WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Jean Jacques Gauthier (JACQUESG18826)
Case No. D2020-1387
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is Jean Jacques Gauthier (JACQUESG18826), Canada.
2. The Domain Name and Registrar
The disputed domain names <carrefour-shopping.com> and <carrefourshopping.com> are registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint on the disputed domain name <carrefour-shopping.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <carrefour‑shopping.com>. On June 2, 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 June 8, 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 June 11, 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 June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent contacted by email the Center on July 3, 4, 7, and 10, 2020, sending on July 31, 2020 the translation in English of the last of these emails, but did not submit any formal Response.
On July 7, 2020 the Center received a request from the Complainant to add to the Complaint one more disputed domain name, <carrefourshopping.com>. The Center notified the Commencement of Panel Appointment on July 14, 2020.
The Center appointed Edoardo Fano as the sole panelist in this matter on July 21, 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.
Following the Complainant’s request of July 7, 2020 to add the domain name <carrefourshopping.com> (“Additional Domain Name”) to the proceeding, on July 22, 2020 the Panel informed the Center that he would consider the Complainant’s request to add the Additional Domain Name to the present proceeding and requested the Center to obtain Registrar verification for the Additional Domain Name. On July 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 24, 2020, the Panel issued a Panel Order requesting to notify the Respondent that the Additional Domain Name had been added to the proceeding and to grant the Respondent six calendar days to submit its comments, if any, in relation to the Additional Domain Name. The Respondent did not submit a formal Response, only the above-mentioned communication of July 31, 2020 translating one of his previous communications.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, and in particular noting the Respondent’s various communications mentioned above, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal Response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Carrefour SA, a French retail Group operating with more than 12,000 stores and e‑commerce sites in more than 30 countries. The Complainant owns several trademark registrations for CARREFOUR, among which the following ones:
- International Trademark Registration No. 351147 for CARREFOUR, registered on October 2, 1968;
- International Trademark Registration No. 353849 for CARREFOUR, registered on February 28, 1969.
The Complainant operates on the Internet at several websites, its main website being “www.carrefour.com”.
The Complainant provided evidence in support of the above.
The disputed domain names <carrefour-shopping.com> and <carrefourshopping.com> were respectively registered on April 14, 2020 and on July 3, 2020, according to the WhoIs records, and the websites at the disputed domain names are offering for sale wigs for women and bags.
On July 7, 2020, the Complainant’s legal representatives wrote a warning email to the Respondent, offering to withdraw the present proceeding should both disputed domain names be transferred to the Complainant.
5. Parties’ Contentions
The Complainant states that the disputed domain names <carrefour-shopping.com> and <carrefourshopping.com> are confusingly similar to its trademark CARREFOUR, as the disputed domain names wholly contain the Complainant’s trademark with the addition of the word “shopping” (a generic term with a direct connection to the Complainant’s retail service).
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since he has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, he is not commonly known by the disputed domain names, and he is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark CARREFOUR is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the use of the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s websites, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark, qualifies as bad faith registration and use. Furthermore, the Complainant deems that, by registering two domain names containing the Complainant’s famous trademark CARREFOUR, the Respondent has engaged in a pattern of behaviour which is a strong evidence of bad faith registration and use.
The Respondent has made no formal Response to the Complainant’s contentions. However, the Respondent submitted a few informal email communications on July 3, 4, 7, 10, and 31, 2020. In these email communications, the Respondent stated the following:
“Hello I don’t understand your email I have a site registered on the domain name www.carrefourshopping.com Domain name that I purchased Thank you” (email of July 3 and 7, 2020).
C’est quoi un UDRP et pour quel nom de domaine? Nom de domaine que j’ai acheté: www.carrefourshopping.com. Je n’ai aucun rapport avec le domaine ‘www.carredour-shopping.com’ (email of July 4, 2020, submitted in French, being the translation in English: ‘What is a UDRP and for which domain name? Domain name that I bought: www.carrefourshopping.com. I have no relationship with the domain name www.carrefour-shopping.com’).
I bought my over-the-counter domain names on the internet in good faith either: carrefour-shopping.com; carrefourshopping.com; carrefour-shopping.org; carrefour-shopping.ca contrary to what the plaintiff claims (it is almost defamation) I did not know the name of carrefour at all, which is a common name here in Canada to such an extent that many shopping centers here in Canada and mainly in Quebec are called carrefour and have no connection with the complainant.
And I can assure you that not many people here in Quebec know the French Carrefour store.
Also when I do a search on the internet canada since this is where I stay here is what I find:
Carrefour Québec International
Carrefour de l'Estrie
Crossroads Of Generations
Crossroads of the South Shore
Carrefour de la Pointe
Carrefour le Moutier
The Carrefour Residences
Carrefour Industrielle Alliance
Carrefour Access Leisure
Crossroads of rivers
And all of them have the Carrefour name in their domain name, and most of them are businesses or groups of retail businesses, shopping centers.
This means that all these people want to use the so-called reputation of the carrefour store. Or stop the rights of some over the rights of others.
In my humble opinion there is an abuse of power.
Does the complainant want to prevent the use of the word crossroads in domain names around the world or is it on me in particular that he has set his sights on me?
Moreover the complainant wants to transfer all my domain names to his name, I bought them these domains and start using them.
Why does the complainant not buy the domain names he does not want us to use?
It would be so much easier than coming and attacking people like me who are only looking for work.
In addition, I have a domain name which is reserved for Canadian residents only: carrefour-shopping.ca with all reservations and without prejudice Gauthier Jean jacques (ordinary citizen)” (email of July 31, 2020, English translation of the email sent in French on July 10, 2020).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 has been registered and is being used in bad faith.
A. Preliminary Issue: Addition of a Domain Name to the Proceeding
The Panel’s decision to accept the addition of the Additional Domain Name, <carrefourshopping.com>, to the present proceeding is based on consideration of the following:
- The addition of domain names after the filing of a Complaint has been allowed in the past in other UDRP proceedings, see section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”);
- Paragraphs 10(a), 10(b) and 10(e) of the Rules (“General Powers of the Panel”) explicitly provide the following:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”;
- In the present proceeding, the Complainant and the Respondent are the same with respect to both disputed domain names and the initial and amended Complaints are closely connected as to the factual background in a way that it is expedient to hear and determine them together in order to avoid the potentially different decisions resulting from separate proceedings and to incur supplemental unnecessary costs for the Parties.
B. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark CARREFOUR both by registration and acquired reputation and that the disputed domain names <carrefour-shopping.com> and <carrefourshopping.com> are confusingly similar to the trademark CARREFOUR.
Regarding the addition of the term “shopping”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the term “shopping” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5. The Panel has nonetheless taken into consideration the Respondent’s various emails.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not commonly known by the disputed domain names and is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain names. In his informal responses the Respondent is basically stating that the term “carrefour” is a common term, meaning “crossroads” in French, often used as the name of shopping centers in Canada. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain names, like for example a connection whatsoever with a Canadian shopping center called “carrefour” or any credible arguments as to why he has chosen to use this word for his domain names (instead in the Panel’s view, he has sought to divert attention from the reputation of the Complainant by pointing to the fact that its mark is also a dictionary word), and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
See in particular section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights”. Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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”.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark CARREFOUR in the field of retail services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, <carrefour-shopping.com> and <carrefourshopping.com>, also because within the disputed domain names the term “shopping”, a term connected to the retail services provided by the Complainant, is added to the Complainant’s trademark CARREFOUR.
The Panel further notes that the disputed domain names are also used in bad faith with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to his websites in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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 names, <carrefour-shopping.com> and <carrefourshopping.com> be transferred to the Complainant.
Date: August 3, 2020