefour.fr> and <carrefour.ro>.

The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s trademark CARREFOUR. The Complainant notes that its trademark CARREFOUR has been considered to be “well-known” or “famous” in a number of previous UDRP decisions, including Carrefour v. Jane Casares, NA WIPO Case No. D2018-0976.

The Complainant also notes that, in many WIPO UDRP decisions, panels have decided that the incorporation of a trademark in its entirety in a disputed domain name may be sufficient to establish that the disputed domain name in question is confusingly similar to the relevant Complainant’s registered trademark.

The Complainant submits that the Disputed Domain Name is a deliberate misspelling of the Complainant’s trademark CARREFOUR and that the substitution of the letter “r” by the letter “l” does not significantly affect the appearance or the pronunciation of the Disputed Domain Name. It notes that this practice is commonly referred to as typosquatting and creates domain names which are virtually identical and/or confusingly similar to a Complainant’s trademark. The Complainant cites Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), as follows:

“A domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.”

The Complainant concludes its submissions by stating that the extension “.com” should not be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the Disputed Domain Name and that the addition of a generic Top Level Domian (gTLD), such as “.com”, is irrelevant, as it is well established that this is insufficient to avoid a finding of confusing similarity. The Complainant also submits that the Respondent, by registering the Disputed Domain Name, has created a likelihood of confusion with the Complainant’s trademark and that it is likely that the Disputed Domain Name could mislead Internet users into thinking that it is associated in some way with the Complainant.

The Complainant sums up on this point by submitting the Disputed Domain Name is confusingly similar to the trademark CARREFOUR in which the Complainant has rights and that therefore the condition of Paragraph 4(a)(i) of the Policy is fulfilled.

Rights or Legitimate Interests

The Complainant states that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use the Complainant’s CARREFOUR trademark. It notes that registration of the CARREFOUR trademark precedes the registration of the Disputed Domain Name by many years.

The Complainant goes on to state that the Respondent is not commonly known by the Disputed Domain Name and that there is no evidence in that connection. The Complainant also states 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 in accordance with paragraph 4(c)(i) of the Policy.

The Complainant continues that the Respondent has not made and is not making legitimate noncommercial or fair use of the Disputed Domain Name and has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant notes that the Disputed Domain Name resolves to a parking page, with pay per click (PPC) links to the Complainant’s field of activities. The Complainant submits that the Respondent is taking unfair advantage of the Complainant’s rights and is capitalizing on the reputation and goodwill of the Complainant’s trademark by misleadingly diverting Internet users to the Respondent’s own website. The Complainant notes that previous panels have found that the use of a disputed domain name to host a parking page with PPC links does not represent a bona fide offering of such links, where such links compete with or capitalize on the reputation of a Complainant’s trademark or otherwise mislead Internet users.

The Complainant then submits that the Respondent appears to be a cybersquatter, as he has been involved in at least seven previous UDRP proceedings filed by the Complainant and that, in these proceedings, the panels involved have ordered the transfer of the domain names in dispute and cites various WIPO UDRP Decisions. The Complainant submits that this constitutes additional proof that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. The Complainant also concludes that, given the Complainant’s goodwill and renown worldwide and the confusingly similar nature of the Disputed Domain Name, it is not possible to conceive a plausible circumstance in which the Respondent legitimately could use the Disputed Domain Name.

The Complainant accordingly submits that it is established that the Respondent has no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

The Complainant notes that bad faith can be found where the Respondent “knew or should have known” of the Complainant’s rights and nevertheless registered a domain name in which it had no rights or legitimate interest and submits that it is implausible that the Respondent was unaware of the Complainant when he registered the Disputed Domain Name.

In support of that submission, the Complainant states that it is well-known throughout the world and cites in support the material in Annexes 3 and 5 to the Complaint and that many previous panels have previously acknowledged the Complainant’s worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s rights. The Complainant continues that bad faith can be inferred in these circumstances. The Complainant also notes that its rights in the CARREFOUR trademark significantly predate the registration of the Disputed Domain Name and that a quick trademark search would have revealed to the Respondent the existence of the Complainant and its CARREFOUR trademark.

The Complainant also submits that the composition of the Disputed Domain Name, which consists of a deliberate misspelling of the Complainant’s trademark CARREFOUR, constitutes evidence of bad faith, prior panels having held that typosquatting is itself evidence of bad faith. The Complainant repeats its point about the Respondent having been involved in previous typosquatting in relation to the trademark of the Complainant.

The Complainant concludes that the Respondent has registered the Disputed Domain Name in bad faith.

With regard to use in bad faith, the Respondent submits that, by using the Disputed Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant again draws the Panel’s attention to the use of the Disputed Domain Name to direct Internet users to a webpage displaying PPC’s, which are likely to generate revenue for the Respondent.

The Complainant concludes on this point that, given the Complainant’s goodwill and renown worldwide and the confusing similarity of the Disputed Domain Name and submits that the Disputed Domain Name is used in bad faith.

Consequently, the Complainant summarises, it is established that the Respondent has both registered and is using the Disputed Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

The Remedy requested by the Complainant

The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must demonstrate that, on the balance of probabilities, the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant’s CARREFOUR trademark, in which it has rights. The Panel is satisfied that the Complainant has established registered rights in its CARREFOUR trademark. The Panel accepts that the addition of the gTLD “.com” does not affect that conclusion and that it is well-established in decisions of previous panels that this is the case. The Panel also accepts that this is an instance of typosquatting that, in accordance with section 1.9 of the WIPO Overview 3.0 cited by the Complainant, the Disputed Domain Name is and obvious or intentional misspelling of the Complainant’s well-known trademark CARREFOUR and is therefore to be considered confusingly similar.

The Panel decides that requirements of paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not been licensed by the Complainant to use the Complainant’s trademark CARREFOUR. The Panel accepts that the burden then shifts to the Respondent.

The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly known by the Disputed Domain Name nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the CARREFOUR trademark of the Complainant. The Panel accepts the evidence of the Complainant that such use as has been taking place has consisted of the Disputed Domain Name resolving to a parking page, with a link to PPC sites in the same area of business as the Complainant, and that this certainly cannot be described as legitimate noncommercial use.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith. The use of the Disputed Domain Name in connection with a parking page and the PPC links, evidences use in bad faith.

The Policy paragraph 4(b) sets out the non-limiting list of circumstances which shall be evidence of the registration and use of a domain name in bad faith. In this case, it is a reasonable inference that the Complainant’s trademark CARREFOUR, in use for many years, had become well-known and that the Respondent was aware of the Complainant’s rights when registering the Disputed Domain Name and this, combined with the typosquatting already referred to, constitutes registration in bad faith.

The Panel accordingly finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 <carrefoul.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: October 31, 2019

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