WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Andre Ahner, xitroMEDIA
Case No. D2021-2656
1. The Parties
Complainant is Carrefour SA, France, represented by IP Twins, France.
Respondent is Andre Ahner, xitroMEDIA, Germany, self-represented.
2. The Domain Name and Registrar
The disputed domain name <carre-four.shop> (the “Domain Name”) is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2021, the Registrar transmitted by email to the Center its verification response registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 17, 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 23, 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 26, 2021. Pursuant to a request of Respondent of September 14, 2021 the Center granted an extension in accordance with the Rules, paragraph 5(e); the due date for Response was September 25, 2021. Respondent filed a response to the complaint in German with the Center on September 27, 2021. The Center advised Respondent on September 28, 2021 that this late response would be brought to the attention of the Panel (when appointed) and that it would be at the discretion of the Panel to consider it.
The Center appointed Dinant T. L. Oosterbaan 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.
In his mail of September 14, 2021 to the Center and in his response of September 27, 2021 Respondent requested and argued that the language of the proceedings be German. The Panel will address this language issue later in this decision.
4. Factual Background
According to the information provided in the Complaint, Complainant is a worldwide leader in retail and a pioneer of the concept of hypermarkets in 1968. Complainant is listed on the Paris stock exchange and it operates more than 12,000 stores in more than 30 countries. With more than 384,000 employees worldwide it is a well-known leader in retail. In addition it offers travel, banking, insurance, and ticketing services.
According to the evidence submitted, Complainant owns numerous trademarks worldwide in the CARREFOUR term, including:
- European Union Trade Mark No. 008779498, registered on July 13, 2010; and
- International trademark No. 353849, registered on February 28, 1969.
In addition, Complainant is also the owner of numerous domain names identical to its CARREFOUR trademark. The domain name <carrefour.com> has been registered since 1995.
The Domain Name was registered on June 10, 2021. The Domain Name resolves to a parking page with text stating: “This site is temporarily unavailable”.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions
Complainant submits that the Domain Name is identical or highly similar to Complainant’s CARREFOUR trademark. According to Complainant, the only difference is the presence of a hyphen between “carre” and “four” in the Domain Name. Complainant argues that the “.shop” generic Top-Level Domain (“gTLD”) only reinforces the likelihood of confusion as Complainant is active in retail in numerous countries.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name. According to Complainant, Respondent has not, before the original filing of the Complaint, used or made preparations to use the Domain Name in relation with a bona fide offering of goods or services. On the contrary, the Domain Name resolves to an error page. Furthermore, Complainant performed searches and found no CARREFOUR trademark owned by any other than Complainant. Respondent is also not commonly known by the Domain Name. Finally, Respondent imitates Complainant’s earlier CARREFOUR trademarks without any license or authorization from Complainant.
According to Complainant, Respondent has registered and is using the Domain Name in bad faith. Complainant submits that Complainant and its trademarks are so widely well-known that it is inconceivable that Respondent ignored Complainant or its earlier rights on the CARREFOUR trademarks. Complainant adds that Complainant enjoys a long-lasting world-wide reputation which has been established by UDRP panels for years. According to Complainant, Respondent had Complainant’s name and trademark in mind when registering the Domain Name. Complainant argues that Respondent acquired and is using the Domain Name to attract Internet users by creating a likelihood of confusion with Complainant’s earlier marks. In addition, by maintaining the Domain Name Respondent is preventing Complainant from reflecting its trademark in the corresponding domain name which may not be considered good faith use. The circumstances indicative of bad faith include the fact that Complainant has a well-known trademark.
After Notification of the Complaint and commencement of the administrative proceeding on August 26, 2021 and after the extension of the due date for the Response until September 25, 2021 the Center received by email on September 27, 2021 the response of Respondent. The Center advised Respondent on September 28, 2021 that this late response would be brought to the attention of the Panel (when appointed) and that it would be at the discretion of the Panel to consider it.
This response as submitted by Respondent on September by email on September 27, 2021 will be accepted by the Panel and be treated as a formal Response.
In his email to the Center of September 15, 2021 and in section 1 of the Response; Respondent requests and submits as a preliminary matter that the language of the proceedings be German.
In his request of September 15, 2021, Respondent mentions that Complainant is a big company with offices also in countries with the German language and German speaking employees who can easily translate the text of Respondent. According to Respondent, he has to make extensive and legally complicated explanations and he would have to hire a specialist translator which would represent a high cost factor.
In section I of the Response Respondent submits the following. Respondent recognizes that the registration agreement between the registrant and the registrar is decisive for the language of the proceedings. According to Respondent, he has registered the Domain Name through the independent company Host Europe GmbH. All agreements between him and Host Europe are in German. The native language of Respondent is German. As far as Respondent knows, Host Europe uses the partner company “Mesh Digital” in the background for domain actions with the registry. Perhaps their sub-agreement is in English. However, this does not affect the language of the main agreement. Respondent therefore requests that it be determined that the above-mentioned company Host Europe GmbH is the registrar in the present case and that Respondent may reply in German.
As another preliminary matter Respondent argues that it is only consistent and correct to apply already in this preliminary procedure the law which would be applicable in a possible later national legal dispute, especially if this law, in contrast to ICANN’s case law contains more uniform and constant rules and legal principles than the relatively inconsistent legal interpretation and application of the ICANN rules. This may be helpful for litigation between parties in countries with inadequate legal systems under trademark law, which is what the ICANN rules were created for. For parties in whose countries sound, country-specific legal norms and jurisdiction are available and applicable, as in Germany, the ICANN rules may, however, only apply in a supplementary manner. National law must primarily be observed and applied even in the preliminary proceedings. Finally, Respondent argues that in the present case German law would have to be applied in addition because Respondent is domiciled in Germany and has acted there when registering the Domain Name. Respondent would also have to use its defense claims against Complainant in court in Germany, since the transfer of the Domain Name would have its effect there.
In his Response Respondent does not deny the fact that the Domain Name is confusingly similar to the trademark registered by Complainant. However, according to Respondent it should be noted that the CARREFOUR mark is a weak mark with a lesser claim to protection as it only consists of a generic term of everyday French language, which includes the meaning “crossroad” for “carrefour”. This is not changed by the reputation of the mark. Respondent adds that trademarks consisting of such generic and descriptive terms of everyday language are no longer fully protected and registrable as they once were. The relevant legal standards and consequently also the trademark offices require a certain degree of distinctiveness for registration. Although Respondent recognizes that the panelist probably does not examine the legality of the registration and the existence of the mark, Respondent argues that in case of the pure word mark, at least with regard to some goods and services or Nice classes, Complainant cannot claim trademark protection with regard to all possible classifications so that the generic term can be used by third parties without trademark infringement.
Finally, Respondent argues that according to German law, the revocation or deletion of a domain name for reasons of trademark law is not permissible, in particular because it represents a disproportionate encroachment on a legal asset that is similar to property and enjoys a high degree of protection. Not even a suspension of a domain name caused by a third party is permissible. The most that is permissible is a prohibition of use as a milder means. If Complainant were to sue Respondent in Germany, and if Respondent were to prevail, Respondent would not only have to ensure that the transfer or deletion is reversed, but Complainant would also have to pay considerable damages.
According to Respondent, there is no strong evidence and certainly no presumption of lack of legitimate interest. In the case of generic domain names, the principle of “first come, first served” applies, regardless of any trademark rights, because by registration alone, the registrant does not commit trademark infringement. This is especially true for generic domain names. It should also be noted here that, under German law, a legitimate interest is not necessary for the acquisition of a domain name, even if it affects a trademark. Case law has repeatedly confirmed for many years that one can simply hold a domain name without website content and without engaging in any commercial activity. Respondent argues that the ICANN rules do not take precedence over national law, nor can they be regarded as mandatory in every case, and since they are diametrically opposed to German law, German law must be applied in the present case. Since the trademark in question is a purely descriptive, generic term, Respondent submits that he does not need a license or authorization from Complainant, at least in the area of its activity within the generic term, as Complainant does not enjoy trademark protection.
Respondent also argues that the acquisition of domain names for the purpose of speculation or resale or lease is a permissible and common economic activity, so that Respondent has a general, legitimate interest in the acquisition of the Domain Name. A specific intention to use the Domain Name is not relevant. The mere registration of a domain name does not constitute an economic activity that could infringe trademark rights. Even the mere holding/parking of a Domain Name without website content is not objectionable, since there is no legal basis with corresponding obligations as to when a registered domain name must be filled with content. Respondent concludes by mentioning that the UDRP procedure was started two months after the registration of the Domain Name. In this short period of time, neither a rudimentary implementation, nor the preparation of an Internet project would be possible and reasonable, taking into account the current Covid-19 related situation on the side of Respondent.
Respondent denies that the Domain Name was registered and is being used in bad faith.
Respondent submits that he had no intention to infringe the rights of Complainant. The Domain Name was registered with the intention to build up a portfolio or an Internet project with the English terminology and wordplay “Care 4” / “care four” in the sense of “care for” and to offer it to a provider of care services. According to Respondent, he has expertise and experience in the field of care, which is why he came up with this idea. For this purpose, he had already registered the domain name “carefour.shop” on the same day. Further domains, such as “care4.shop”, “care-4.shop”, “care-four.shop” and “carre-for.shop” were to be registered soon, whereby the latter, just like the Domain Name, were to function as typing-error domain names. However, the project was initially stopped for several reasons and postponed indefinitely, as it has now become impossible due to disclosure of the business idea.
Respondent mentions that he was aware of Complainant’s trademark, but also knew that its trademark protection is not all-encompassing due to its generic nature and that, with regard to both the English and the French meanings, the relevant generic terms can be used in areas where there is no or only limited trademark protection. The fact that Respondent actually had the terms “care” and “for” in mind, and that “carre” and “four” should only be relevant in the context of typos, with the consequence of a redirection to “carefor.shop” or “carefour.shop”, does not change this, since the term “carrefour”, due to its similarity to English with respect to “care for” or “care 4” is equally subject to a need for freedom.
Respondent concludes by arguing that the present case impressively shows why generic terms cannot enjoy comprehensive trademark protection and why there is and must be a comprehensive need to keep them free. Generic terms can exist in parallel in different languages, sound similar and have the same or different meanings. A trademark owner should not be entitled to claim common terms used in everyday life as his own. This is especially true when terms still sound and are spelled similarly in different languages, as in the present case.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that complainant proves each of the following three elements to obtain an order that the disputed domain name be transferred:
(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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Preliminary matters
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. In the present case, on August 16, 2021, the Registrar Mesh Digital Limited, an English company, transmitted by email to the Center its verification response stating the language of the registration agreement is English.
Respondent argues that he has registered the Domain Name through Host Europe GmbH (“Host Europe”) and that all agreements between him and Host Europe are in German. Respondent adds that Host Europe may use the partner company “Mesh Digital” in the background for domain actions with the registry, and that their sub-agreement is perhaps in English.
As Respondent has not submitted his agreements with Host Europe, the Panel has looked at the publicly available website of Host Europe and in particular the terms and conditions of Host Europe. These terms and conditions state (both in English and German) in article 13 (1) the following:
“Where the Client registers a domain name via the Provider, the contract shall come into effect directly between the Client and the respective issuing service or registrar. In such cases the Provider shall act for the Client in the capacity of an agent. The terms and conditions of the respective issuing service or registrar shall then apply. In case of a dispute to the general terms and conditions of the Provider, the relevant registration terms and conditions shall prevail.”
The language in this article 13 (1) means that Host Europe only acts as a middleman/agent, and that the registration agreement is between the actual Registrar and Respondent and not between Respondent and Host Europe.
The Panel finds that the language of any agreements between Respondent and Host Europe is not relevant as far as the language of these proceedings is concerned, but only the language of the Registration Agreement of the Registrar. The argument of Respondent as mentioned in his email of September 15, 2021 to the Center that Complainant is a big company is irrelevant.
The Panel thus decides that the language of these proceedings is English as the Registrar confirmed to the Center that the language of the registration agreement is English.
A second language issue is the following. Respondent submitted his extensive Response of September 27, 2021 in German. The Panel decides that this Response (as submitted in German) will be accepted by the Panel and will be treated as a formal Response and will be taken into account, notwithstanding its late submission. In order to save Respondent expensive translation costs, and in view of the expedited nature of these proceedings, the Panel will not decide to order a translation of the Response in English in accordance with paragraph 11(b) of the Rules.
Another preliminary issue raised by Respondent is his argument that the Policy (by Respondent referred to as ICANN rules) may only apply in a supplementary manner and that German law would take precedence and/or be applied in addition.
In the view of the Panel, Respondent misunderstands the fundamental aspects of the Policy. The UDRP is intended to maintain the overall integrity of the Internet Domain Name System, to address cross-border trademark-abusive domain name registrations and to function as a standardized efficient alternative to multi‑jurisdictional court litigation. The Panel adds that there is consistent legal interpretation and application of the UDRP, as evidenced by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Contrary to the arguments of Respondent that German law should apply, in this cross-border proceeding between a French Complainant and a German Respondent the Panel will only apply the Policy and not German law.
The Panel notes that according to paragraph 4(k) of the Policy Respondent shall not be prevented from submitting the dispute to a court of competent jurisdiction.
B. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark.
Complainant has established that it is the owner of numerous trademark registrations for CARREFOUR. The Domain Name incorporates the trademark CARREFOUR in its entirety, with the only difference that in the Domain Name a hyphen is added between the two parts of the trademark. Many UDRP panels have found that a disputed domain name is confusingly similar where the relevant trademark is recognizable within the disputed domain name. See section 1.8 of the WIPO Overview 3.0. The gTLD “.shop” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0.
Although Respondent does not deny the fact that the Domain Name is confusingly similar to the trademark registered by Complainant, he argues that the CARREFOUR trademark is a weak trademark as it is descriptive only.
A stated in section 1.7 of the WIPO Overview 3.0 the test for confusing similarity under the first element functions primarily as a standing requirement. It involves a relatively straightforward comparison between a complainant’s registered trademarks and the Domain Name. As such there is no room for arguments about a potential weakness of the trademark under the first element; however, such arguments may be relevant under the second or third elements.
The Panel also notes that many UDRP panels have established that CARREFOUR is a well-known trademark in France and elsewhere and thus not a weak trademark. See some of the multiple UDRP decisions which refer to the trademark as “well-known”: 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 v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586; Carrefour v. Ali Fetouh, Fasateen, WIPO Case No. D2017-0089; Carrefour v. Tony Manchini, USDIET Whoisguard, Inc, WIPO Case No. D2015-0962, and as “famous”: Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(k) of the Policy identifies, in particular but without limitation, the following circumstances able to demonstrate the potential rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to the evidence provided by Complainant the Domain Name does not resolve to an active website and contains the following language: “This site is temporarily unavailable. Please try again later”.
According to Respondent, he manages a portfolio of over 150 customers and owns domain names, which are used for future Internet projects or for purely speculative purposes. He submits that the Domain Name was registered with the intention to build up a portfolio or an Internet project with the English terminology and wordplay “Care 4” / “care four” in the sense of “care for” and to offer it to a provider of care services. According to Respondent, he has expertise and experience in the field of care, which is why he came up with this idea. For this purpose, he mentions that he had already registered the domain name <carefour.shop> on the same day as he registered the Domain Name. The Domain Name was to function as a typing-error domain name.
The Panel finds that in the context of Complainant’s well‑known trademark these arguments of Respondent do not appear credible and so do not demonstrate any preparations to use the Domain Name in connection with a bona fide offering of goods or services, and furthermore, the Panel notes that Respondent has provided no evidence in support of the above claims.
In this regard, the Panel also notes a WhoIs search showed that the domain name <carrefour-shop> was already registered on October 10, 2016, thus not on the same date as the registration of the Domain Name, as claimed by Respondent. Respondent does not explain why he would use the English terminology “care for” while his publicly available website “www.xitromedia.de” is only in the German language. Respondent also does not explain why he did chose to register the Domain Name in the gTLD “.shop” as care services have nothing to do with retail shops.
Furthermore, Respondent does not provide any evidence that he is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant, and in fact Respondent’s claims appear to suggest a commercial intent.
The Panel finally notes that there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights. Complainant has also not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. In this regard, the Panel notes that the nature of the Domain Name, being essentially identical to the Complainant’s well‑known trademark with an additional hyphen, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
In the opinion of the Panel, Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, which Respondent has failed to sufficiently rebut. Accordingly, the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel takes into account the observations mentioned under 6.C. Rights or Legitimate Interests with respect to the submissions of Respondent with respect to his reasons for registering the Domain Name.
The Panel notes the admission of Respondent in his Response that he was aware of Complainant’s trademark.
Noting the well-known status of the CARREFOUR mark as already established by previous UDRP panels and the overall circumstances of this case, the Panel finds it highly likely that Respondent knew of Complainant’s CARREFOUR mark at the time he registered the Domain Name. Bad faith on the part of Respondent is to be inferred from using a hyphen as a device to obtain what is for all intent and purposes a domain name which is essentially identical to Complainant’s trademarks.
The arguments of Respondent that he was free to register the Domain Name in view of the descriptive nature of the mark are unconvincing, noting in particular the near identical nature of the Domain Name and the longstanding and wide-spread use of Complainant’s well‑known CARREFOUR mark.
The Panel notes that the Domain Name does not resolve to an active website. As noted in section 3.3 of the WIPO Overview 3.0 the non-use of a domain name, as in the present case, does not prevent a finding of bad faith under the doctrine of passive holding.
Having considered the full circumstances of the case, including the nature of the Domain Name, the Parties’ contentions, and supporting evidence (or lack thereof), the Panel finds that on balance Complainant has satisfied its burden of showing that the Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 Domain Name, <carre-four.shop>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: October 21, 2021