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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Silvia Eichenseer / Aline Gabriela Ramtani Urdiel/ Robert Riquet

Case No. D2020-3322

1. The Parties

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

The Respondent is Silvia Eichenseer, Germany / Aline Gabriela Ramtani Urdiel, Spain / Robert Riquet, France.

2. The Domain Names and Registrars

The disputed domain name, <pass-carrefour-es.com> (the “First Domain Name”), is registered with Tucows Inc. (the “First Registrar”) as are <pass-carrefour-es.info> (the “Second Domain Name”) and <pass-carrefour-es.net> (the “Third Domain Name”).

The disputed domain name, <pass-carrefour.pro> (the “Fourth Domain Name”), is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Second Registrar”). Together, all four disputed domain names are referred to as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 8, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 8, 2020, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First, Second, and Third Domain Names, which differed from the named Respondents and contact information in the Complaint. On December 9, 2020, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Fourth Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 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 and request for consolidation of the proceeding on January 11, 2021.

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 January 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2021.

The Center appointed Tony Willoughby as the sole panelist in this matter on February 17, 2021. 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.

The invitation to the Complainant to file an amended Complaint stemmed from the fact that the registrant details of the Domain Names were not available to the Complainant in the public WhoIs at the time of the submission of the Complaint. In response to the Center’s registrar verification requests, the First and Second Registrars disclosed the names and addresses of the entities in whose names the Domain Names are currently registered. The amended Complaint names the underlying registrants as the Respondents.

The Domain Names are held in the names of different entities. Ordinarily, pursuant to paragraph 3(c) of the Rules, a complaint may only relate to more than one domain name where the disputed domain names are registered in the name of the same domain name holder. The Panel has decided on the balance of probabilities for the reasons set out in section 6.A. below that it is likely that the Domain Names are under common control and that it is appropriate that they should be dealt with together in this decision. All references in this decision to the Respondent are references to the entity having control of the Domain Names.

4. Factual Background

The Complainant is a French-based supermarket retailer with a worldwide business under the “Carrefour” name.

The Complainant is the registered proprietor of numerous trade mark registrations covering the “Carrefour” name. For present purposes it is only necessary to mention two of them:

International Trade Mark Registration No. 351147 registered on October 2, 1968, CARREFOUR (word) for a wide variety of goods in each of classes 1 through 34.

International Trade Mark Registration No. 719166 registered on August 18, 1999, CARREFOUR PASS (words) for a variety of financial services in class 36.

The Complainant is also the registered proprietor of numerous domain names featuring the “Carrefour” name, one of which is <pass-carrefour.com> registered on October 6, 2019, connected to a website of the Complainant devoted to a “pass” credit card offered by the Complainant.

The First Domain Name was registered on October 1, 2020. The Second Domain Name was registered on October 14, 2020. The Third Domain Name was registered on October 14, 2020. The Fourth Domain Name was registered on October 10, 2020. None of them is connected to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the Complainant’s CARREFOUR and CARREFOUR PASS trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Names; and that the Domain Names have been registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Issue – consolidation

Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Here the Domain Names are held in different names, but the Panel is satisfied from the evidence filed by the Complainant that the underlying registrant of each of the Domain Names is one and the same individual and/or that the Domain Names are under common control.

First, the structure of the Domain Names is complex and unusual and in respect of the First, Second, and Third Domain Names is identical save for the generic Top Level Domain (“gTLD”) identifier. The structure of the Fourth Domain Name is very similar to the others, but omits the second hyphen and the letters “e” and “s”.

Secondly, the structure of the Domain Names all follow to a significant degree the form of the Complainant’s <pass-carrefour.com> domain name.

Thirdly, the Domain Names were all registered within a few days of each other in October 2020, and, in the case of the First, Second and Third Domain Names, with the First Registrar.

Fourthly, all the Domain Names are pointed to name servers of the same service provider.

Fifthly, none of the Domain Names is connected to an active website.

Sixthly, none of the named Respondents has challenged the Complainant’s contention that the underlying registrant of all four Domain Names is the same person and/or that all four Domain Names are under common control.

Paragraph 10(e) of the Rules gives to the Panel the power to decide requests to consolidate multiple domain name disputes. The Panel accedes to the Complainant’s request for consolidation.

B. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) the Domain Names are identical or confusingly similar to a trade mark 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.

C. Identical or Confusingly Similar

Save for the gTLD identifier, the First, Second, and Third Domain Names are identical, featuring the word “pass” followed by a hyphen and the Complainant’s CARREFOUR trade mark, then another hyphen and the letters “e” and “s”. The Fourth Domain Name omits the second hyphen and the letters “e” and “s”, but like the other Domain Names commences with the word “pass” followed by a hyphen and the Complainant’s CARREFOUR trade mark.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, 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 Complainant’s CARREFOUR trade mark is readily recognizable in its entirety in all the Domain Names as is the reference to the Complainant’s CARREFOUR PASS trade mark. The Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights and that the criteria under the first element of paragraph 4(a) of the Policy is met.

D. Rights or Legitimate Interests

The Complainant asserts that (a) it has granted the Respondent no permission to use its CARREFOUR trade mark; (b) it has conducted trade mark searches and been unable to find any registrations other than its own registrations featuring the “Carrefour” name; (c) none of the circumstances set out in paragraph 4(c) of the Policy capable of demonstrating rights or legitimate interests for this purpose is applicable.

The Panel is satisfied that the evidence submitted by the Complainant is sufficient to establish a prima facie case under this element of the Policy; in other words, a case calling for an answer from the Respondent.

The Respondent has not answered the Complainant’s contentions and the Panel is unable to conceive of any basis upon which the Respondent could be said to have rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the criteria under the second element of paragraph 4(a) of the Policy is met.

E. Registered and Used in Bad Faith

On the findings of the Panel, the Respondent has registered (or been responsible for the registration of) four domain names confusingly similar to the Complainant’s CARREFOUR trade mark, each of them featuring that trade mark in its entirety, and moreover the Panel has found that the Respondent has no rights or legitimate interests in respect of any of them.

Clearly, in registering the Domain Names the Respondent had the Complainant and its CARREFOUR trade mark in mind. That the Respondent’s purpose is likely to have been a bad faith purpose is evident from the nature of the Domain Names, the less than straightforward manner in which those registrations were effected (see section 6.A. above) and the fact that the Respondent has failed to come forward with any challenge to the Complainant’s contentions. Thus far, no active use appears to have been made of the Domain Names. Nonetheless, as stated, the Panel is satisfied on the balance of probabilities that the Domain Names are likely to have been registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

However, bad faith registration of itself is not enough for the purposes of this element of the Policy. The Complainant must also satisfy the Panel that the Domain Names are being used in bad faith.

The Complainant contends that the fact that the Domain Names are not currently in use does not defeat the Complaint. The Complainant contends that paragraph 4(b)(ii) of the Policy is applicable. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which if found by the Panel to be present “shall be evidence of the registration and use of a domain name in bad faith.” Paragraph 4(b)(ii) covers circumstances where the Respondent’s purpose in registering the Domain Names was to prevent the Complainant from registering them and where there was a pattern of such behaviour.

The Panel finds there is a clear pattern of targeting the Complainant here. It is less clear that the Respondent’s purpose in registering the Domain Names was to block the Complainant from registering them – though admittedly this is the practical effect.

However, the circumstances set out in paragraph 4(b) are non-exhaustive. People do not register domain names for no purpose and even if the purpose was not to block a third party as such, the Respondent must have had in mind some purpose that related to the Complainant, whether for a website or for emails and, as indicated above, the Panel is satisfied that the purpose is likely to have been a bad faith purpose.

That the Domain Names are not in active use does not get the Respondent off the hook. The Panel is unable to conceive of any lawful use to which the Respondent could put the Domain Names. While the Domain Names are in the hands of the Respondent, they can be brought into use at any time. The Panel finds that the Domain Names in the hands of the Respondent represent an unjustifiable threat hanging over the Complainant’s head and, as such, a continuing bad faith use of the Domain Names.

The Panel finds that the Domain Names have been registered and are being used in bad faith within the meaning of 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 Domain Names, <pass-carrefour-es.com>, <pass-carrefour-es.info>, <pass-carrefour-es.net>, and <pass-carrefour.pro>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: March 3, 2021

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