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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. dreux denis / denis cloud

Case No. D2021-0276

1. The Parties

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

Respondent is dreux denis, United States of America (“United States”) / denis cloud, France.

2. The Domain Names and Registrars

The Domain Names <carrefour-pass-acceso-clientes.com> is registered with Tucows Inc. and <carrefour-pass-acceso.com> is registered with Concepts B.V. d/b/a Openprovider (the “Registrars”).

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 Registrars a request for registrar verification in connection with the Domain Names. On January 29, 2021, the Registrar Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <carrefour-pass-acceso-clientes.com> which differed from the named Respondent and contact information in the Complaint. On February 1, 2021 the Registrar Concepts B.V. d/b/a Openprovider transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <carrefour-pass-acceso.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 8, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint with a request for consolidation on February 12, 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 Respondent of the Complaint, and the proceedings commenced on February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on March 25, 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. Preliminary issue: Consolidation of Respondents

The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.

The Panel notes the following features of the Domain Names and arguments submitted by Complainant in favor of the consolidation of the Domain Names:

- the Domain Names share the same structure and include the same words in the same order, all separated with a hyphen, with only one difference: the addition of “-clientes” in the first Domain Name;
- the Domain Names were registered on the same day, namely the first Domain Name
<carrefour-pass-acceso-clientes.com> was registered on November 19, 2020 and the second Domain Name <carrefour-pass-acceso.com> was registered also on November 19, 2020;
- the name “Denis” is present in both named registrants’ WhoIs details;
- as Complainant demonstrated, the Domain Names have used the same name servers, namely the name servers at the time of filing of the amended Complaint for the second Domain Name <carrefour-pass-acceso.com> were “ns1.inmotionhosting.com, ns2.inmotionhosting.com” and the previous name servers for the first Domain Name <carrefour-pass-acceso-clientes.com>, were also “ns1.inmotionhosting.com, ns2.inmotionhosting.com”; and
- the Reseller appearing in the WhoIs information of the first Domain Name <carrefour-pass-acceso-clientes.com>, at the time of the filing of the Complaint, was Inmotion Hosting Inc., while the postal address indicated in the WhoIs information of the first Domain Name <carrefour-pass-acceso-clientes.com> was, as Complainant demonstrated, the address also of Inmotion Hosting Inc., namely “360 N. Pacific Coast Highway Suite 1055”.

All the above, along with the fact that the named Respondents did not submit any arguments to rebut this inference is taken into account by the Panel.

The Panel finds that the consolidation of the Domain Names is fair to the Parties, and Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there is more than one Respondent for these Domain Names), but have chosen not to rebut the consolidation (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the Complaint, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity; hence, the Panel grants the consolidation for the Domain Names (and will refer to these Respondents as “Respondent”).

5. Factual Background

Complainant is a worldwide leader in retail and hypermarkets starting in 1968. With a turnaround of 76 billion EUR in 2018, Complainant is listed on the index of the Paris Stock Exchange (CAC 40). Complainant operates more than 12,000 stores in more than 30 countries worldwide and additionally offers travel, banking, insurance or ticketing services. Complainant has more than 384,000 employees worldwide and 1.3 million daily visitors in its stores.

Complainant is the owner of numerous trademarks for CARREFOUR worldwide including:

- International trademark registration No. 351147, CARREFOUR (word), registered on October 2, 1968, for goods in international classes 01 to 34;
- International trademark registration No. 353849, CARREFOUR (word), registered on February 28, 1969, for services in international classes 35 to 42;
- International trademark registration No. 719166, CARREFOUR PASS (word), registered on August 18, 1999, for services in international class 36.

The CARREFOUR brand enjoys wide reputation, as repeatedly recognised (Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610).

Complainant owns also the domain names <pass-carrefour.com> registered on June 10, 2019 and <pass‑carrefour.com> registered on October 25, 1995.

The Domain Names were registered on November 19, 2020. The first Domain Name, <carrefour-pass‑acceso-clientes.com>, leads to an inactive page with a warning sign that the user is entering into a deceptive site. The second Domain Name, <carrefour-pass-acceso.com>, lead at the time of filing of the Complaint to a page with a warning sign that the user is entering into a deceptive site. Currently, the second Domain Name, <carrefour-pass-acceso.com>, leads to a website with the indication “ngx273.inmotionhosting.com Your IP is 193.5.93.22” and the logo “INMOTION HOSTING”.

6. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the CARREFOUR trademark.

The Panel finds that the Domain Names are confusingly similar to the CARREFOUR trademark of Complainant.

The Domain Names incorporate Complainant’s trademark in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The words “pass", “acceso” and “clientes”, separated by hyphens, which are added in the Domain Names, do not prevent a finding of confusing similarity as these are all dictionary words and the CARREFOUR mark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names are confusingly similar to the CARREFOUR trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Names resolved to pages with third party warning signs that the user is entering into a deceptive site.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Complainant’s CARREFOUR trademark is well known (see for example Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc. WIPO Case No. D2015-0962). Furthermore, CARREFOUR is a fictitious word. Because the CARREFOUR mark had been widely used and registered by Complainant at the time of the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s trademark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple Internet search due to Complainant’s wide use of the CARREFOUR mark (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the CARREFOUR mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Names were therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites they resolved to. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).

Furthermore, the Domain Names used to resolve to websites for which warnings were posted indicating that they are deceptive. In particular, as Complainant demonstrated, they were marked as deceptive by Google Safe Browsing and Complainant’s Representative antivirus software, with a “risk of data loss”. The fact that the webpages were blocked by independent third parties demonstrates that they represented a risk to consumers and Internet users. Use of a domain name for phishing, identity theft, or malware distribution may constitute bad faith (WIPO Overview 3.0, section 3.4).

The second Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

8. 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, <carrefour-pass-acceso-clientes.com> and <Carrefour-pass-acceso.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: April 8, 2021

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