WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Gerrad Michelle
Case No. D2020-1164
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Gerrad Michelle, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <carefour-fr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 May 13, 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 14, 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 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2020.
The Center appointed Theda König Horowicz as the sole panelist in this matter on June 23, 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 one of the worldwide leaders in retail. It is known for its hypermarkets which bear the name “Carrefour” which are operated in France and in many other countries. The Complainant additionally offers travel, banking, insurance and ticketing services.
The Complainant has been the owner since decades of numerous trademark registrations worldwide for its CARREFOUR trademark, including:
- International trademark No. 351147, registered on October 2, 1968, in classes 1 to 34; and,
- International trademark No. 353849, registered on February 28, 1969, in classes 35 to 42.
The trademark CARREFOUR has been recognized as a well-known trademark by several UDRP decisions, in particular, Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895 and Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610.
The Complainant is also the owner of many domain names incorporating its well-known CARREFOUR trademark, including <carrefour.com> which was has been registered by the Complainant since 1995.
The Complainant’s trademark has been widely used since decades for its hypermarkets and on the Internet. As a matter of fact, the Complainant operates a Facebook page.
The disputed domain name was registered on April 6, 2020. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Firstly, the Complainant invokes being the owner of many trademark registrations worldwide for its CARREFOUR brand which is used for retail services, more specifically hypermarkets.
The Complainant submits that the disputed domain name is confusingly similar to its earlier trademark registrations. Its trademark CARREFOUR is contained in its entirety in the disputed domain name and is followed by the term “fr” designating France. The addition of a generic term to a well-known trademark does not diminish the likelihood of confusion. Furthermore, the addition of the term “fr” reinforces the risk of confusion since the average Internet user might believe that the disputed domain name originates from the Complainant whose headquarters are based in France.
In this frame, the Complainant underlines that panels in several UDRP decisions 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 the Complainant’s trademark.
Based on the above, the Complainant concludes that the disputed domain name is identical or confusingly similar to the Complainant’s earlier trademarks.
Secondly, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons:
- according to searches made by the Complainant, the Respondent does not own trademarks bearing the term “Carrefour”;
- the Complainant has found no evidence that the Respondent would be known by the disputed domain name, which was registered only a few weeks before the filing of the present Complaint;
- the Complainant did not grant a trademark license to the Respondent or authorize him by any other mean to use its protected trademark for the disputed domain name; and
- the Respondent has not, before the filing of the Complaint, used or prepared to use the disputed domain name in relation to a bona fide offering of goods or services, on the contrary, the disputed domain name does not resolve to an active website.
Thirdly, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
According to the Complainant, the Respondent could not ignore the Complainant’s earlier rights in the well-known trademark CARREFOUR, well-known character which has been recognized by many UDRP panels for years, for example Carrefour v. rabie nolife, WIPO Case No. D2019-0673, Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248, and Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067. The choice to register the disputed domain name with the Complainant’s trademark was thus not accidental. In any event, a simple search by the Respondent on the Internet would have shown him that the trademark CARREFOUR is protected.
Furthermore, the Complainant alleges that the Respondent most likely chose the disputed domain name because of its confusing similarity with the Complainant’s trademark in order to reach Internet users searching for the Complainant’s services and products.
The Complainant also underlines that its well-known trademark significantly predates the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(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 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 showed that it has trademark rights in CARREFOUR through several international registrations designating many countries notably within the European Union. Based on the case file, the Panel finds that said trademark, which is widely used in many countries for hypermarkets and other services, is a well-known trademark. The Complainant has provided sufficient evidence in this regard.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name comprises a misspelling of the Complainant’s well-known trademark, with the omission of one “r”. Such typo does not prevent the Complainant’s trademark from being recognizable in the disputed domain name, and as such confusingly similar to the Complainant’s trademark. See WIPO Overview 3.0, section 1.9. The mere addition in the disputed domain name of the term “fr”, which refers to France, does not prevent a finding of confusing similarity with the Complainant’s trademark.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Complainant makes several statements showing that it never allowed the Respondent to use the trademark CARREFOUR by any means whatsoever and that the Respondent would not have any rights in the name CARREFOUR or would be known by it.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
The Respondent has chosen not to reply. The Panel also notes that the disputed domain name is inactive.
No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name.
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has shown that its CARREFOUR trademark is registered and is widely used worldwide by the Complainant for retail, hypermarkets, and other services. As stated by several panels in past UDRP decisions, CARREFOUR can be considered as a well-known trademark.
Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2).
The disputed domain name is inactive which is an indication of passive holding. The circumstances of this case, including the reputation of the Complainant’s trademark and implausibility of any good faith use of the disputed domain name, support a finding that the passive holding of the disputed domain name is in bad faith. See WIPO Overview 3.0, section 3.3.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.
In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service linked with the fact that the Respondent has used false or incomplete contact details to register the disputed domain name, in the context of this case, is an indication that the Respondent wanted to hide the identity and use the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6).
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under 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 <carefour-fr.com> be transferred to the Complainant.
Theda König Horowicz
Date: July 7, 2020