WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. 李骏 (Li Jun)
Case No. D2021-1535
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.
The Respondent is 李骏 (Li Jun), China.
2. The Domain Name and Registrar
The disputed domain name <carrefour.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 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 May 20, 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 in English on May 21, 2021.
On May 20, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021.
The Center appointed Douglas Clark as the sole panelist in this matter on July 2, 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 Complainant is a French retail corporation specializing in the operation of hypermarkets. The Complainant operates more than 12,000 stores in more than 30 countries around the world. Apart from its primary business, the Complainant also offers travel, banking, insurance and ticketing services.
The Complainant owns several registrations for the CARREFOUR trade mark worldwide, including the following:
October 2, 1968
1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34
February 28, 1969
35, 36, 37, 38, 39, 40, 41, 42
The disputed domain name <carrefour.vip> was registered on February 16, 2021. At the date of the filing of the Complaint and this decision, the disputed domain name resolved to an inactive website.
5. Parties’ Contentions
The Complainant contends that:
(a) The disputed domain name is confusingly similar to its trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.vip” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and
(c) The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and has actively used the CARREFOUR trade mark to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issues – Language of the Proceeding
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.
In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the following grounds:
a) the Complainant, being a French entity, is unable to communicate in Chinese;
b) in order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding; and
c) the Respondent is in a position to understand English as the disputed domain name contains the English acronym “vip”, which is understood as “very important person”.
In accordance with paragraph 11(a) of the Rules, the Panel hereby determines that the language of the proceeding shall be English after considering the following circumstances:
- the Center has notified the Respondent of the proceeding in both English and Chinese;
- an order for the translation of the Complaint and other supporting documents will result in significant expenses for the Complainant and a delay in the proceeding.
Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
6.2. Substantive Issues
The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;
(ii) the 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
The Panel finds that the disputed domain name <carrefour.vip> is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s CARREFOUR trade mark in full with the gTLD “.vip” added to it. The gTLD “.vip” is generally disregarded when considering the first element.
The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s CARREFOUR trade mark or to apply for registration of the disputed domain name. The Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.
Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name. The Panel finds that the Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Based on the given evidence, the disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered long after the Complainant has registered the CARREFOUR trade mark. The CARREFOUR trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for more than 50 years. In addition, previous UDRP decisions have acknowledged the fame and reputation of the Complainant’s trade mark and a browser search of the word “carrefour” directs to the Complainant’s business. The Panel is satisfied that the Respondent was aware of the Complainant and its CARREFOUR trade mark when it registered the disputed domain name. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy.
Though the disputed domain name <carrefour.vip> resolves to an inactive website at the date of this decision, it is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.0). It also appears that the Respondent also has a history of registering domain names in the English language. However, for the purposes of this decision it is not necessary to rely on these grounds as those set out in the foregoing paragraph are sufficient to find for the Complainant.
For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore satisfied the third element under 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 disputed domain name <carrefour.vip> be transferred to the Complainant.
Date: July 20, 2021