WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. Domains by Proxy, LLC / Name Redacted

Case No. DCO2019-0032

1. The Parties

The Complainant is Carrefour, France, represented by Dreyfus & associés, France.

The Respondent is Domains by Proxy, LLC, United States of America / Name Redacted ¹ .

2. The Domain Names and Registrar

The disputed domain names <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2019. On August 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2019, 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 September 3, 2019 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 September 6, 2019.

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 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent sent several email communications. An email from a third party with the same name and postal address of the registrant was sent to the Center on September 12, 2019. The Center notified the Commencement of Panel Appointment Process on September 30, 2019.

The Center appointed Edoardo Fano as the sole panelist in this matter on October 8, 2019. 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.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules, and the Supplemental Rules and without the benefit of a formal response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Carrefour, a French retail Group operating with more than 12,000 stores and e-commerce sites in more than 30 countries. The Complainant owns several trademark registrations for CARREFOUR, among which the following ones:

- International Trademark Registration No. 563304 for CARREFOUR, registered on November 6, 1990;

- European Union Trade Mark Registration No. 005178371 for CARREFOUR, registered on August 30, 2007;

- French Trademark Registration No. 1487274 for CARREFOUR, registered on September 2, 1988.

The Complainant operates on the Internet at several websites, including “carrefouregypt.com”, “carrefourjordan.com”, “carrefoursa.com”, “carrefourlebanon.com” and “carrefourqatar.com”, identical to the disputed domain names except for the Top-Level Domain (“TLD”) (“.com” instead of “.co”) and for the fact that the one referring to Saudi Arabia is missing the “K” for “Kingdom”.

The Complainant provided evidence in support of the above.

The disputed domain names <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co> were registered on March 12, 2019, according to the WhoIs records, and when the Complaint was filed the websites at the disputed domain names resolved to parking pages of the hosting provider with pay-per-click links and the disputed domain names being offered for sale.

On April 24, 2019 the Complainant sent a cease and desist letter to the Respondent receiving no reply despite several reminders.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co> are confusingly similar to its trademark CARREFOUR.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, nor is the Respondent commonly known by the disputed domain names. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark CARREFOUR is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the use of the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous trademark as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s associated websites qualifies as bad faith registration and use.

B. Respondent

The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted several short email communications, basically trying to sell the disputed domain names to the Complainant in exchange for a “decent amount”: the Panel considers that these email communications, do not provide any substantive argument.

Noting Respondent’s absence of substantive arguments and lack of answer to the Complainant’s contentions, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

On September 12, 2019 the Center received an email communication from a third party with the same name and address of the apparent Respondent alleging that it has never bought the disputed domain names.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark CARREFOUR both by registration and acquired reputation and that the disputed domain names <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co> are confusingly similar to the trademark CARREFOUR.

As far as the addition of the geographical terms “egypt”, “jordan”, “lebanon”, “qatar” and the geographical acronym “ksa” (standing for “Kingdom of Saudi Arabia”) are concerned, the Panel notes that it is now well established that the addition of dictionary terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the geographical terms “egypt”, “jordan”, “lebanon”, “qatar” and the geographical acronym “ksa” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a country code Top-Level Domain (“ccTLD”), in this case “.co”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

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

(iv) that 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”.

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark CARREFOUR is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co>.

As regards the use in bad faith of the disputed domain names, the Panel considers that bad faith may exist in redirecting Internet users to different websites with pay-per-click links, creating confusion among the Internet users.

The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.

Furthermore, the fact that the Respondent did not reply to the Complainant’s cease and desist letter is an additional indication of the Respondent’s bad faith.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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, <carrefouregypt.co>, <carrefourjordan.co>, <carrefourksa.co>, <carrefourlebanon.co> and <carrefourqatar.co> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: October 14, 2019

¹ The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST- 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances”).