WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Georgy Simonov
Case No. D2021-2490
1. The Parties
Complainant is Carrefour SA, France, represented by IP Twins, France.
Respondent is Georgy Simonov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <comptecarrefour.com> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 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 Complainant on August 12, 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 August 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 7, 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 is owner of numerous registrations in various jurisdictions throughout the world for the word, and word and device/design, trademark CARREFOUR. These include (without limitation) international registration through the Madrid System, registration number 351147, registration dated October 2, 1968, in the international classes (“ICs”) 1 through 34, covering, inter alia, various food products and textiles, and; registration number 353849, registration dated February 28, 1969, in ICs 35 through 42, covering, inter alia, advertising and business services, and transport and storage.
Complainant is a major multinational retail store operator offering for sale a variety of goods, including food products, with more than 12,000 stores in over 30 countries, employing approximately 385,000 individuals. Complainant also provides travel, banking, insurance, and ticketing services. Complainant is registrant of numerous domain names incorporating its CARREFOUR trademark, including <carrefour.com>, and it maintains an online commercial presence.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on June 7, 2021.
Complainant has provided evidence that the disputed domain name was initially directed by Respondent to a blank webpage, but was subsequently redirected to one of Complainant’s commercial websites at <carrefour.fr>. There is no evidence before the Panel of other use by Respondent of the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark CARREFOUR and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent does not own rights in the CARREFOUR trademark, and has not been commonly known by the disputed domain name; (2) Complainant has not licensed or authorized Respondent to use its trademark in the disputed domain name; (3) Respondent has not used or made bona fide preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and; (4) because Complainant’s trademark was registered long prior to Respondent’s registration of the disputed domain name, Respondent bears the burden of establishing rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademark is well known and Respondent must have been aware of Complainant’s rights in its trademark when it registered the disputed domain name; (2) Respondent’s choice of the disputed domain name could not have been accidental; (3) Respondent likely chose the disputed domain name to create Internet user confusion and to direct Internet users to Respondent’s website; (4) Complainant’s registration of its trademark predates Respondent’s registration of the disputed domain name; (5) Respondent likely intends to use the disputed domain name in fraudulent emails, including as the disputed domain name is currently redirected to Complainant’s commercial website, and; (6) use of the disputed domain name is not limited to positive action by Respondent, but may include inaction.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. Courier delivery to Respondent could not be completed because the physical address in Respondent’s record of registration was incomplete or inaccurate. Fax delivery was not completed because the number provided by Respondent did not function properly. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark CARREFOUR, including by International Registration under the Madrid System, and by use in commerce in a substantial number of countries (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant owns rights in the trademark CARREFOUR.
The disputed domain name directly and fully incorporates Complainant’s distinctive and well-known trademark, preceding it with the term “compte”. From the standpoint of the Policy, Respondent’s recognizable incorporation of Complainant’s distinctive trademark in the disputed domain name is sufficient to establish confusing similarity. It is not necessary to consider the additional term. Nonetheless, the French term “compte” (with translates to “account” in English) would likely be associated by an Internet user with Complainant’s business that includes banking and financial services. The additional term does not prevent a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant has established that it owns rights in the trademark CARREFOUR and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s commercial website does not constitute a bona fide offering of goods or services, nor does it constitute legitimate noncommercial or fair use of Complainant’s trademark. Complainant has not authorized Respondent to promote Complainant’s (or Respondent’s) business by redirecting Internet users to Complainant’s commercial website. While providing a link in a webpage to a third-party website is not inherently wrongful (depending on the context), using a trademark owner’s trademark in a domain name as is done here implies an association with the trademark owner. That appearance of association is subject to abuse, as may well be Respondent’s intent here, e.g., as part of an email address in a scheme to defraud. The fact that the disputed domain name would appear to be connected to Complainant (via redirection to Complainant’s website) would aid Respondent in establishing a false identity. Respondent has not attempted to establish a plausible explanation for its use of Complainant’s trademark by redirection, linkage, or otherwise.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent registered the disputed domain name that incorporates Complainant’s distinctive and well-known trademark. It is highly unlikely that Respondent inadvertently or accidentally decided upon Complainant’s trademark term, and Respondent has manifested awareness of Complainant’s rights in its trademark by redirecting the disputed domain name to Complainant’s commercial website.
Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s website is a form of “active use”, even if requiring little or no expenditure of effort on the part of Respondent. The appearance of Respondent’s disputed domain name in results from a search engine (and redirecting to Complainant’s website) would appear to validate the “authenticity” of the disputed domain name. If the recipient of an email from Respondent (if so configured) decided to check its authenticity by entering the domain of the sender (i.e. the disputed domain name) in a browser, that recipient might falsely conclude that the email originated with Complainant. The Panel cannot assume that Respondent has a benign purpose for registering Complainant’s trademark in a domain name in particular noting that the French term “compte” (which translates to “account” in English) would likely be associated by an Internet user with Complainant’s business that includes banking and financial services. Respondent has not attempted to provide any explanation as to how or why its registration of the disputed domain name was undertaken in good faith.
In the totality of the circumstances, the Panel finds that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy by creating a likelihood of confusion with Complainant’s CARREFOUR trademark as to the source, sponsorship or affiliation of Respondent’s website or other online (including email) location.
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, <comptecarrefour.com>, be transferred to Complainant.
Frederick M. Abbott
Date: October 21, 2021