WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Jack Wong
Case No. D2021-2605
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
The Respondent is Jack Wong, United States of America.
2. The Domain Names and Registrar
The disputed domain names <carrefourbonus.top> and <carrefour.website> are 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 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 13, 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. The Center sent an email communication to the Complainant on August 13, 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 13, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2021.
The Center appointed Knud Wallberg 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 is a worldwide operator of retail and hypermarkets starting in 1968. The Complainant operates more than 12,000 stores in more than 30 countries worldwide and additionally offers travel, banking, insurance, or ticketing services. The Complainant that is listed on the Paris Stock Exchange has more than 384,000 employees worldwide and 1.3 million daily visitors in its stores.
The Complainant is the owner of numerous trademarks for CARREFOUR worldwide including:
- International trademark registration No. 351147, CARREFOUR (word), registered on October 2, 1968, for goods in international classes 1 to 34;
- International trademark registration No. 353849, CARREFOUR (word), registered on February 28, 1969, for services in international classes 35 to 42.
The disputed domain name <carrefour.website> was registered on May 11, 2021, and currently resolves to an active website, that purports to be a website for a Russian pharmacy.
The disputed domain name <carrefourbonus.top> was registered on May 13, 2021, and does currently not resolve to any active website.
5. Parties’ Contentions
The Complainant states that the disputed domain names are confusingly similar to its trademark CARREFOUR. The disputed domain name <carrefour.website> thus contains the Complainant’s trademark, while the disputed domain name <carrefourbonus.top> contains the Complainant’s trademark with the addition of the word “bonus”, which is generic term with a direct connection to the Complainant’s retail service, in which it is customary to offer advantages, discounts, or gifts to customers.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since he has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, that the Respondent is not commonly known by the disputed domain names, and that the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant submits that the Complainant and its trademarks are so widely well-known, that it is inconceivable that the Respondent registered the disputed domain names without knowledge of the Complainant or its earlier rights to the CARREFOUR mark. The Complainant thus states that the Respondent acquired and is using the disputed domains names in bad faith to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <carrefour.website> is identical (in the sense of the Policy) to the Complainant’s registered trademark CARREFOUR since it consists of an identical reproduction of the CARREFOUR mark. The generic Top-Level Domain (“gTLD”) “.website” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The disputed domain name <carrefourbonus.top> comprises the Complainant’s CARREFOUR trademark in its entirety together with the term “bonus”. The addition of such a term does not prevent a finding of confusing similarity. See section 1.9 of the WIPO Overview 3.0. Furthermore, the gTLD “.top” is a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to both the disputed domain names.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not rebutted the Complainant’s prima facie case, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in this proceeding.
As such the Panel finds that the Complainant has satisfied the paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain names 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark CARREFOUR, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain names he chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
At the time of the filing of the Complaint, the disputed domain name <carrefour.website> redirected to an inactive website. The Panel notes such passive holding of the disputed domain name would not prevent a finding of bad faith in the present circumstances. Furthermore, as mentioned above in section 4, the disputed domain name currently resolves to an active website, that purports to be a website for a Russian pharmacy that encourages visitors to “Take an easy survey and get the opportunity to win up to 200,000 rubles”. Such use can obviously create confusion for the Complainant’s costumers just as the use is liable to disrupt the business of the Complainant. In addition, by registering the disputed domain name, the Respondent prevents the Complainant from reflecting its CARREFOUR mark in a corresponding domain name under the “.website” “gTLD”. The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy is fulfilled in relation to this disputed domain name.
The disputed domain name <carrefourbonus.top> has, according to the Complainant, previously been used for a website “displaying a stylized representation of groceries and of a shopping basket on top of a smartphone, with the caption “giving coupons” above the whole”. The fact that the disputed domain name is not currently used actively does, in particular under these circumstances, not prevent a finding of bad faith use. As it is stated in section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that 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”.
Noting that the disputed domain name <carrefourbonus.top> incorporates the Complainant’s distinctive and reputed trademark CARREFOUR and the gTLD “.top”, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy is also fulfilled in relation to this disputed domain name.
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, <carrefourbonus.top> and <carrefour.website>, be transferred to the Complainant.
Date: October 1, 2021