WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Key-Systems, LLC / Customer Support, Register NV/SA Technical Support, Register NV/SA Accounting Department, Register NV/SA / Lorenzo Lotarp
Case No. D2019-2310
1. The Parties
Complainant is Carrefour, France, represented by Dreyfus & associés, France.
Respondent is Key-Systems, LLC / Customer Support, Register NV/SA Technical Support, Register NV/SA Accounting Department, Register NV/SA / Lorenzo Lotarp, France.
2. The Domain Name and Registrar
The disputed domain name <carrefourpass.management> is registered with Key-Systems GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 Complaint. The Center sent an email communication to the Complainant on September 25, 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 September 27, 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2019.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 24, 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, Carrefour, was founded in 1958. It has become a global leader in food retail with its headquarters in France. It has acquired considerable goodwill and renown worldwide, in connection with a wide range of services, including supermarkets and banking and insurance services.
Carrefour operates more than 12,000 stores and e-commerce sites in more than 30 countries, employs more than 360 000 people worldwide and generated EUR 84.91 billion sales incl. VAT under its banners in 2018.
Every day, Carrefour welcomes around 13 million customers around the world. It was a pioneer in countries such as Brazil in 1975 and China in 1995.
The Group operates in three major markets: Europe, Latin America and Asia.
As a banking subsidiary of the Carrefour group, Carrefour Banque has been offering a wide range of accessible and efficient products for more than 30 years, adapted to the needs of customers and consumers: PASS MasterCard, created in 2009, current account, revolving credit, personal loan, credit redemption, savings, auto and home insurance, complementary health, etc.
Complainant owns CARREFOUR and CARREFOUR PASS trademark registrations around the world.
Complainant, the trade registry of which is produced is in particular the owner of the following Trademark Registrations:
- European Union trademark CARREFOUR No. 008779498, registered on July 13, 2010, and covering services in class 35;
- European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed and covering services in classes 9, 35 and 38;
- International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly renewed, designating inter alia China; Switzerland; Italy; Hungary and Portugal covering services in class 36.
Complainant explains that it operates, among others, domain names reflecting its trademarks in order to promote its services:
- <carrefour.com> registered on October 25, 1995;
- <carrefour.fr> registered on June 23, 2005;
- <carrefourpass.com> registered on May 31, 2010.
The disputed domain name <carrefourpass.management> is confusingly similar to Complainant’s trademark CARREFOUR and CARREFOUR PASS.
The disputed domain name was created on June 25, 2018, and was resolving towards a default page of the webhost, whereas an email server was initially configured.
Before starting the present proceeding, Complainant made some efforts to resolve this matter amicably. On July 5, 2018, Complainant sent a cease-and-desist to the registrant through the registrar via email, asserting its trademark rights. The cease-and-desist letter requested the registrar to reveal the identity as well as the contact details of the registrant of the disputed domain name <carrefourpass.management>, and to transfer said domain name to Complainant, free of charge.
On July 9, the registrar replied to Complainant indicating that the reseller of the domain name (Register NV) had forwarded our request to the registrant of the disputed domain name. In parallel, on July 18, 2018, Complainant sent a notification to the email service provider (Combell group) to request the deactivation of the email server. After having sent these notifications, Complainant noticed that the domain name started resolving towards an inactive page, and that the email server had been deactivated.
Also, the email server which was previously configured on the disputed domain name has been deactivated. However, the domain name has not been put on “ClientHold” as requested by Complainant in its notification.
After filing the Complaint, Complainant learnt that the registrant is Lorenzo Lotarp, who is domiciled in Paris.
5. Parties’ Contentions
Complainant submits that its trademarks CARREFOUR and CARREFOUR PASS enjoy a worldwide reputation.
Identical or confusingly similar
The disputed domain name <carrefourpass.management> is confusingly similar to Complainant’s trademark CARREFOUR and CARREFOUR PASS.
Indeed, the disputed domain name reproduces Complainant’s trademarks CARREFOUR and CARREFOUR PASS in their entirety.
Complainant’s trademark CARREFOUR has been considered to be well-known or famous by numerous previous UDRP panels (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; Carrefour v. Karin Krueger WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre WIPO Case No. D2011-2248; Carrefour v. groupe Carrefour WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois WIPO Case No. D2007-0067).
In many UDRP WIPO decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain name is identical or confusingly similar to Complainant’s registered trademark (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin WIPO Case No. D2010-1059; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc. WIPO Case No. D2000-0113; and RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin WIPO Case No. D2010-1059).
Furthermore, the trademark is associated with the new gTLD “.management”. In recent cases, panels found that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.” (Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck WIPO Case No. D2014-0206; Hultafors Group AB v. my domain limited WIPO Case No. D2014-0597). In the present case, the confusing similarity between Complainant’s trademarks CARREFOUR and CARREFOUR PASS and the disputed domain name <carrefourpass.management> is even heightened by including the new gTLD “.management” in the assessment. Indeed, the new gTLD “.management” is directly and closely associated to Complainant’s trademarks, and Internet users may therefore wrongly believe that the disputed domain name is associated with Complainant’s company CARREFOUR, and that they will be directed to a website offering Complainant’s services.
Complainant further contends that the extension “.management” is not to be taken into consideration when examining the identity or similarity between Complainant’s trademarks and the disputed domain name.
For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the trademarks CARREFOUR and CARREFOUR PASS in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.
Absence of right or legitimate interest
Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks.
Furthermore, Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the CARREFOUR and CARREFOUR PASS trademarks precede the registration of the disputed domain name for years.
Respondent is not commonly known by the disputed domain name or the name CARREFOUR or CARREFOUR PASS, in accordance with paragraph 4(c)(ii) of the Policy.
There is simply no evidence that Respondent may be commonly known by the names CARREFOUR or CARREFOUR PASS.
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. As described above, the disputed domain name resolves to an inactive webpage and, to the best of Complainant’s knowledge, it has never been used for any legitimate purpose.
The domain name <carrefourpass.management> is so confusingly similar to Complainant’s CARREFOUR and CARREFOUR PASS trademarks that Respondent cannot reasonably pretend it had the intent to develop a legitimate activity through the disputed domain name.
Furthermore, panels found that, in the absence of any license or permission from Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master WIPO Case No. D2010-0138).
Neither can Respondent assert that he has made, or is currently 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, in accordance with paragraph 4(c)(iii) of the Policy.
Use of Complainant’s reputation and impersonation of Complainant’s trademarks for attracting internet users to a website unrelated to Complainant cannot be deemed as legitimate activity and bona fide offering of goods or services.
Furthermore, an email server was initially configured on the disputed domain name <carrefourpass.management> and thus there might be a risk that Respondent was engaged in a phishing scheme (Annex 1 to the Complaint). Therefore, the disputed domain name has not been used and is not used in any type of legitimate business or services. Finally, given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
For all of the above-cited reasons, it is undoubtedly established that Respondent has no rights or legitimate interests in respect to the disputed domain name in dispute under paragraph 4(a)(ii) of the Policy.
Bad faith registration and use
Bad faith registration
Bad faith can be found where Respondent knew or should have known of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian WIPO Case No. D2009-0113). It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name.
Complainant’s CARREFOUR trademark enjoys considerable goodwill and renown throughout the world. In this regard, several UDRP panels have previously acknowledged its worldwide reputation, making it unlikely that Respondent was not aware of Complainant’s proprietary rights in the said trademark.
Secondly, the composition of the disputed domain name <carrefourpass.management>, which reproduces not one, but two of Complainant’s trademarks, CARREFOUR and CARREFOUR PASS, which are related to Complainant’s activities (i.e. the banking card offered by Carrefour Banque), strongly suggest that Respondent had Complainant’s trademark and activities in mind when registering the disputed domain name.
Bad faith can also be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of Complainant, bad faith can be inferred.
Thirdly, Complainant’s CARREFOUR and CARREFOUR PASS trademark registrations significantly predate the registration date of the disputed domain name, which was registered in 2018. In this regard, previous panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (ALSTOM v. Domain Investments LLC WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com / Michele Dinoia WIPO Case No. D2007-0077).
Under paragraph 2 of the Policy, it is established that, when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was the registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain names (Compagnie Gervais Danone contre Gueorgui 14 Dimitrov / NETART WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer WIPO Case No. D2000-1397).
A quick CARREFOUR and CARREFOUR PASS trademark search would have revealed to Respondent the existence of Complainant and its trademarks. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling WIPO Case No. D2008-0226). Supposing that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via Google or any other search engine using the keywords CARREFOUR and CARREFOUR PASS demonstrates that all first results relate to Complainant’s products or news.
In addition, as will be discussed below, Respondent does not make any use of the disputed domain name presently since the domain name is inactive. This demonstrates a lack of legitimate interests regarding said disputed domain name and suggests evident bad faith behind the registration. Finally, Complainant submits that given Complainant’s goodwill and renown, and the nature of the disputed domain name, Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of Complainant's goodwill and reputation, which clearly constitutes bad faith. Hence, in view of the above-mentioned circumstances, it is inconceivable that Respondent did not have Complainant’s trademarks in mind at the time of registration of the disputed domain name.
Consequently, it is established that Respondent registered the disputed domain name in bad faith.
Bad faith use
The disputed domain name <carrefourpass.management> is currently inactive. Passive holding does not preclude a finding of bad faith: “A principle widely adopted by panels since shortly after the inception of the UDRP has been to examine all the surrounding circumstances in which a disputed domain name may appear to be, or is claimed to be, held passively without any evident usage or purpose” (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia WIPO Case No. D2011-0421).
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the panel must give close attention to all the circumstances of Respondent’s behaviour (Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003).
In Telstra Corporation Limited v. Nuclear Marshmallows, supra, the panel concluded that Respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by Respondent because:
(1) Complainant’s trademark had a strong reputation and was widely known;
(2) Respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name;
(3) Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and;
(4) Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
Finally, it is likely that Respondent registered the domain name to prevent Complainant from using their trademarks in the disputed domain name. According to former panel, this type of conduct constitutes evidence of Respondent’s bad faith (L’oreal v. Chenxiansheng WIPO Case No. D2009-0242). This type of behavior shows that Respondent is attempting to take undue advantage from the registration of the disputed domain name which is confusingly similar in all aspects with Complainant.
Such a use of the disputed domain name might be extremely hazardous for consumers as well as for Complainant’s business and reputation. Accordingly, adequate measures should be taken to prevent further fraudulent attempts from Respondent through the use of the disputed domain name. The clear inference to be drawn from Respondent’s operations is that he is trying to benefit from the fame of Complainant’s marks.
It is very likely that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on, or to otherwise take advantage of Complainant’s trademark rights, by creating initial interest confusion. This behavior is likely to mislead the Internet users to link the disputed domain name with Complainant.
An additional strong indication of bad faith is the fact that an email server had been originally configured on the disputed domain name and thus there was a risk that Respondent intended to engage, or was already engaged, in a phishing scheme. Indeed, the use of an email address with the domain name <carrefourpass.management> presents a significant risk that Respondent could send phishing emails to Complainant’s customers holding the Carrefour PASS card, in order to obtain their personal and financial information.
Such risk has been recognized by prior UDRP panels as an indication of bad faith (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj WIPO Case No. D2017-1225).
Finally, given Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name which is confusingly similar to Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
All aforementioned circumstances confirm that the disputed domain name is used in bad faith. Consequently, it is established that Respondent both registered and used the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has submitted evidence of its prior registered CARREFOUR and CARREFOUR PASS trademarks in France, in the European Union and as an international registration.
The disputed domain name <carrefourpass.management> is composed with the CARREFOUR and CARREFOUR PASS trademarks.
The extension “.management”, which has a mere technical function.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s CARREFOUR and CARREFOUR PASS trademarks.
The condition of paragraph 4(a)(i) of the Policy has therefore been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, respondent’s use of, or 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) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is 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 mark at issue.
Respondent did not respond to the Complaint. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name <carrefourpass.management>.
Respondent is domiciled in France, where Complainant is also domiciled and has its headquarters.
It is not known under the disputed domain name and has not been licensed or authorized to use the CARREFOUR and CARREFOUR PASS trademarks or to register the disputed domain name <carrefourpass.management>.
There is no indication that Respondent is using, or intending to use, the disputed domain name, in a legitimate, non-commercial or fair use manner.
In the circumstances of this case, the Panel finds that Complainants has established a prima facie case of Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which Respondent has not rebutted. The conditions of paragraph 4(a)(ii) of the Policy have therefore been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that respondent has registered or respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on respondent’s website or location.
Given the well-known character of the CARREFOUR trademark on a worldwide basis, Respondent, who is domiciled in France, was well aware the Complainant’s trademarks when it registered the disputed domain name. The use of the extension “.management” increases the likelihood of confusion in this case.
Therefore, the Panel finds that the disputed domain name was registered in bad faith.
With regard to the bad faith use, the fact that the disputed domain name is not used actively does not prevent a finding of bad faith.
Further more, the initial configuration of an MX server on the disputed domain name proves that Respondent intended to create email addresses ”[... ]@carrefourpass.management” and use them.
There is a consensus among UDRP panelists that a panel has to look at the totality of the circumstances of the case to determine whether Respondent acted in bad faith.
Factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) respondent’s concealing its identity or use of false contact details and;
(iv) the implausibility of any good faith use to which the domain name may be put.
Complainant satisfies all these requirements.
For all the above reasons, the Panel is of the opinion that the circumstances surrounding the registration and use of disputed domain name satisfy the requirement of paragraph (4)(a)(iii) and that the disputed domain name is registered and is being used in bad faith by Respondent.
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 <carrefourpass.management> be transferred to Complainant.
Date: November 19, 2019