WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Mahmoud Gamal Zaher, NetaqHost.com
Case No. D2020-1063
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Mahmoud Gamal Zaher, NetaqHost.com, Egypt.
2. The Domain Names and Registrar
The disputed domain names <carrefouregypt.shop> and <carrefoure.shop> (the “Domain Names”) are registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2020. On May 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 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 May 5, 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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2020.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 4, 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 French multinational company, which specializes in retail services. In addition, the Complainant offers travel, banking, ticketing and other services. The Complainant is the registered owner of several hundred CARREFOUR trademarks, which include:
- the International Registration No. 563304, registered on November 6, 1990;
- the International Registration No. 777569, registered on November 16, 2001;
- the International Registration No. 1010661, registered on April 16, 2009.
The Domain Names were registered on March 18, 2020. The Domain Names do not resolve to any active websites.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s CARREFOUR trademark because the Domain Names incorporate the Complainant’s trademark in its entirety. The Complainant argues that the addition of the geographical term “egypt” into the Domain Name <carrefouregypt.shop> would not prevent finding of confusing similarity. Nor would addition of the letter “e” in the Domain Name <carrefoure.shop> detract from confusing similarity. The Complainant submits that inclusion of the generic Top-Level Domain (“gTLD”) “.shop” into the Domain Names also does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark because the gTLD is the standard registration requirement and should be disregarded as such.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Names because the Respondent has no trademark rights in the Domain Names. The Complainant contends that the Respondent is not commonly known by the Domain Names. The Complainant asserts that the Respondent is using the Domain Names without a license or authorization from the Complainant. The Complainant asserts that the Domain Names are not used in connection with bona fide offering of goods or services, because the Domain Names do not resolve to active websites.
The Complainant alleges that the Domain Names were registered and are being used in bad faith. The Complainant contends that the Respondent registered the Domain Names with the knowledge of the Complainant’s existence and its trademarks because the Complainant’s CARREFOUR trademark is well‑known. The Complainant asserts that it has been using the CARREFOUR trademark in Egypt, the country where the Respondent is located, since 2011 and owns trademark registrations for CARREFOUR trademarks in Egypt. The Complainant argues that the Respondent had the Complainant’s name and trademark in mind when registering the Domain Names. The Complainant contends that the Respondent acquired the Domain Names to prevent the Complainant from reflecting its trademarks in the corresponding domain names. The Complainant contends that passive holding of the Domain Names does not prevent a finding of confusing similarity.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to each of the Domain Names:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The submitted evidence shows that the Complainant owns a trademark registration for the CARREFOUR trademarks. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
The Domain Name <carrefouregypt.shop> consists of the Complainant’s CARREFOUR trademark, the geographical term “egypt”, and the gTLD “.shop”. The Domain Name <carrefoure.shop> consists of the Complainant’s CARREFOUR trademark, letter “e”, and the gTLD “.shop”. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”1 It is well-established, that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2
Because the Complainant’s CARREFOUR trademark is recognizable within the Domain Names, neither the inclusion of the geographic term “Egypt”, not the addition of the letter “e” negates confusing similarity between the Domain Names and the Complainant’s trademark. The gTLD “.shop” should be disregarded from the assessment of confusing similarity. Therefore, the Domain Names are confusingly similar to the Complainant’s CARREFOUR trademark.
The Complainant has satisfied the first element of the UDRP.
B. Rights or Legitimate Interests
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
(i) before any notice of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the 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.
To prove the second UDRP element, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Names. The evidence on file shows that the Respondent has not been commonly known by the Domain Names. The Respondent has not had a permission or authorization from the Complainant to use the Complainant’s trademark in the Domain Names.
Nor has the Respondent used the Domain Names in connection with a bona fide offering of goods or services. See, e.g., Bayerische Motoren Werke AG v. David Weiss, Weiss Ent, WIPO Case No. D2017‑2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”).
Because the Complainant has made out the prima facie case, the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Names, has shifted to the Respondent. The Respondent has failed to present any rebutting evidence.
The Panel concludes that the Complainant is deemed to have satisfied the second element of the UDRP.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Names were registered and are being used in bad faith.
Paragraph 4(b) of the UDRP provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the 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) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
It is well-established that non-use of a domain name would not prevent a finding of bad faith under certain circumstances.3 The following circumstances have been considered relevant in applying the passive holding doctrine include, inter alia:
(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; and
(iii) the implausibility of any good faith use to which the domain name may be put.
All of those circumstances are present in this case. The Complainant’s mark is distinctive and well-known. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good faith use of the Domain Names. In the Panel’s view, any good faith use of the Domain Names is implausible.
The Complainant contends that the Respondent registered the Domain Names to prevent the Complainant from reflecting its trademarks in the corresponding Domain Names. While it is difficult to predict how the Respondent planned on using the Domain Names, the Panel find it likely that the Respondent’s intention was to use the Domain Names to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or to use them for commercial gain by creating a likelihood of confusion with the Complainant’s mark (paragraph 4(b)(iv) of the Policy).
In view of the above, the Panels finds that the Domain Names were registered and are being used in bad faith. The Complainant satisfied the third element of the UDRP.
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 Domain Names <carrefouregypt.shop˃ and ˂carrefoure.shop> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: June 16, 2020
1 Section 1.8., WIPO Overview 3.0.