WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / James Liar / Loren Ktebasko

Case No. D2021-2743

1. The Parties

The Complainant is Carrefour SA, France, represented by IP Twins, France.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / James Liar, France / Loren Ktebasko, France.

2. The Domain Names and Registrar

The disputed domain names <carrefiour.com>, <carrefioure-bangue.com>, <carrefoiurbanque.com>, <carrefoiur.com>, <carrefouir.com> and <carreifour.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 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 29, 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 30, 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 September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.

The Center appointed Alexandre Nappey 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

The Complainant is the French company Carrefour, a global leader in food retail with its headquarters in France.

The Complainant also offers banking and insurance services.

The Complainant operates more than 12,300 stores and e-commerce sites in more than 30 countries and regions and employs more than 375,000 people worldwide.

The Complainant generated EUR 88.24 billion in sales.

Every day, the Complainant welcomes around 104 million customers around the world.

The Complainant also receives 1.3 million unique visitors per day across all its websites, including “www.carrefour.com”.

The Complainant is the owner of many national, international and European trademark registrations for CARREFOUR and BANQUE CARREFOUR, among which:

- International registration CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International registration CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42;
- French Trademark BANQUE CARREFOUR No. 3585968 registered on July 2, 2008, duly renewed and designating services in international class 36.

The Complainant also owns various domain names, and operates certain of those domain names to promote its services:

- <carrefour.com> registered on October 25, 1995;
- <carrefour.fr> registered on June 23, 2005;
- <carrefour-banque.fr> registered on October 7, 2009.

The disputed domain names have been registered on April 11 (<carrefoiurbanque.com>) and April 12 (<carreifour.com>, <carrefiour.com>, <carrefioure-bangue.com>, <carrefoiur.com>, <carrefouir.com>).

According to the Complainant, upon entering the disputed domain names on a web browser, a warning message is displayed informing about malicious content.

At the time of the present decision, the disputed domain names are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant first alleges that the disputed domain names <carrefiour.com>, <carrefioure-bangue.com>, <carrefoiurbanque.com>, <carrefoiur.com>, <carrefouir.com> and <carreifour.com> are highly similar to its earlier well-known trademark CARREFOUR and BANQUE CARREFOUR.

The Complainant contends that the simple addition of the letter “i” among the CARREFOUR trademark, or the simple addition of an “e” does not allow the disputed domain names to escape confusing similarity with the prior trademarks CARREFOUR.

Likewise, the domain names <carrefioure-bangue.com> and <carrefourbanque.com> are highly similar to the prior trademarks CARREFOUR as well as BANQUE CARREFOUR.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant asserts that the Respondent has acquired no trademark in the name CARREFOUR which could have granted the Respondent rights in the disputed domain names and there is no evidence that the Respondent has been commonly known by the disputed domain names as an individual, business, or other organization.

The Respondent reproduces the Complainant’s earlier registered trademarks CARREFOUR and BANQUE CARREFOUR in the disputed domain names without any license or authorization from the Complainant.

The Respondent has not, before the original filing of the Complaint, used or made preparation to use the disputed domain names in relation to a bona fide offering of goods or services. On the contrary, upon entering the disputed domain names on a web browser, a warning message is displayed informing about malicious content.

Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith.

Firstly, the Complainant submits that the Complainant and its trademarks CARREFOUR and BANQUE CARREFOUR were so widely well-known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights on the trademark CARREFOUR.

The Respondent had the Complainant’s name and trademark in mind when registering the disputed domain names.

The Respondent’s choice of domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks, even more so since the Respondent seems to be located in France, where the Complainant has its principal office and numerous stores.

The Complainant enjoys a long-lasting worldwide reputation, which has now been established by UDRP panels for years.

Secondly, the Complainant submits that it is highly likely that the Respondent chose the disputed domain names in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s disputed domain names.

The Respondent acquired and is using the disputed domain names to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks.

Thirdly, the Complainant’s CARREFOUR trademark registrations significantly predate the registration date of the disputed domain names.

Fourthly, by registering these six disputed domain names, the Respondent has engaged in a pattern of behaviour which unequivocally shows that he knew of the CARREFOUR trademarks.

In light of all the elements above, the Complainant contends that the disputed domain names were registered and are being used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation

The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel is satisfied that the disputed domain names are subject to common control, including on the grounds that the domain names have the same registrar, same proxy provider, all point to the same IP address. The disputed domain names are all similar typo-squatting variations of the Complainant’s trademarks and were all registered in two days.

The Panel considers that, in the circumstances, consolidation is fair and equitable to all Parties, and procedurally efficient. Unless specified otherwise, the Respondents will be referred to as “the Respondent” hereinafter.

B. Identical or Confusingly Similar

The Complainant has established rights in the marks CARREFOUR and BANQUE CARREFOUR by virtue of its registered trademarks.

Section 1.9 of the WIPO Overview 3.0 makes clear that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. This is due to the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.

Here, the disputed domain names either substitute a letter in the trademark or add a single letter or letters to the Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR.

For the above reasons, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant’s trademarks.

See for instance: Carrefour SA v. Jurgen Neeme, hello@thedomain.io, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Silvia Neeme and Jay Neeme, WIPO Case No. D2020-2088.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to[the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, 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 names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the respondent to demonstrate its rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Complainant has stated that it has not authorized, licensed or granted the Respondent any use of its CARREFOUR or BANQUE CARREFOUR trademarks.

It results from the circumstances of this case that the Respondent does not own any right on the trademarks CARREFOUR or BANQUE CARREFOUR or is not commonly known by the disputed domain names.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides 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:

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Section 3.1.4 of WIPO Overview 3.0 provides that “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.

Besides, section 3.2.1 of WIPO Overview 3.0 provides that “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), […] (vi) a clear absence of right or legitimate interest coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant”.

In the present case, the disputed domain names constitute typos of the CARREFOUR and BANQUE CARREFOUR trademarks owned by the Complainant. Additionally, the Respondent has not provided any evidence demonstrating rights or legitimate interests in the disputed domain names, nor has the Respondent provided a credible explanation for the disputed domain names choice.

Since CARREFOUR is a well-known and distinctive trademark and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant’s trademarks CARREFOUR but also BANQUE CARREFOUR at the time he registered the disputed domain names.

Moreover, the Respondent has used a privacy service to hide its identity when it registered the disputed domain names.

At the view of all these elements, it is not reasonably possible that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademarks.

It appears therefore that the Respondent, by referring to the CARREFOUR and BANQUE CARREFOUR trademarks, is trying to create a likelihood of confusion in order to attract, most likely for commercial gain.

Accordingly, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing somehow on the reputation of the Complainant.

Moreover, the websites at the disputed domain names previously displayed information about malicious content which is further evidence of bad faith. See WIPO Overview 3.0, section 3.4.

Finally, as previously noted, the disputed domain names are currently inactive. Passive holding does not prevent a finding of bad faith.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.

7. Decision

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, <carrefiour.com>, <carrefioure-bangue.com>, <carrefoiurbanque.com>, <carrefoiur.com>, <carrefouir.com> and <carreifour.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: October 19, 2021