WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Privacy service provided by Withheld for Privacy ehf / Ben Luis
Case No. D2021-2670
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Ben Luis, France.
2. The Domain Name and Registrar
The disputed domain name <carrefour-carte-pass.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 the Complainant on August 18, 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 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 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 17, 2021.
The Center appointed Isabelle Leroux as the sole panelist in this matter on September 23, 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 leader in retail and a pioneer of the concept of hypermarkets back in 1968. The Complainant operates more than 12.000 stores in more than 30 countries worldwide.
The Complainant owns numerous trademark rights worldwide for the CARREFOUR sign, inter alia the following trademarks:
- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42;
- International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly renewed, and designating services in international classes 36.
In addition, the Complainant is also the owner of numerous domain names identical to its CARREFOUR trademarks, including in particular, <carrefour.com> registered since 1995.
The disputed domain name is <carrefour-carte-pass.com>, was registered on July 7, 2021 through a privacy proxy service located in Iceland. According to the information disclosed by the Registrar, the Respondent is an individual residing in France.
The disputed domain name resolves to a safety warning notice of the browser indicating that the associated website has been reported as a “misleading website”.
5. Parties’ Contentions
(i) The Complainant contends that the disputed domain name is highly similar to its earlier well-known trademarks CARREFOUR and CARREFOUR PASS that are entirely incorporated therein and that the addition of the generic term “carte” which means “card” in French, cannot diminish the likelihood of confusion but can only reinforce that risk.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name since that the Respondent is not known by such name neither does it has any trademark rights in such term.
The Complainant has never granted any license or authorization to the Respondent on the use of the CARREFOUR or CARREFOUR PASS. Furthermore, there is no indication of a bona fide offering of goods or services.
(iii) The Complainant finally contends that the disputed domain name was registered in bad faith as the Respondent cannot ignore the Complainant’s earlier rights on the well-known CARREFOUR or CARREFOUR PASS at the time of the registration.
According to the Complainant, the registration and the use of the disputed domain name are clearly intended to attract Internet users by creating a likelihood of confusion. Its current use is, moreover, preventing the Complainant from reflecting its trademark in the corresponding domain name.
In addition, the lack of response to the complaint and the concealment of its true identity are also indications of the Respondent’s bad faith.
(iv) The Complainant therefore requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain name has been registered and are being used in bad faith.
These elements will be examined in turn below.
A. Identical or Confusingly Similar
The Complainant has provided evidence to establish its earlier trademark rights on the sign CARREFOUR and CARREFOUR PASS that are incorporated in their entirety in the disputed domain name. Such reproduction is typically considered sufficient to satisfy the requirements of the first element.
The addition of the descriptive term “carte”, which means “card” in French, inserted in the middle of the trademark CARREFOUR PASS by the use of hyphens does not avoid a finding of confusing similarity. The Panel notes that this term refers to the banking and financial services offered by the Complainant to its clients, in particular, its credit card named “PASS”.
Furthermore, the gTLD “.com” does not affect the identity between the disputed domain name and the Complainant’s earlier trademarks.
Consequently, the Panel finds that the disputed domain name to be confusingly similar to the Complainant’s earlier trademarks. The first element of the paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.
In this case, the Complainant brings forward the following elements:
- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent is not known under the disputed domain name, nor does it have any trademark rights on such name;
- The Complainant has no relationship whatsoever with the Respondent.
In addition, the Complainant has provided evidence on the fact that the website associated with the disputed domain name shows a safety warning notice indicating that the website has been reported as misleading and that the access has been blocked, due to the risk that such page may contain malicious software or phishing schemes, aiming at obtaining Internet users’ personal data, such as bank details and password.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not proved otherwise, since he did not file any response.
Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s earlier trademarks have been recognized as well known by previous UDRP decisions. Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s Trademarks at the time the disputed domain name was registered and finds that the registration was made in bad faith. See, in particular, Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610; Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET, Whoisguard, Inc. WIPO Case No. D2015-0962.
Furthermore, the Panel finds that, as a resident in France, the Respondent’s efforts to conceal his identity through a privacy proxy service with an address located in Iceland can be construed as further evidence that the disputed domain name was registered in bad faith. See TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725.
As to the use of the disputed domain name in bad faith, the Complainant has provided evidence that the disputed domain name was used to resolve to a website with potential security risks, according to the browser’s safety warning notice.
The Panel agrees with the Complainant that the behavior of the Respondent constitutes a passive holding that has been constantly regarded as an indication of bad faith use. The previous UDRP panels have found that the “the bad faith behavior of the Respondent […] results clearly of [its] lack of response […] to the complaint, and to the inaccuracy and incoherence of [its] addresses”. See Association Robert Mazars v. François Varin, Jerome Adrien, Laurent Bernard, Nicolas Mazars, WIPO Case No. D2014-0498.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Consequently, the Panel finds that the disputed domain name was registered and used in bad faith, so that the third and final element of the Policy is met.
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 <carrefour-carte-pass.com> be transferred to the Complainant.
Date: October 7, 2021