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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Whois Privacy Service / Andre Mochado

Case No. D2020-1391

1. The Parties

The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.

The Respondent is Whois Privacy Service, United States of America / Andre Mochado, Brazil.

2. The Domain Names and Registrar

The disputed domain names <carrefourbank.org>, <carrefourcorp.com>, and <carrefourpartners.com> are registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint 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 names. On June 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 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 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.

The Center appointed William F. Hamilton as the sole panelist in this matter on July 24, 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 owns and operates retail hypermarkets. The Complainant began business in 1968 and now operates more than 12,000 stores in more than 30 countries. The Complainant has 384,000 worldwide employees and receives over 1.3 million daily visitors to its stores. The Complainant’s Facebook page is liked by more than 11 million Internet users.

The Complainant owns the trademark CARREFOUR (the “Mark”) that is subject to numerous registrations including the following international trademark registrations:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in International classes 01 to 34; and

- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in International classes 35 to 42.

The Complainant owns numerous domain names incorporating the Mark. The domain name of the Complainant’s principal website, <carrefour.com>, was registered in 1995.

The disputed domain names were registered by the Respondent on April 17, 2020. The disputed domain names currently do not resolve to active websites.

The Panel determines that the Complainant’s consolidated proceeding against the Respondent with respect to the disputed domain names is appropriate as the disputed domain names are registered by the same domain name holder, the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain names are confusingly similar to the Mark because the disputed domain names incorporate the Mark and merely add the dictionary terms “bank”, “partners”, and “corp” to the Complainant’s mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant specifically denies providing any permission or authority for the Respondent to use the Mark or the disputed domain names. Moreover, the Complainant asserts that the Respondent is not known by the Mark and has not conducted any bona fide business or activity in connection with the Mark or the disputed domain names. Finally, the Complainant asserts the disputed domain names were registered and used in bad faith to attract unsuspecting Internet users to the Respondent’s website for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s Mark.

The disputed domain names are composed of the Complainant’s Mark plus the dictionary terms “bank”, “partners”, and “corp”. The addition of dictionary terms does not dispel confusing similarity when the Complainant’s well-known Mark is adopted in its entirety. Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS, WIPO Case No. D2018-1949. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“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.”). See also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323; Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service Inc. / Name Redacted, WIPO Case No. D2017-0782; Jeanne Lanvin v. Yap Su Lang, Lanvin Bridal, WIPO Case No. D2019-0670.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain names or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain names. The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.1.

Additionally, because the disputed domain name contains the Complainant’s mark, with the appendage of three common dictionary terms related to the Complainant’s business and structure, an inference thus arises that the disputed domain name was registered to suggest sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to come forward with relevant evidence to show rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1.

The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds the disputed domain names were registered and used in bad faith.

The Panel finds on the evidence presented that the Respondent registered the disputed domain names to falsely lure and attract Internet users to the Respondent’s website for commercial gain. It strains credulity to believe that the Respondent was unaware of the Complainant’s well-known Mark and willy-nilly composed the disputed domain names by adding dictionary terms to the Complainant’s Mark when there is no evidence that the Respondent has conducted any bona fide business under the disputed domain names prior to its registration. Moreover, the simultaneous registration of the two disputed domain names gives itself gives rise to an inference of bad faith. Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600.

An elementary Internet search would have disclosed the Complainant’s Mark. The Mark is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain names without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Furthermore, the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this case. See WIPO Overview, section 3.3.

Lastly, the Panel notes the striking and remarkable similarity between the name of the Respondent and the respondents’ name in the case of Carrefour SA v. Andre Machado, Alugue, WIPO Case No. D2020-1386, (the “Machado case”) which involved the incorporation of the Complainant’s Mark in the disputed domain names <carrefourbank.cam> and <carrefourgroup.cam>. Additionally, the disputed domain names in the Machado case were registered on the exact day the disputed domain names were registered in this case, namely April 17, 2020, showing the same country of the Registrant in both cases, namely, Brazil. The similarities between the Machado case and this case is further evidence of the bad the faith registration and use of the disputed domain names by the Respondent.

The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 disputed domain names <carrefourbank.org>, <carrefourcorp.com>, and <carrefourpartners.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: August 7, 2020

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