WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Andre Machado
Case No. D2020-0922
1. The Parties
The Complainant is Carrefour, France, represented by IP Twins S.A.S., France.
The Respondent is Andre Machado, Brazil, self-represented.
2. The Domain Name and Registrar
The disputed domain name <carrefour.cam> (the “Disputed Domain Name”) is registered with AC Webconnecting N.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 16, 2020, 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 16, 2020, 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, 2020.
On April 16, 2020, the Center received an email communication from the Respondent, proposing to sell the Disputed Domain Name for USD 2,000. On the same day, the Center sent a communication regarding possible settlement to the Parties. The Complainant replied, later on April 16, 2020, that it did not wish to settle.
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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2020. The Response was filed with the Center on May 18, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on May 27, 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.
On May 28, 2020, the Respondent sent an informal email communication to the Center. On June 3, 2020, the Center replied to this communication, under the Panel’s instruction. No further communications from the Parties were received by the date of this decision.
4. Factual Background
The Complainant is a Paris Stock Exchange listed company founded in 1959 that operates a business providing supermarkets, retail stores, and convenience stores in 30 countries with sales of EUR 76 billion in 2018. The Complainant holds registrations for the trademark CARREFOUR and variations of it in numerous jurisdictions, including, for example, International registration No. 351147, registered on October 2, 1968.
The Complainant owns numerous domain names that comprise of, or contain, the trademark CARREFOUR, including the domain name <carrefour.com>, which was registered on October 24, 1995.
The Disputed Domain Name was registered on March 2, 2020, and the Respondent claims to have acquired the Disputed Domain Name on April 6, 2020. The Disputed Domain Name resolves to a pay-per-click (“PPC”) parking page that includes links to other domain names offered for sale.
5. Parties’ Contentions
The Complainant cites its International trademark registrations including No. 351147 registered in 1968 and numerous other registrations around the world, for the mark CARREFOUR as prima facie evidence of ownership.
The Complainant submits that the mark CARREFOUR is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the CARREFOUR trademark and that the similarity is not removed by the addition of the generic Top-Level Domain (“gTLD”) “.cam”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a parking page with PPC links related to “a page indicating that the domain name had been offer(ed) to rent, from which the Respondent is making commercial gain”, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks. There is also evidence that on April 16, 2020, the Respondent offered to sell the Disputed Domain Name to the Complainant for USD 2,000.
The Respondent filed a Response on May 18, 2020, to the Complainants’ contentions on April 28, 2020. Its substantive allegations, set out here in full, allege that: ““.cam” TLD was launched in December 14, 2016 and since then has been available to anyone register [“.cam” domains], like, for example, [<carrefour.cam>]. It’s worth noting, I registered [<carrefour.cam>] just on April , 2020, more than three years after its launch. Considering that [<carrefour.cam>] is so important to the Carrrefour Company, I wonder why the Complainant didn’t register it during the four years after its launch, especially because the register price is so low, USD 1.49. It attracts my attention that a multinational company like the complainant didn’t know about “.cam” TLD, mainly because they have I.T. and Marketing areas with plenty of resources to support them. Consequently, someone registered the domain and now the complainant is taking an action.
It is important to state that I didn’t use the domain to any illegal activity that could harm the image or business of the Complainant and I’m not charging an abusive Consulting fee to transfer the domain. On the contrary, I alerted the Complainant to pay attention to a possible problem in the future and I’m offering an opportunity to solve that easily. Finally, I would like to mention the importance that all companies and brand owners take actions and register their brands on the Internet.”
Under section IV. Consent to Remedy of its Response, the Respondent provides: “I maintain my position of charging a Consulting and transfer fee of USD 2.000 and remedy this situation fast.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark CARREFOUR in numerous jurisdictions, pursuant to International Trademark No. 351147 registered in 1968. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). This Panel is so satisfied.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the CARREFOUR trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark CARREFOUR; (b) followed by the gTLD “.cam”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “carrefour”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033). In this case, the registered trade mark is identical to the second-level portion of the Disputed Domain Name.
The Respondent’s Response does not deny that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a PPC landing web page containing links advertising a number of domain names offered for sale, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. Moreover, it is the consensus view of previous UDRP panels that a domain name identical to a complainant’s trademark carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
In his Response, the Respondent offers the position that ““.cam” TLD was launched in December 14, 2016 and since then has been available to anyone register “.cam” domains, like, for example, [<carrefour.cam>]. It’s worth noting, I registered [<carrefour.cam>] just on April , 2020, more than three years after its launch. Considering that [<carrefour.cam>] is so important to the Carrrefour Company, I wonder why the Complainant didn’t register it during the four years after its launch”. The Respondent provides no explanation as to why he chose the Complainant’s famous trademark as his domain name.
This Panel finds, in line with numerous previous UDRP decisions, that the use of the Disputed Domain Name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the substantial reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.10).
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark CARREFOUR is such a famous mark for supermarkets and retail services that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Carrefour v. Richard Mandanice, WIPO Case No. D2002-0623 (“The Complainant is the owner of at least two well-known CARREFOUR trademarks”); Carrefour S.A. v. Damian Macafee, WIPO Case No. D2002-1060, (“the trademark CARREFOUR is internationally well-known”); Carrefour v. Iwama, WIPO Case No. D2007-1522 (“the Complainant’s well-known Trademark”); Carrefour, S.A., Viajes Carrefour S.L. v. Pablo Iglesias Junco, WIPO Case No. D2008-1040(“the Panel finds that the trademark CARREFOUR is well-known”)).
Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 52 years after the Complainant established registered trademark rights in the CARREFOUR mark.
This Panel accepts, as the basis of a further finding of bad faith, the Respondent’s own evidence, effectively an admission unhelpful to its own defense, that “the register price is so low, USD 1.49” and the Respondent confirmed in his Response: “I maintain my position of charging a Consulting and transfer fee of USD 2,000 and remedy this situation fast”. Based on the Respondent’s own evidence, the Panel is satisfied that the Respondent’s primary purpose in acquiring the Disputed Domain Name was to dispose of it to the Complainant for valuable consideration in excess of directly related expenses (e.g., The Law Society v. M.A. Sears, WIPO Case No. D2000-0342; Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen, WIPO Case No. D2015-2353; SCA Capital NV, SCA Hygiene Products AB v. Registration Private, Domains By Proxy, LLC / Diarmuid Hart, Selco, WIPO Case No. D2018-0056).
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s CARREFOUR supermarkets and retail business. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company, WIPO Case No. D2016-0036; WIPO Overview 3.0, section 3.5.
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s well-known trademark CARREFOUR and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of selling it to the Complainant for a sum in excess of his out-of-pocket expenses and also to capitalize on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain. The Panel finds that the Respondent could not, under any fair interpretation of the reasonably available facts, succeed in defending the Complaint.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <carrefour.cam> be transferred to the Complainant.
Date: June 9, 2020