WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Domain Admin, Whois Privacy Corp.
Case No. D2021-0807
1. The Parties
Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name is <carrefour-br.com> which is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 March 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2021. Due to an apparent issue with the notification, on April 22, 2021, the Center granted Respondent an extra five day period in which to indicate whether it wished to participate to this proceeding. Respondent did not submit any response. Accordingly, the Center again notified Respondent’s default on April 28, 2021.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 5, 2021. This Panel finds that it was properly constituted. This 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
Complainant, whose stock is listed in the Paris Stock Exchange, operates a retailer business in several countries.
Complainant has rights over the CARREFOUR mark for which it holds International Registration No. 351147 in classes 1 to 34, registered on October 2, 1968, and International Registration No. 353849 in classes 35 to 42, registered on February 28, 1969.
The disputed domain name was registered on February 19, 2021. At the time the Complaint was filed, the website associated with the disputed domain name showed, among others,: “Liens associés”, “Carte Fidelite”, “Livraison Courses en Ligne”, “Jouets”, “Drive et Courses en Ligne”, “Rechercher des annonces”, and a disclaimer at the bottom of the website “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers”.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. With a turnaround of 76 billion EUR in 2018, Complainant operates more than 12,000 stores in more than 30 countries worldwide, having more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. Complainant also offers travel, banking, insurance and ticketing services.
Complainant owns several mark rights worldwide in the “CARREFOUR” term. The CARREFOUR mark enjoys a wide-spread continuous reputation, as stated by a large number of decisions issued under the Policy. Complainant is also the owner of numerous domain names identical to its CARREFOUR mark, both within generic and national top-level domains, such as <carrefour.com> which has been registered since 1995. Complainant’s fame and notoriety is also evidenced on the Internet; for instance, Complainant’s Facebook page is currently “liked” by more than 11 million Internet users.
The disputed domain name is highly similar to the CARREFOUR mark. The disputed domain name reproduces the CARREFOUR mark, together with the term “br” separated by a hyphen. The term “br” is the ISO code identifying Brazil, which reinforces the risk of confusion since Complainant is present and active in Brazil.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant performed searches and found no CARREFOUR mark owned by Respondent. Complainant has found no evidence whatsoever that Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name. Respondent reproduces the CARREFOUR mark in the disputed domain name without any license or authorization from Complainant.
Respondent has not used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The disputed domain name is used in connection with a page of pay-per-click (“PPC”) commercial links to products identical or similar to those of Complainant. Several UDRP decisions consider that associating a domain name similar to a trademark with a webpage displaying commercial links and ads does not grant Respondent legitimate interests in the domain name. Even if Respondent is currently receiving no revenue from the PPC links on said page, it is very difficult to believe that the disputed domain name would not have been registered for commercial purpose of benefit to Respondent.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent’s registration of the disputed domain name cannot have been accidental. Complainant’s CARREFOUR mark registrations significantly predate the registration date of the disputed domain name. Complainant and its CARREFOUR mark are so widely well-known, that it is inconceivable that Respondent ignored Complainant or its rights on the mark CARREFOUR. Thus, Respondent had Complainant’s name and mark in mind when registering the disputed domain name.
A simple search on an online search engine yields results only related to Complainant. Therefore, Respondent knew or should have known that, when registering and using the disputed domain name, Respondent would do so in violation of Complainant’s rights. Further, a quick CARREFOUR mark search would have revealed to Respondent the existence of Complainant and its marks. Respondent’s failure to do so is a contributory factor to its bad faith.
Respondent registered the disputed domain name because of its similarity to a mark in which Complainant has rights and legitimate interest. This was most likely done in the hope and expectation that Internet users searching for Complainant’s services and products would instead come across Respondent’s website.
Respondent acquired and is using the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainant’s mark. Respondent is using the disputed domain name in connection with a PPC page. The PPC commercial links’ ability to generate revenue depends on the ability of the disputed domain name to attract users seeking information on the owner of the mark. As the disputed domain name comprises Complainant’s mark and relates to a country where Complainant has active business, it appears extremely likely that the disputed domain name will attract Internet users, and in particular Brazilian ones.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the CARREFOUR mark.
Since the addition of a generic Top-Level Domain in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the CARREFOUR mark, albeit followed by the characters “-br”. It is clear to this Panel that the CARREFOUR mark is recognizable in the disputed domain name and that the addition of such characters in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that it has not authorized Respondent to use its CARREFOUR mark, that Respondent is not commonly known by the disputed domain name, that Respondent does not hold any mark registrations for “Carrefour”, and that Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain. The evidence in the file shows that the website linked to the disputed domain name shows apparent links to other websites. In any event, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see sections 2.5.1 and 2.9 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.1 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
It is uncontested that Complainant’s CARREFOUR mark is well known. Taking into consideration that Complainant’s registration and use of the CARREFOUR mark preceded the creation of the disputed domain name by a significant number of years, and Complainant’s international presence, this Panel is of the view that Respondent should have been aware of their existence at the time it obtained the registration of the disputed domain name.
The use of a domain name for a parking website with links that may generate PPC revenue is not, per se, evidence of bad faith. However, where the registration and use of the corresponding mark preceded the registration of the disputed domain name, where the disputed domain name incorporates another’s well-known mark in its entirety, coupled with just an irrelevant addition (which, in the case at hand, may be indicative of Brazil, country where Complainant has a business presence), where use of Complainant’s mark in the disputed domain name is without Complainant’s authorization, where there is a risk of implied affiliation of the disputed domain name with Complainant and its mark, and where the website linked to the disputed domain name shows sponsored links, there is no doubt that Respondent has intentionally sought to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Complainant and its CARREFOUR mark.2 In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s name and CARREFOUR mark, which denotes bad faith.
The fact that the website associated to the disputed domain name appears to be a generic parking page created by a third party, with sponsored links of third parties, and with a disclaimer, does not relieve Respondent from its responsibility for contents appearing on the website associated with its disputed domain name. As set forth in other UDRP cases, it may not be necessary for a registrant itself to have profited directly in order to establish bad faith, it being generally sufficient to show that profit or commercial gain may have been generated through sponsored links in such a parking page.3
In light of the above, this Panel finds that 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, this Panel orders that the disputed domain name <carrefour-br.com> be transferred to Complainant.
Date: May 17, 2021
1 See Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400: “There is no evidence that the Complainant authorized the Respondent to register the disputed domain name or to use the CASIO trademark, with or without immaterial additions or variants. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.” See also section 2.1 of the WIPO Overview 3.0.
2 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. See also Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.