WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Fadi Mahmoud
Case No. D2021-3736
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
The Respondent is Fadi Mahmoud, Jordan.
2. The Domain Names and Registrars
The disputed domain names <كارفور.com> [xn--mgbua7dh7a.com] and <كارفور.shop> [xn--mgbua7dh7a.shop] are registered with GoDaddy.com, LLC.
The disputed domain name <كارفور.vip> [xn--mgbua7dh7a.vip] is registered with Wild West Domains, LLC.
(collectively referred to as “disputed domain names” and “Registrars”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2021, the Registrars 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 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 Center received two email communications from the Respondent on November 19 and November 21, 2021. The Complainant filed an amended Complaint on November 24, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Center notified the commencement of Panel appointment process on December 24, 2021.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on December 30, 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 operates in the field of retail in more than 30 countries worldwide. The Complainant owns many trademark registrations for CARREFOUR such as International registration No. 351147 registered on October 2, 1968. The Complainant owns trademark registrations for CARREFOUR in Latin characters together with transliteration into Arabic (كارفور) including Jordanian trademark registrations No. 63461 registered on August 26, 2001 and No. 96130 registered on January 20, 2008.
The disputed domain names were registered by the Respondent on August 9, 2021.
The disputed domain names resolve to parked webpages hosting PPC (pay-per-click) sponsored links.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark CARREFOUR and has registered it in many countries. The Complainant’s trademark CARREFOUR has been recognized by prior UDRP panels as a well-known trademark. The Complainant also operates in Jordan where the Respondent is based. The disputed domain names are identical to the Complainant’s trademark as they incorporate it.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent owns any trademark for كارفور nor that the Respondent is commonly known by the disputed domain names. The Complainant did not authorize the Respondent to use its trademark in the disputed domain names. There is also no evidence to show the Respondent’s use of or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the disputed domain names resolve to PPC pages. The use of the trademark by the Complainant precedes the registration of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Respondent knew of the Complainant’s trademark as the Complainant and its trademark are
well-known. The disputed domain names were registered with the intent to attract Internet users by creating confusion with the Complainant’s trademark. The disputed domain names resolve to PPC webpages containing commercial links, which allows the Respondent to earn money. The use of the trademark by the Complainant significantly predates the registration of the disputed domain names. Given the number of the disputed domain names, the Respondent has engaged in a pattern of behavior which is evidence of bad faith.
The Respondent did not submit a formal response. In his email communications, the Respondent contended that the disputed domain names were bought from the Registrar legally, that he was not aware of any trademarks issues, and the Registrar did not notify him (of any). He informed the Complainant that he was willing to sell them to the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for CARREFOUR, and the transliteration into Arabic (كارفور). The Panel is satisfied that the Complainant has established its ownership of the trademark CARREFOUR, and كارفور.
The disputed domain names incorporate the Complainant’s trademark CARREFOUR in its entirety in Arabic letters. CARREFOUR is a well-known trademark in many countries where the Complainant has its operations. It is established that the incorporation of a well-known trademark is sufficient to establish confusing similarity. The generic Top-Level Domains (“gTLD”) “.com”, “.shop” and “.vip” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain names are identical to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Complainant further asserts that the Respondent is not using the disputed domain names for a bona fide offering of goods or services, and the Respondent is not commonly known by the disputed domain names. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.
Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and good will of the complainant’s mark. The PPC links seem to resolve to websites which offer products similar to those offered by the Complainant such as grocery items. Accordingly, the Panel is of the view that the Respondent is trying to capitalize on the reputation and good will of the Complainant’s mark. In Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, it was found that the Respondent had no rights or legitimate interests as “the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain name”.
The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant’s trademark as CARREFOUR is a well-known trademark. The disputed domain names resolve to parked pages with sponsored links. Such use here constitutes bad faith. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 the Panel found that “While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”
Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the Respondent has registered the disputed domain names in order to trade off the reputation of the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied 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 disputed domain names, <كارفور.com> [xn--mgbua7dh7a.com], <كارفور.shop> [xn--mgbua7dh7a.vip] and <كارفور. vip> [xn--mgbua7dh7a.vip], be transferred to the Complainant.
Date: January 10, 2022