WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. blackwhite, dolly tiwari
Case No. D2021-0274
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is blackwhite, dolly tiwari, India.
2. The Domain Name and Registrar
The disputed domain name <carrefour-ae.club> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2021, 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 February 1, 2021 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 February 2, 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on March 24, 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.
4. Factual Background
The uncontested facts are as follows. The Complainant is a French multinational retail corporation, specialising in hypermarkets, with 12,000 stores in 30 plus countries and a 2018 turnover of EUR76 billion.
The Complainant trades extensively under its CARREFOUR trade mark, which is the subject of hundreds of trade mark registrations in the name of the Complainant in many jurisdictions worldwide. Although not included in the trade mark schedule accompanying the Complaint, the Panel has independently established, by using the WIPO Global Brand Database, that the Complainant owns various trade mark registrations in India, ostensibly the Respondent’s home territory. The most relevant is registration no. 1703503 in class 35 covering “retail services” (amongst others) for CARREFOUR RETAIL. UDRP panels may undertake limited factual research into matters of public record. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.8.
The Domain Name was registered on November 15, 2020 by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, resolved to a website featuring one of the Complainant’s CARREFOUR stores together with a survey offering users a “Carrefour coupon”.
5. Parties’ Contentions
The Complainant contends that the Domain Name stands to be transferred to it under the Policy given that the Domain Name takes unfair advantage of the Complainant’s well-known trade mark to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s registered CARREFOUR mark. It is well‑established that where the domain incorporates the entirety of the trade mark which is recognisable within the domain name (as in this case), the addition of other terms, including geographic terms as in this case, would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
Here the trade mark is the first and most prominent element of the Domain Name. The remainder of the Domain Name, apart from the generic Top-Level Domain (“gTLD”) “.club”, consists of a hyphen and the letters “ae”, which is the ISO code for the United Arab Emirates (“UAE”). That geographic designation adds nothing distinctive, and the emphasis remains on the CARREFOUR mark as the first and most distinctive element (Harrods Limited v. John Griffin, WIPO Case No. D2002-0641).
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0). Here, there is a prima facie case which the Respondent has failed to rebut.
The Complainant’s evidence establishes that the Complainant’s CARREFOUR mark was registered, used extensively and enjoyed considerable goodwill in many territories prior to registration of the Domain Name. The Complainant has succeeded in many UDRP proceedings in which the panels accepted that its mark is well-known, e.g. Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895.
The Domain Name is confusingly similar to the Complainant’s well-known, registered mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy, and the Complainant has adduced evidence of trade mark searches showing that the Respondent owns no trade marks similar to the Domain Name.
The only evidence of use of the Domain Name is for a website depicting one of the Complainant’s stores, together with a consumer satisfaction survey posing various questions about Carrefour “shopping” and “products”. At the end of the survey, the participant is offered a Carrefour coupon worth AED 1,500, provided the participant shares the survey with friends or groups on WhatsApp. All of this suggests an association with the Complainant, which misleads users. Unauthorised, misleading use of a domain name cannot generate rights or legitimate interests in the hands of a respondent (see paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0 at section 2.5.3).
The Panel has also searched the Internet Archive, which contains no historical evidence of use of the Domain Name that might otherwise confer rights or legitimate interests upon the Respondent.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. This is particularly so with domain names incorporating the mark plus a descriptive term, as with the geographically descriptive term in this case (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.
The Domain Name wholly incorporates the Complainant’s well-known, registered trade mark as its dominant element. Given that the Complainant trades in the UAE, the addition of the geographically descriptive term “ae” only heightens the risk of confusion and the likelihood that the Respondent has targeted the Complainant. The use to which the Domain Name has been put (including a photograph of one of the Complainant’s stores) unequivocally shows that the Respondent was aware of the Complainant and in fact had the Complainant in mind when registering and using the Domain Name.
The Panel has independently established that the survey is a sham with no real intention of gauging consumer satisfaction or providing the user with the offered coupon. The Panel viewed the Hypertext Markup Language (“HTML”) code for the website at the Domain Name, in particular the code relating to the survey. Three points are telling. Firstly, the website depicts a “Remaining Coupons” counter together with a number, which purportedly indicates the number of remaining coupons, apparently in order to encourage participation. However, the HTML code for that counter fixes the number at “345” combined with a reduction at a fixed time interval of 10,000 milliseconds. If the site is refreshed, the counter reverts to 345. Secondly, the responses to the survey are not saved by the website, as far as the Panel can tell from assessing the HTML code, showing that the Respondent has no real interest in the survey’s results. Thirdly, there is no mechanism for tracking whether the user has in fact shared the survey on WhatsApp, as the survey requests, and the promise of a coupon is therefore incapable of being fulfilled. Thus, it is clear that the survey is inauthentic and is used to create the false impression of an association with the Complainant, which clearly speaks to the bad faith element.
The Panel has independently found numerous other cases decided under the Policy where similar, sham surveys have been used to deceive users and were held to be indicators of bad faith. In fact, the Complainant itself was the target of such a practice in a prior case, namely Carrefour v. WhoisGuard, Inc. / Sara Benhadi, WIPO Case No. D2019-0379. See also Etablissementen Franz Colruyt N.V. v. Domain Administrator, See PrivacyGuardian.org / Rehman Khan, WIPO Case No. D2019-2257.
The Panel has independently established that the Complainant has succeeded in prior cases under the Policy involving domain names that also included geographic references to the UAE in the form of “ae” or “UAE”. See Carrefour v. Simon Lundgren, WIPO Case No. DAE2014-0001 concerning the domain name <carrefour.ae>; Carrefour v. Pan Shuai Lou, WIPO Case No. DCO2017-0047 concerning the domain name <carrefouruae.co>; and Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2020-0409 concerning the domain name <carefouruae.com>.
The Panel has independently established that the Domain Name is listed in at least one phishing database, namely Fortinet: https://www.fortiguard.com/webfilter?q=carrefour-ae.club. This clearly shows that users have considered the domain name to be misleading in the past.
The Respondent has attempted to conceal its identity by using a privacy service. The Respondent’s name is clearly fanciful, and the Center’s courier was unable to deliver the Written Notice to the address provided by the Respondent, indicating that it is non-existent. Taken together, these facts indicate bad faith (section 3.6 of the WIPO Overview 3.0).
Under the Rules, paragraph 14(b), a panel may draw inferences from the respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (section 4.3 of the WIPO Overview 3.0; see also Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171).
The Complainant has satisfied 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 Domain Name, <carrefour-ae.club>, be transferred to the Complainant.
Date: March 26, 2020