WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam
Case No. D2019-2895
1. The Parties
The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0155401638, Canada / Binya Rteam, France.
2. The Domain Name and Registrar
The disputed domain name <secure-passcarrefour.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 28, 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 December 3, 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 December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on January 3, 2020. 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 the French entity Carrefour, active in food retail. The Complainant operates, under the brand CARREFOUR, over 12,000 stores and e-commerce sites in more than 30 countries. Its operations started in France in the early 1960s, and to date the group employs over 370,000 people around the globe and generates sales beyond EUR 88 billion in 2017. The presence of the Complainant in France is particularly relevant. This is the home country of the Complainant, where its first store was opened. It generates 47% of its sales in this country alone.
The Complainant also operates in particular banking and financial services, including credit services offered under the brand Carrefour Pass. The Complainant indicates in particular that it “provides various facilities to customers holding the Carrefour PASS card such as payment facilities, online management and loyalty benefits. The PASS Mastercard is a credit card associated with the PASS credit that can be used at Carrefour and elsewhere”.
The Complainant relies on the following trademark registrations, over the word mark CARREFOUR and CARREFOUR PASS, as a basis for its Complaint:
International trademark CARREFOUR No. 1010661, registered on April 16, 2009, covering services in class 35;
European Union trademark CARREFOUR No. 005178371, filed on June 20, 2006, and 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, covering financial services in class 36.
The Complainant also holds the domain name <carrefourpass.com> registered on May 31, 2010, as well as many other domain names containing the element “carrefour”.
The disputed domain name was registered on August 7, 2019. Initially, the disputed domain name was resolving to the default page of the webhost, and an email server was configured on the disputed domain name. The Complainant notified its rights to the Registrar and requested that the disputed domain name be put on status “ClientHold” and deactivated. Whilst the Registrar did not respond, the Complainant did notice afterwards that the disputed domain name pointed to an inactive page, and that the email server was no longer present.
After the Complaint was filed, the Registrar notified to the Center that the disputed domain name was actually held by an individual or an entity named “Binya Rteam”, with a non-existent address.
5. Parties’ Contentions
As a preliminary remark, the Complainant indicates that the trademark CARREFOUR was considered well-known, or famous, by numerous UDRP decisions, and quotes a number of supporting precedents.
Regarding the first element of the Policy, the Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks CARREFOUR and CARREFOUR PASS. It indicates in particular that the inversion of the elements “carrefour” and “pass” in the disputed domain name does not render the signs dissimilar. And, regarding the additional word “secure” of the disputed domain name, the Complainant claims that “where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, meaningless, or other terms does not prevent a finding of confusing similarity. As the dominant feature of the domain name <secure-passcarrefour.com> is the Complainant's marks CARREFOUR and CARREFOUR PASS, the adjunction of the term “secure” is insufficient to avoid confusing similarity between the disputed domain name and Complainant’s trademarks”. It also adds that “the full inclusion of the Complainant's trademarks CARREFOUR and CARREFOUR PASS in the domain <secure-passcarrefour.com> associated to the term “secure” would suggest that the website towards which the domain name points is secure, can be trusted and is protected from hackers. The term “secure” could also be a reference to security tools or services implemented to make online banking services secure, which is a sensitive issue for both online banking services providers and users”.
Regarding the second element of the Policy, the Complainant adduces in particular that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the 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. The Complainant also adds that the disputed domain name is not being used in connection with a bona fide offering of goods and services. On the contrary, it claims that “an email server was previously configured on the disputed domain name <secure-passcarrefour.com> and thus, there was a risk that Respondent (was) engaged in a phishing scheme”.
Finally, regarding the third element of the Policy, the Complainant’s arguments make a distinction between the registration and the use of the disputed domain name. On the bad faith registration, the Complainant indicates in particular that its trademark is well-known worldwide and that the composition of the disputed domain name imitating not one but two of the Complainant’s trademarks, CARREFOUR and CARREFOUR PASS, indicates that the Respondent knew about the Complainant. In any event, any quick search online would have revealed the existence, scope and reputation of the Complainant’s rights over CARREFOUR and CARREFOUR PASS, which predate the disputed domain name for many years. On the bad faith use, the Complainant relies on the doctrine of bad faith passive holding. The circumstances that would support this claim are enumerated as follows by the Complainant: “Complainant and its trademarks have a strong reputation and are widely known throughout the world; in view of the notoriety of Complainant, no possible use in good faith is conceivable; Respondent has not provided any evidence of actual or contemplated use in good faith of the disputed domain name; Respondent has concealed its identity through a proxy service”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademark CARREFOUR PASS. It incorporates the two words “carrefour” and “pass”, and their inversion does not produce a significant impact. While the trademark as registered and used is CAREFOUR PASS, one may easily conceive references to it, by the public, as “pass carrefour”, “le pass carrefour”. The disputed domain name is also similar to the house mark CARREFOUR, as this element is still identifiable per se in the disputed domain name. As mentioned in numerous prior UDRP decisions, CARREFOUR is a well-known trademark in France and elsewhere. Therefore, any declination based on the element CARREFOUR is likely to be connected by the public to the Complainant and its activities.
The addition of the element “secure”, which is easily understood by the French public, does not alter this finding. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Besides, even if this additional word is placed in first position, it is visually separated to the remaining elements of the disputed domain name with a hyphen.
The disputed domain name is therefore confusingly similar to the trademarks of the Complainant, in accordance with the standards of the Policy.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
As indicated by the Complainant, the Respondent does not appear to be known by the disputed domain name, or to have been licensed or otherwise authorized by the Complainant to use its trademark in a domain name or otherwise.
Likewise, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Actually, this Panel rules out any possible claim of use of the disputed domain name in a generic way; rather, the addition of the element “secure” makes a clear connection with the financial services provided by the Complainant under the brand CARREFOUR PASS. As outlined by the Complainant, the resulting combination can suggest in particular that the disputed domain name offers a secured access to these financial services. This is a common reference in online banking services, with which users are familiar.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the 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 [the respondent’s] website or location.
The Panel concurs with the Complainant that the disputed domain name was registered, and is being passively used in bad faith by the Respondent.
The factors which are normally taken into account for a finding of bad faith passive holding are listed in section 3.3 of the WIPO Overview 3.0, as follows: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
All these factors are met in this case:
First, the Complainant’s trademark CARREFOUR is very well-known, as extensively proven by the Complainant and recognized in countless UDRP decisions. The Respondent, who is probably located in France, is certainly aware of the existence of this trademark, and also of the trademark CARREFOUR PASS. Actually, the addition of the element “secure” in the disputed domain name indicates that the Respondent knows that the Complainant operates financial services under the brand CARREFOUR PASS. When accessing a webpage hosted under the disputed domain name, users are likely to believe that they have accessed an official webpage of the Complainant, in a secure mode, namely probably after having provided their user codes.
Second, the Respondent has failed to file a response to the Complaint.
Third, the Respondent has taken active steps to conceal its true identity; first by using a privacy shield service, and second by providing an inexistent postal address.
Fourth, the Panel does not conceive any possible use in good faith of the disputed domain name. Much the contrary; as indicated by the Complainant, it appears that an email server was configured on the disputed domain name for some time and thus, there was a clear risk of a phishing scheme. That would be very prejudicial to the Complainant and to its clients.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.
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 <secure-passcarrefour.com> be transferred to the Complainant.
Date: January 16, 2020