WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Whois Privacy Protection Foundation / Ken HUYT and Whois Privacy Protection Foundation / Njurii Jiuuis

Case No. D2021-3705

1. The Parties

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

The Respondents are Whois Privacy Protection Foundation, Netherlands / Ken HUYT, France and Whois Privacy Protection Foundation, Netherlands / Njurii Jiuuis, France.

2. The Domain Names and Registrar

The disputed domain names <carrefour-espaceclients.com>, <carrefour-espace-pass.com>, <client-carrefour-pass.com>, <client-pass-carrefour.com>, and <espaceclient-carrefour-pass.com> (the “Domain Names”, each a “Domain Name”) 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 November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contacts information for the Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2021, informing the multiple registrants and contacts information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint and providing relevant arguments or evidence demonstrating that all named Respondents are the same entity. The Complainant filed an amended Complaint on December 3, 2021.

The Center verified that the Complaint together with the amended Complaint satisfy 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 Respondents of the Complaint, and the proceedings commenced on December 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 30, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on January 17, 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

Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a multinational retail company headquartered in France.

The Complainant is the owner of several trade marks for CARREFOUR including the following:

- International Trade Mark registration No. 351147 for CARREFOUR, registered on October 2, 1968.

The Complainant is also the owner of the following trade mark:

- International Trade Mark registration No. 719166 for CARREFOUR PASS, registered on August 18, 1999.

The Complainant is also the owner of several domain names reflecting its CARREFOUR trade mark.

The Domain Names do not resolve to active websites and were registered on the dates shown in the table below:

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the CARREFOUR trade mark in which the Complainant has rights, as the Domain Names all incorporate the entire CARREFOUR trade mark (and two of them also reproduce the CARREFOUR PASS trade mark of the Complainant) with the mere addition of two or three of the following terms: “pass”, “espace”, and “client[s]”. The Complainant considers that such additions do not prevent the confusing similarity between the Domain Names and the Complainant’s trade marks. The Complainant also contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the Domain Names being connected to the Complainant’s CARREFOUR trade mark.

The Complainant asserts that the Respondents have no rights in the Domain Names and that the Respondents are not commonly known by the Domain Names. The Complainant contends that the Respondents are not authorised by the Complainant to use its CARREFOUR trade mark.

Furthermore, the Complainant contends that the Respondents have not, before the original filing of the Complaint, used or made preparations to use any of the Domain Names in relation to a bona fide offering of goods or services as the Domain Names either triggered a security alert for malicious content or an error message. The Complainant concludes that the Respondents have no rights or legitimate interests in the Domain Names.

The Complainant contends that the Respondents have registered and used the Domain Names with full knowledge of the Complainant’s CARREFOUR trade mark and the Complainant refers to prior UDRP panels finding that the Complainant’s CARREFOUR trade mark is well-known. The Complainant submits that the Respondents acquired and are using the Domain Names to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier registered trade mark. The Complainant also points to the fact that the Respondents registered the Domain Names over a short period of time to conclude that there is a pattern of abusive domain name registrations. The Complainant concludes that the Domain Names have been registered and are being used in bad faith.

B. Respondents

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

6. Discussion and Findings

6.1. Preliminary Issue: Consolidation

Given that the Complaint was filed against multiple Respondents, the Panel looked at whether (i) the Domain Names or corresponding websites are subject to common control, and whether (ii) the consolidation would be fair and equitable to all parties. The Panel also took into consideration procedural efficiency.

Based on the evidence produced and on the Panel’s review of each Domain Name and associated error message triggered by the Panel’s Internet search engine when trying to access the websites associated with the Domain Names, the Panel decides to allow the consolidation in light of the overall circumstances and in particular, (i) the fact that all the Domain Names were registered over a period of two days and through the same Registrar, (ii) similar pattern of use of the Domain Names whereby none of them currently point to active content and the Domain Names all trigger an error message, (iii) naming patterns in the Domain Names whereby they all reproduce the exact CARREFOUR trade mark of the Complainant with the addition of two or three of the following terms: “pass”, “espace”, and “client[s]” and (iv) similar DNS server setups.

6.2. Substantive Analysis

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met for each Domain Name, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondents whereby the Respondents did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in the CARREFOUR trade mark, which is reproduced in its entirety in the Domain Names.

The second point that has to be considered is whether the Domain Names are identical or confusingly similar to the CARREFOUR trade mark in which the Complainant has rights.

At the second level, the Domain Names all incorporate the entire CARREFOUR trade mark with the mere addition of two or three of the following terms: “pass”, “espace”, and “client[s]”. The Panel finds that the well-known CARREFOUR trade mark of the Complainant is instantly recognizable in all the Domain Names and that the various terms added to the Complainant’s CARREFOUR trade mark do not prevent a finding of confusing similarity arising from the incorporation of the Complainant’s exact CARREFOUR trade mark in the Domain Names.

Then there is the addition of the gTLD “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Names are confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] 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 trade mark or service mark at issue.”

Numerous previous panels have found under the UDRP that once the complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondents do not have rights or legitimate interests in the Domain Names.

The Complainant has stated that the Respondents have no rights in the Domain Names and that it has not licensed or otherwise authorised the Respondents to make any use of its CARREFOUR trade mark. There is no indication that the Respondents are commonly known by the Domain Names.

The absence of use or the past malevolent underlying use of the Domain Names and associated websites cannot be considered bona fide, legitimate, or fair.

Thus, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

“(i) circumstances indicating that [the respondent has] registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Names were registered in bad faith.

The Domain Names reproduce the exact CARREFOUR trade mark of the Complainant and this cannot be a coincidence. The Complainant has provided ample evidence of the substantial renown of the CARREFOUR trade mark, so the fact that the Respondents decided to register the Domain Names reproducing this term strongly suggests that the Respondents had the Complainant’s CARREFOUR trade mark in mind and targeted it specifically.

This is even more likely given (i) the choice of terms added to the Complainant’s CARREFOUR trade mark in the Domain Names which are closely related to the Complainant (one of them, “pass”, is a service of the Complainant and is included in one of the Complainant’s trade marks), and (ii) the fact that the Domain Names were registered relatively recently and many years after the registration of the Complainant’s CARREFOUR trade mark.

Thus, the Panel finds that the Domain Names were registered in bad faith.

As for use of the Domain Names in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the websites associated with the Domain Names, the Panel is satisfied that the Domain Names are used in bad faith.

As the Panel was able to confirm, the websites do not point to any active websites and trigger an error message. As evidenced by the Complainant, some of the Domain Names used to trigger a security warning indicating that the underlying website content was malicious. The current and past use of the Domain Names cannot be seen as use in good faith of the Domain Names.

In any event, passive use itself would not prevent a finding of the Respondents’ bad faith given the overall circumstances here, noting in particular the significant renown of the Complainant’s CARREFOUR trade mark and the Respondents’ default.

Furthermore, the Domain Names constitute a cybersecurity threat hanging over the Complainant and the Complainant’s customers or potential customers especially given that some of the Domain Names refer to “pass”, the Complainant’s banking service.

The fact that the Respondents chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Names are used in bad faith.

In addition, the fact that the Respondents used a privacy protection service provider to register the Domain Names demonstrates that the Respondents went to some length to hinder the enforcement efforts of the Complainant and this further supports a finding of bad faith.

Thus, the Panel finds that the Domain Names are being used in bad faith.

Accordingly, the Complainant has met its burden of showing that the Domain Names were registered and are being used in bad faith.

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 Domain Names, <carrefour-espaceclients.com>, <carrefour-espace-pass.com>, <client‑carrefour-pass.com>, <client-pass-carrefour.com>, and <espaceclient-carrefour-pass.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: January 31, 2022