WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Domain Admin, Whoisprotection.cc / Malik Ishtiyaq Khan, Etihad Carrefour
Case No. D2020-1008
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Malik Ishtiyaq Khan, Etihad Carrefour, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <etihadcarrefour.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2020. On April 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 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 27, 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 30, 2020.
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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2020.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 19, 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 a company registered in France. It is an operator of supermarkets, hypermarkets and other retail stores selling food and non-food products.
The Complainant is the owner of trademark registrations for the word mark CARREFOUR, which include, by way of example, the following:
- International trademark number 351147 for the word mark CARREFOUR, registered on October 2, 1968 for goods and services in numerous classes;
- European Union Trade Mark number 008779498 for the word mark CARREFOUR, registered on July 13, 2010 for services in Class 35, including the retail sale of goods in a supermarket or hypermarket;
The Complainant is also the owner of figurative trademark registrations, including European Union Trade Mark number 008776817 registered on June 15, 2010, in Class 35 (“the Figurative Mark”). The Figurative mark comprises the word “Carrefour” in a distinctive red typeface together with the word “market” and a device in orange and red colours.
The disputed domain name was registered on March 3, 2020.
The Complainant exhibits evidence that the disputed domain name has resolved to a website at “www.etihadcarrefour.com” which offered groceries, appliances, clothing, jewellery and other products for sale online. The website featured the word “Carrefour” in a red typeface similar to that used by the Complainant together with a device including red and orange elements.
5. Parties’ Contentions
The Complainant states that it is a worldwide leader in the provision of supermarket and related services, having operated under the CARREFOUR name and mark since 1968. It states that it operates over 12,000 stores in over 30 countries in Europe, Latin America and Asia and employs over 340,000 individuals. The Complainant states that it has 1.3 million visitors to its establishments each day and that its turnover in 2018 was EUR 76 billion.
The Complainant refers to its longstanding trademark registrations for the mark CARREFOUR and to its operation of various domain names including the term CARREFOUR, such as <carrefour.com>, <carrefour.eu>, and <carrefour.asia>. It submits evidence of substantial media coverage of its business and of its brand recognition and industry awards. The Complainant also refers to its social media presence and claims 21 million fans on various platforms including 11 million Facebook “likes”.
The Complainant submits that, as a result of these matters, the name CARREFOUR is strongly associated with the Complainant and gives rise to a valuable commercial reputation both online and offline.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name <etihadcarrefour.com> wholly incorporates the whole of its trademark CARREFOUR, which is sufficient of itself to give rise to confusing similarity. The Complainant contends that the additional term, “etihad”, is an independent trademark which belongs to a third party and that the inclusion of this term does not eliminate the visual similarity between the disputed domain name and the Complainant’s trademark or detract from its confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that it has never authorized the Respondent to use its CARREFOUR mark, that the Respondent has not commonly been known by a name corresponding to the disputed domain name and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that, insofar as the Respondent is operating an online store, it is doing so by way of impersonation of the Complainant’s CARREFOUR trademark and business, which cannot amount to a bona fide offering.
The Complainant submits that the disputed domain name was registered and has been used in bad faith. It states that its distinctive CARREFOUR mark is widely known to millions of people and that it is inconceivable that the Respondent was unaware of that trademark when it registered the disputed domain name.
The Complainant further submits that the Respondent is using the disputed domain name for the purpose of a website that displays the CARREFOUR trademark and the Figurative Mark and offers similar goods to the Complainant in an obvious attempt to deceive online visitors. Specifically, it submits that the Respondent is using the disputed domain name to attract visitors to its website for commercial purposes by creating a likelihood of confusion with the Complainant’s CARREFOUR trademark.
The Complainant also alleges that the Respondent operates a mail server from the disputed domain name and that it collects financial information on its website, which it contends gives rise to the possibility of fraud.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 established to the satisfaction of the Panel that it has registered trademark rights in the distinctive name and mark CARREFOUR. The disputed domain name <etihadcarrefour.com> comprises the whole of the Complainant’s mark CARREFOUR preceded by the tern “etihad”, which the Panel finds to be a trademark owned by a third party. The Panel finds that the addition of the term “etihad” to the Complainant’s trademark does not prevent the disputed domain name from being confusingly similar to that trademark and concludes, therefore, that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website, which impersonates the Complainant, which cannot give rise to rights or legitimate interests. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the evidence of the Complainant that its trademark CARREFOUR is widely known in many countries throughout the world in connection with supermarket and related services. The Panel further finds that the Respondent has used the disputed domain name for the purpose of a website offering a variety of goods for sale, which prominently includes the mark CARREFOUR and a device in a manner, which closely resembles the Complainant’s Figurative Mark. In these circumstances, the Panel clearly infers that the Respondent was aware of the Complainant and its trademarks at the time it registered the disputed domain name and did so with the intention of impersonating the Complainant and taking unfair advantage of its commercial goodwill.
The Panel further finds that, by using the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on that website (paragraph 4(b)(iv) of the Policy).
The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.
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, <etihadcarrefour.com>, be transferred to the Complainant. Such transfer is ordered without prejudice to any rights of the owner of the trademark ETIHAD.
Steven A. Maier
Date: June 30, 2020