WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Karel de Blijker
Case No. D2021-3683
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
2. The Domain Names and Registrar
The disputed domain names <carrefour-be.email>, <carrefourfinance-be.email>, <carrefourfinance‑diensten.email>, <carrefourfinance-service.email>, <carrefour‑financing.email>, <carrefour-service.email>, <carrefour-services.email> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 2021, 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 November 19, 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 November 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 November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 28, 2022. 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
With a turnaround of 76 billion euros, 12.000 stores in more than 30 countries and more than 384.000 employees the Complainant is a worldwide leader in retail.
The Complainant owns a large portfolio of trademarks consisting of or comprising the term Carrefour, including:
- International Trademark Registration (“IR”) No. 351147 for the word mark CARREFOUR, registered since October 2, 1968 for goods of classes 1 to 34 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“Nice Agreement”), and
- IR No. 353849 for the word mark CARREFOUR, registered since February 28, 1969 for services of classes 35 to 42 of the Nice Agreement.
Among many jurisdictions both above trademarks have been extended to and valid in Benelux.
The Complainant also owns a great number of Carrefour formative domain names, with the registration of its <carrefour.com> domain name dating back to October 15, 1995.
The disputed domain names were registered on August 12, 2021 and have resolved either to error pages or to parking pages containing sponsored links to third party websites offering retail or banking services.
5. Procedural issues
The first procedural issue is whether the Complainant is entitled to file a complaint relating to multiple, in this case seven disputed domain names against the Respondent.
Paragraph 3(c) of the Rules provides that a complainant may relate to more than one domain name provided that the domain names are registered by the same domain name holder.
Since the disputed domain names have all been registered by the same Respondent, the Panel finds that this standard is satisfied.
Paragraph 11 of the Rules directs that in absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
The language of the Registration Agreements for the disputed domain names is English which the Panel establishes as the language of this administrative proceeding.
6. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its CARREFOUR trademark since all reproduce it in its entirety with addition of generic terms “financing”, “service”, “services”, “finance”, “diensten” and the abbreviation “be”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant submits that the disputed domain names were registered and used in bad faith. The Complainant contends that the Respondent could not have been unaware of its well-known CARREFOUR trademark at the time of registration.
The Complainant states that the Respondent’s use of the disputed domain names to redirect to parking pages containing pay-per-click (“PPC”) advertising links to third parties websites advertising services identical or related to its own ones is also indicative of the Respondent’s bad faith, along with the Respondent’s registration of multiple trademark-abusive disputed domain names.
The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the CARREFOUR trademark and for the purpose of this proceeding the Panel establishes that the IR’s Nos. 351147 and 353849 satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. If so, the domain name is normally considered confusing similar to that mark for the purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0.
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview.
The disputed domain names all incorporate the Complainant’s CARREFOUR trademark in its entirety, with addition of the following terms: the abbreviation “be”, which is the country code for Belgium, the Respondent’s country of residence, and descriptive terms “financing”, “service”, “services” and “diensten” (meaning services in Dutch, one of the official languages of Belgium).
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”, or as in this case “.email”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The CARREFOUR trademark is the dominant, recognizable portion of each disputed domain name and addition of various terms does not prevent a finding of confusing similarity.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the CARREFOUR trademark.
The Complainant has never authorized the Respondent to use its trademark in any way, and its prior rights in the trademark long precede the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
Use of the disputed domain names to redirect users to websites comprising pay-per-click links advertising services in competition with those of the Complainant cannot create rights or legitimate interests in the disputed domain names. See section 2.9 of the WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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 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 your website or location or of a product or service on your website or location.
The CARREFOUR trademark is distinctive and unique to the Complainant. A basic Internet search against the disputed domain names returns solely the Complainant and its businesses.
This in view of the Panel not only demonstrates that the Respondent knew of the Complainant’s trademark at the time of registration of the disputed domain names, but also the Respondent’s obvious intent to target the Complainant’s trademark and business through diverting Internet users to competing PPC websites generating revenue for either the Respondent or anyone else is activity that is well within the meaning of paragraph 4(b)(iv) of the Policy.
A number of UDRP panels have acknowledged that the Complainant’s CARREFOUR trademark is famous and widely-known. See e.g. Carrefour v. Contact Privacy Inc. Customer 0155401638 /Binya Rteam, WIPO Case No. D2019-2895 and Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610.
According to section 3.1.4 of the WIPO Overview, the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising of typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
In addition, registration of seven domain names, all fully incorporating the Complainant’s trademark in view of the Panel constitutes a pattern of conduct of preventing the trademark holder from reflecting its mark in a domain name within the meaning of paragraph 4(b)(ii) of the Policy. See section 3.1.2 of the WIPO Overview 3.0.
The fact that part of the disputed domain names resolve to inactive websites does not alter the Panel’s conclusion. According to section 3.3 of the WIPO Overview 3.0, passive holding of a domain name does not prevent a finding of bad faith.
For the reasons set out above, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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-be.email>, <carrefourfinance-be.email>, <carrefourfinance-diensten.email>, <carrefourfinance-service.email>, <carrefour-financing.email>, <carrefour-service.email>, <carrefour-services.email> be transferred to the Complainant.
Date: February 11, 2022
1 The Panel notes that WhoIs information provided by Complainant reflects that Respondent had employed a privacy service. Respondent in this case is identified as the underlying registrant as confirmed by the Registrar.