WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Almacenes Éxito S.A. v. Jack Altman

Case No. DCO2021-0043

1. The Parties

The Complainant is Almacenes Éxito S.A., Colombia, represented by Gómez-Pinzón Abogados, Colombia.

The Respondent is Jack Altman, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <carulla.com.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 to the Complainant on June 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

The Center sent an email to the Parties on June 2, 2021 regarding the language of the proceeding. The Respondent submitted a request for English to be the language of the proceeding on June 6, 2021. On the following day, the Complainant filed a translated Complaint in English.

The Center verified that the Complaint together with the translated 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Response was filed with the Center on July 12, 2021.

On July 14, 2021, the Complainant made a supplemental filing with the Center. On the same day, the Respondent made a supplemental filing with the Center.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 11, 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 a Colombian retailer that operates under various brands, including Carulla. The Complainant owns approximately 90 Carulla supermarkets, mostly in Bogota, Colombia. The Complainant owns many Colombian trademark registrations, including registration numbers 464948, 520963 and 549681, all for CARULLA, registered on November 21, 2012, June 30, 2015 and May 27, 2016, respectively, and specifying goods and services in classes 16, 36 and 11, respectively. The Complainant has also registered the domain name <carulla.com> that it uses in connection with an online store.

The Respondent is an individual resident in the United States. He describes his business as a digital agency dealing with domain names and websites.

The disputed domain name was registered on October 24, 2016. It redirects to <olimpica.com>, which is used in connection with an online store operated by Olímpica, a Colombian supermarket chain that is a competitor of the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the CARULLA mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent uses the disputed domain name to divert the customers of the Complainant by automatically redirecting them to the website of a competitor of the Complainant.

The disputed domain name was registered and is being used in bad faith. The disputed domain name is intended to attract Internet users who seek the official website of the Complainant at “www.carulla.com” and divert them to the online store of a competitor of the Complainant.

The passive holding of a domain name may constitute bad faith. Even if the disputed domain name redirected to the website of a competitor and this caused harm to the complainant, the mere registration of a domain name which is identical to a registered trademark is still a conduct that leads to a risk of confusion and association between two parties which are not linked. The Respondent failed to provide evidence of a legitimate use of the disputed domain name. It is unlikely that the Respondent registered a domain name identical to a registered trademark by chance, and only used it to tarnish the Complainant’s rights.

B. Respondent

The Respondent had no prior notice of this dispute. The Complainant never attempted to contact the Respondent to seek a resolution of this matter. The Respondent has no relationship to the Complainant, nor any business or interests in, or connection to, Colombia and he is not acting in bad faith. The Respondent registered and maintained the disputed domain name since 2016 with no complaints, issues or disputes since then.

The Respondent accepts that the disputed domain name was improperly redirecting to another website and has investigated the reason why, in good faith. The redirection was set up by a former employee after his employment was terminated about a year ago in order to cause harm to the Respondent. The Respondent operates a digital agency that deals with domain names and websites and the former employee had access to the business’s master account. Now that the Respondent is aware of the problem, he will of course turn off the redirection and make sure that it does not occur again.

Given the length of time since the disputed domain name was registered, and the fact that the Complainant never attempted to contact the Respondent or request a transfer of the disputed domain name, it is clear that the only issue in dispute is the redirection. Therefore, the Respondent offers to turn off the redirection as soon as the disputed domain name is unlocked and consider the matter settled. The Respondent requests that the Complaint be denied.

The CARULLA trademark is not registered or known in the United States, which eliminates any potential risk of confusion and association with the Colombian trademark. The disputed domain name was acquired and held on behalf of a real estate developer for a project named “Catulla” that has been delayed due to the COVID-19 pandemic. The project name is inspired by the fictional planet “Catulla” in the Star Trek television series. The disputed domain name was registered to redirect traffic from Internet users who misspell the project name. The Complainant should have registered the disputed domain name in the first place when it registered its other domain names containing “carulla”. The claim that it is unlikely that the Respondent registered a domain name identical to a registered trademark by chance, and only used it to tarnish the Complainant’s rights, is wrong and without basis. The Respondent requests the Complainant substantiate such claim, also considering that the disputed domain name has been registered since 2016 and the Complainant never made a claim or contacted the Respondent to negotiate.

6. Discussion and Findings

6.1 Preliminary Issues

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in English.

The Complainant originally requested that the language of the proceeding be Spanish but later submitted the Complaint translated into English. The Respondent requests that the language of the proceeding be English. His main arguments are that the Registration Agreement is in English, that he does not speak Spanish and is not willing to bear the costs of translation. As a result, all Parties’ submissions have been made in English or translated into English.

Given the above circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

B. Admissibility of the Translation of the Complaint

The Center sent an email to the Parties on June 2, 2021 regarding the language of the proceeding which gave notice that, should the Complainant failed to follow one of three options by June 5, 2021, the Complaint may subsequently be deemed withdrawn. One of those options was the submission of the Complaint translated into English. The Complainant subsequently submitted the Complaint translated into English after the deadline, on June 7, 2021.

The Respondent requests that the Complaint be deemed withdrawn for failure to submit the translation by the above deadline. The Complainant submits that it was granted a five day period to file the translation and filed by the deadline, which expired on June 7, 2021.

In accordance with paragraph 10(b) of the Rules, the Panel must ensure inter alia that each Party is given a fair opportunity to present its case. The Panel notes that the translation of the Complaint was indeed submitted two days late. Accordingly, the Complainant ran the risk that the Complaint would be deemed withdrawn. However, in the circumstances of the present dispute, the delay in submission was short and caused no unfairness to the Respondent. Therefore, in accordance with paragraph 10(d) of the Rules, the Panel decides that it will accept the Complaint as translated into English.

C. Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing on July 14, 2021 and the Respondent made his own unsolicited supplemental filing later the same day. Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.

The Complainant made its supplemental filing in order to “clarify” certain matters raised in the Response. The Respondent made its supplemental filing in order to reply to the Complainant’s supplemental filing.

Neither Party formally objects to the admission of the other Party’s supplemental filing. The Complainant’s supplemental filing represents its only opportunity to address the Respondent’s request that the Complaint be deemed withdrawn. The Respondent has taken the opportunity to reply so accepting both supplemental filings will cause no unfairness to either Party. Moreover, both supplemental filings were made before the appointment of the Panel, both are relatively brief, and accepting them will not unduly burden this proceeding.

Therefore, the Panel exercises its discretion to admit both Parties’ supplemental filings and will take them into consideration in this decision according to their respective relevance, materiality and weight as part of the evidence on the record.

D. Delay

The Respondent argues that the Complainant has delayed bringing the Complaint. The Panel has taken note that the disputed domain name was registered well over four years before the Complaint was filed. However, mere delay does not bar a complaint or prevent a complainant from prevailing on the merits. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the CARULLA mark.

The disputed domain name wholly incorporates the CARULLA mark as its operational element. Its only additional element is a Secondary Level Domain suffix (i.e., “.com.co”) but, as a standard technical requirement of domain name registration, this suffix can be disregarded in the comparison between the disputed domain name and the trademark unless it has some impact beyond its technical function, which is not the case here. See WhatsApp, Inc. v. F. Nunley Kathie, Kathie F. Nunley, WIPO Case No. DCO2017-0027.

The Respondent points out that the Complainant’s trademark is registered in Colombia whereas he does business in the United States. However, given the global nature of the Internet, among other things, the Panel does not consider the jurisdiction of the Complainant’s trademark rights relevant to the comparison between the disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.3.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name 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 name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the operative element of the disputed domain name is identical to the Complainant’s CARULLA mark. It creates a high risk of implied affiliation. Yet the disputed domain name redirects to the website of a competitor of the Complainant in Colombia. It is clear from the Complaint that the Respondent has not received any license or authorization from the Complainant to use the CARULLA mark in a domain name or otherwise. In view of these circumstances, the Panel consider that the Complainant has made a prima facie case that the Respondent is not making a use of the disputed domain name in connection with a bona fide offering of goods or services.

As regards the second circumstance, the Registrar’s verification email indicates that the Respondent’s name is “Jack Altman”, not “Carulla”. There is no evidence that the Respondent has been commonly known by the disputed domain name.

As regards the third circumstance, the disputed domain name redirects to a supermarket website. This use is either for the commercial gain of the Respondent, if he is paid to redirect traffic to that website, or the commercial gain of the supermarket chain that operates that website, or both. In any such scenario, this is not a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, he provides a wildly evolving story as to why he registered the disputed domain name. After providing no explanation in the Response, he later submitted that the disputed domain name is designed to redirect Internet users who mistype the name “Catulla” when searching for a future real estate development to be named after a fictional planet in Star Trek. He provides no evidence of any preparations to use the disputed domain name in connection with a real estate development of any kind. Nor does he provide evidence of another domain name registration containing the name “catulla” to which he claims the disputed domain name was intended to redirect. Accordingly, the Panel finds that the Respondent did not rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

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

As regards registration, the disputed domain name was registered in 2016, after the Complainant acquired its trademark rights in CARULLA. “Carulla” has no meaning of which the Panel is aware other than as a family name and a reference to the Complainant’s supermarkets. The operative element of the disputed domain name is identical to the CARULLA trademark, which does not appear coincidental. Although he is not located in Colombia, where the Complainant has registered its trademark and does business, the Respondent provides no plausible alternative explanation for his choice to register “carulla” in the disputed domain name. Moreover, the disputed domain name is registered in the country code Top-Level Domain of Colombia (“.co”) and redirects to the website of a competitor of the Complainant’s CARULLA supermarkets in Colombia. This all gives the Panel reason to find that the Respondent targeted the CARULLA trademark at the time that he registered the disputed domain name.

As regards use, the disputed domain name, which wholly incorporates the CARULLA mark, redirects to the website of a competitor of the Complainant’s CARULLA supermarkets in Colombia. This is a “bait and switch” tactic. The Respondent acknowledges that the redirection is improper but claims that it was set up by a rogue former employee. Given that the Respondent is the domain name registrant and took no steps to terminate the redirection before the disputed domain name was locked, he cannot disclaim responsibility for the use to which the disputed domain name is being put, regardless of whether the redirection harms his own business. In view of these circumstances and those set out in Section 6.2B above, the Panel finds that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s CARULLA trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name redirects. This use is for the commercial gain of the Respondent or the competitor, or both. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

The Respondent offers to turn off the redirection as a full resolution of this case. However, were the Respondent to remain the disputed domain name holder, a threat of bad faith use would persist after the conclusion of this proceeding. Given that the Complainant has satisfied all three elements in paragraph 4(a) of the Policy, it is entitled to the remedy that it seeks.

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 name <carulla.com.co> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 19, 2021