WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA. v. isco diaz
Case No. D2021-2639
1. The Parties
The Complainant is Carrefour SA., France, represented by IP Twins, France.
The Respondent is isco diaz, France.
2. The Domain Names and Registrar
The disputed domain names <carrefour-banque.best> and <carrefour-banque.xyz> are registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 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 23, 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 24, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed William Lobelson as the sole panelist in this matter on September 29, 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 Carrefour, a French and worldwide retail group, devoted to the operation of hypermarkets. The Complainant has also extended its services to banking and insurance, under its house mark CARREFOUR.
The Complainant is the owner of numerous trademarks for or incorporating CARREFOUR, including:
- International trademark for CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International trademark for CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42;
- French trademark for BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed, and designating services in international class 36;
- French trademark for CARREFOUR BANQUE & ASSURANCE No. 3585950, registered on July 2, 2008, duly renewed, and designating services in international class 36.
The Complainant is also the owner of the domain names:
<carrefour.com> registered since 1995.
<carrefour-banque.fr> registered since 2009.
The disputed domain names are <carrefour-banque.xyz> and <carrefour-banque.best>, registered on June 9, 2021. Both resolve to an inactive webpage.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith. The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii)); and
(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Complainant is the owner of numerous CARREFOUR formative and word trademarks, including trademark registrations for BANQUE CARREFOUR, as well as domain names formed with CARREFOUR and CARREFOUR-BANQUE, all registered and used in relation with retail and banking services.
The disputed domain names reproduce the Complainant’s trademark CARREFOUR in its entirety, and imitates the Complainant’s trademarks BANQUE CARREFOUR and domain name <carrefour-banque.fr>.
Both disputed domain names contain the term “banque” (French for bank).
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the dictionary French word “banque” would not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Furthermore, the addition of the generic Top-Level Domains (“gTLD”) “.best” and “.xyz” does not prevent a finding of confusing similarity.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP, paragraph 4(c) include the following:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services;
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain names.
The Complainant further contends that the Respondent is not known under the disputed domain names, does not own any proprietary rights in the name “Carrefour Banque” and does not make any bona fide use - neither commercial nor noncommercial, of the same.
The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has substantiated the fact that its trademark CARREFOUR, which has been registered and used for years, now benefits from a high level of public’s awareness, particularly – but not only in France. Earlier UDRP decisions have acknowledged the Complainant’s trademark reputation:
Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610;
Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895: “CARREFOUR is a well-known trademark in France and elsewhere”.
When the identity of the Respondent was disclosed by the Registrar, it was found that the Respondent had declared a place of residence in France. Due to the longstanding and massive use of the Complainant’s mark in France, the Respondent could not reasonably be unaware of the Complainant’s rights when it sought to register the disputed domain names.
The Panel observes besides that the Respondent made the choice of associating the trademark CARREFOUR with the dictionary French word “banque” which directly refers to one of the fields of activity of the Complainant. For this Panel it is a clear indication that he necessarily had the Complainant’s trademark in mind when he registered the disputed domain names.
The Panel infers from the above that the Respondent acted in bad faith when he registered the disputed domain names.
It is further noted by the Panel that the disputed domain names are not being actively used by the Respondent, and do not route to any active web page with substantive content.
It is a consensus view among UDRP panels that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the apparent lack of so‑called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark and no response to the Complaint having been filed. UDRP panels may draw inferences about whether a domain name is used in bad faith given the circumstances surrounding registration.
As stated in WIPO Overview 3.0, section 3.3, there is a consensus view about “passive holding”:
“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. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Such passive holding is to be regarded as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
See also, Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572:
“Respondent knew or should have known that the Domain Name included Complainant’s CREDIT MUTUEL well-known trademark. […] However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Name which incorporates Complainant’s trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy.”
The Panel further finds that passive holding of the disputed domain names in this case constitutes bad faith.
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-banque.best> and <carrefour-banque.xyz> be transferred to the Complainant.
Date: October 10, 2021