WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. 苏仲锦 (su zhong jin)
Case No. D2021-0808
1. The Parties
Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
Respondent is 苏仲锦 (su zhong jin), China.
2. The Domain Names and Registrar
The disputed domain names <carrefourai.com>, <carrefourtech.com> (the “Domain Names”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 24, 2021.
On March 24, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on March 24, 2021. Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 6, 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
Complainant, Carrefour S.A. is a French entity and worldwide retailer with a revenue of EUR 76 billion in 2018. Complainant operates more than 12,000 stores in more than 30 countries worldwide, with more than 384,000 employees and 1.3 million daily visitors in its stores. Complainant additionally offers travel, banking, insurance or ticketing services. Complainant is listed on the Paris Stock Exchange (CAC 40).
Complainant owns several hundred trademarks worldwide for the CARREFOUR mark, including, for example:
- International trademark registration no. 351147 for CARREFOUR, registered on October 2, 1968;
- International trademark registration no. 353849 for CARREFOUR, registered on February 28, 1969.
In addition, Complainant owns numerous domain names with the term “carrefour”, including, for example, <carrefour.com> which has been registered since 1995.
Respondent registered the Domain Names on the same day, January 12, 2021. Each of the Domain Names resolves to an error page.
5. Parties’ Contentions
Complainant contend that (i) the Domain Names are identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and is using the Domain Names in bad faith.
In particular, Complainant contends that is has trademark registrations for the CARREFOUR marks and own domain names incorporating the CARREFOUR marks. Complainant contend Respondent registered and is using the Domain Names, to confuse Internet users looking for bona fide and well-known CARREFOUR products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submits in its communication to the Center on March 24, 2021 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese.
Complainant notes that it is a French entity, unable to communicate in Chinese, and is not in a position to conduct the proceeding in Chinese without an additional large expense and delay due to the need for translation. It contends that each of the Domain Names includes English terms, namely “tech” and “ai”, which Complainant contents stands for “artificial intelligence”, and that thus Respondent is familiar with English.
In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using the Roman alphabet.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and
cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which a complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of their rights in the CARREFOUR marks, which have been registered since at least as early as 1968, well before Respondent registered the Domain Names on January 12, 2021 as noted above. Complainant has also submitted evidence, which supports that the CARREFOUR marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the CARREFOUR marks.
With Complainant’s rights in the CARREFOUR mark established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), are identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, each of the Domain Names is confusingly similar to Complainant’s CARREFOUR marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Names. The complete incorporation of the CARREFOUR mark and the voluntary addition of the terms, “ai” and “tech” after “carrefour”, in the respective Domain Names <carrefourai.com> and <carrefourtech.com> does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Names registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the CARREFOUR marks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the CARREFOUR trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the CARREFOUR marks.
In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that each of the Domain Names resolves to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Names.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant have met their burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the CARREFOUR marks long predate the registration of the Domain Names by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s CARREFOUR marks and related products and services are widely known and recognized. Therefore, and also noting the composition of each of the Domain Names itself, Respondent was likely aware of the CARREFOUR marks when it registered the Domain Names, or knew or should have known that each of the Domain Names was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
Under the circumstances, Respondent’s registration of the Domain Names incorporating Complainant’s widely-known CARREFOUR trademarks in their entirety, clearly suggests that Respondent registered the Domain Names with actual knowledge of Complainant’ rights in the CARREFOUR marks, in an effort to opportunistically capitalize on the registration and use of the Domain Names.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
Further, each of the Domain Names not only incorporates Complainant’s CARREFOUR mark in its entirety, they also incorporate an intentional addition of the term “ai” and “tech”, in the respective Domain Names, <carrefourai.com> and <carrefourtech.com>, which suggests Respondent’s actual knowledge of Complainant’s rights in the CARREFOUR mark at the time of registration of the Domain Names and its effort to opportunistically capitalize on the registration and use of the Domain Names. As discussed above, each of the Domain Names resolves to a webpage that diverts users to an error page. The non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Names <carrefourai.com> and <carrefourtech.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: May 25, 2021