WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA. v. Reliant-web Domain Admin / Jean Marie Grolleau / Joanne Elvert
Case No. D2021-2389
1. The Parties
The Complainant is Carrefour SA., France, represented by IP Twins, France.
The Respondent is Reliant-web Domain Admin, United States of America / Jean Marie Grolleau, France / Joanne Elvert, France (collectively referred as “the Respondent”).
2. The Domain Names and Registrars
The disputed domain names <carrefour-banques.com> and <carrefour-bq.com> are registered with Name.com, Inc. (Name.com LLC).
The disputed domain name <carrefourbunaq.com> is registered with NameSilo, LLC.
The disputed domain name <carrefourbunqe.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com
All the Registrars are individually and collectively referred as (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 22, 2021 and July 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint, and displaying multiple underlying registrants. The Center sent an email communication to the Complainant on August 9, 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 August 10, 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 August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2021.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on September 17, 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, a company registered in France and the shares of which are listed on the Paris Stock Exchange, is a world leader in retail goods sales and has pioneered in 1968 the creation of the first hypermarkets. It operates more than 12,000 stores in over 30 countries, with more than 321,000 employees worldwide and 1.3 million visitors daily in its stores. Besides retail, the Complainant offers banking, insurance, ticketing and travel services.
The disputed domain names were initially registered in the name of privacy services. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain names.
The Complainant owns a very large portfolio of trademarks containing the distinctive element CARREFOUR, including the French trademark BANQUE CARREFOUR, registered under No. 3585968 on July 2, 2008 (hereinafter referred to as: “the Mark”).
The Complainant also owns the <carrefour.com> domain name and many other domain names related to its banking activities, incorporating the element “carrefour”, such as the <carrefour-banque.com> domain name, registered on October 7, 2009.
The disputed domain names were all created on April 17, 2021.
The Complainant has submitted evidence that the disputed domain names resolved to unsafe, inactive parking pages.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain names reproduce the Mark, in which the Complainant has rights, and are confusingly similar to the Mark, insofar as the disputed domain names all contain in attack position the distinctive element “carrefour” in its entirety, and that the addition of abbreviations, distorted variations or misspellings of the element “banque” is not capable of dispelling the confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Furthermore, the Complainant contends it never authorized the Respondent to use the Mark in any manner and that the Respondent has no license from the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain names in bad faith and alleges that the Respondent had knowledge of the Mark when registering the disputed domain names.
(iv) The Complainant submits that by its passive holding, the Respondent is using the disputed domain names in bad faith.
(v) The Complainant requests that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Aspects
A. Request for consolidation
Pursuant to Article 10(e) of the UDRP Rules, a “Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
In its amended Complaint, the Complainant argued in respect of a consolidation against multiple respondents, that:
- under paragraph 3(c) of the UDRP Rules, the Complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names specified in the Complaint is the same;
- although they do not all share the same registrar, the disputed domain names were registered on the same day (i.e. April 17, 2021);
- three disputed domain names <carrefour-banques.com>, <carrefour-bq.com> and <carrefourbunqe.com> share the same registrant’s country of residence on the WHOIS, which is France;
- the disputed domain names are similar to each other beyond the simple fact of containing the Mark, they all combine “carrefour” in attack position with the element “banque” or an abbreviated (“bq”), misspelled (“bunaq”, “bunqe”) form of “banque”;
- even though the disputed domain names do not share the same Registrar, the combination of the similarity in their structures as well as their registration on the same day are very unlikely to be a coincidence;
- the addition of the above circumstances indicates that the disputed domain names have been, in fact, registered by the same person or entity and are subject to common control.
After giving due consideration to paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the Panel notes that the Complainant’s above arguments have not been rebutted, that no objection was raised on the ground that consolidation would be detrimental to the interests of the Respondent, and that none of the disputed domain names are actively used.
Accordingly, on the balance of the probabilities and in the interest of procedural efficiency, the Panel decides that all named registrants of the disputed domain names are, in fact, the same entity and/or that all the disputed domain names are under common control, and accepts consolidation as requested by the Complainant.
B. Failure to Respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names, such as making legitimate non-commercial or fair use of the disputed domain names.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain names, it is evident that the latter consist of the distinctive element of the Mark, followed by either misspellings of the descriptive element “banque” (bank in French) or by a hyphen and “banques” or the abbreviation “bq”, in all cases followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the addition of distorted variations or misspellings of the element “banque” after the dominant element “carrefour”, does not dispel the confusing similarity, and that the dominant element “carrefour” remains recognizable in the disputed domain names.
The Panel finds that the disputed domain names are confusingly similar to the Mark.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain names. There is no evidence that the Respondent is known by any of the disputed domain names.
The disputed domain names resolve to inactive parking pages.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain names.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent received (i) no license from the Complainant and (ii) no authorization from the Complainant to register or use the disputed domain names.
Furthermore, the nature of the disputed domain names, being similar to the Mark, carries a high risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which has not been rebutted by the Respondent.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain names confusingly similar to the Mark, which can be considered as “cybersquatting”.
It has been established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the CARREFOUR element of the Mark is distinctive and well known, as was recognized in a number of UDRP decisions (see for instance Carrefour v. Yunjinhua, WIPO Case No. D2014-0257; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. Jean-Pierre Andre Preca, WIPO Case No. D2018-2857; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610 and Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895), the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain names randomly with no knowledge of the “carrefour" element of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In addition, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Prior UDRP panels have also held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain names that would not be illegitimate, considering the specificity of the Complainant’s banking activity.
Moreover, in this case, the Respondent took active steps to hide its identity. Although using a proxy or privacy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the Panel notes that the fact that the Respondent used a privacy service to hide its identity and contact details prevented the Complainant from contacting it. Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). See section 3.2.1 of the WIPO Overview 3.0.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name, which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain names constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 names, <carrefour-banques.com>, <carrefour-bq.com>, <carrefourbunaq.com>, and <carrefourbunqe.com> be transferred to the Complainant.
Date: September 27, 2021