WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Andre Machado
Case No. DIO2020-0004
1. The Parties
Complainant is Carrefour, France, represented by IP Twins S.A.S., France.
Respondent is Andre Machado, Brazil.
2. The Domain Name and Registrar
The disputed domain name <carrefourbank.io> (the “Domain Name”) is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. That same day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 3, 2020. 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
In 1968, Complainant Carrefour pioneered the concept of hypermarkets. It is listed on the index of the Paris Stock Exchange. It operates more than 12,000 stores in more than 30 countries worldwide. With more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores, Complainant is a retail leader. Complainant additionally offers travel, banking, insurance or ticketing services which it sells under the CARREFOUR Mark (see, e.g., International trademark No. 351147, registered October 2, 1968; International trademark No. 353849, registered February 28,1969). Further, Complainant owns numerous domain names incorporating its CARREFOUR Mark (e.g., <carrefour.com>, registered since 1995.
The Domain Name was registered on April 17, 2020. According to the .IO Registry’s WhoIs public research tool, Respondent was unknown at the time of original filing of the Complaint. Respondent was later identified as Andre Machado. The Domain Name resolved to a page stating: “This site can’t be reached” and “carrefourbank.io’s server IP address could not be found. Try running Windows Network Diagnostics”.
5. Parties’ Contentions
The Domain Name is highly similar to the CARREFOUR Mark, including the Mark followed by the generic term “bank”. Adding that term to a well-known trademark in a domain name does nothing to diminish the likelihood of confusion arising from the domain name. The term “bank” only reinforces the risk of confusion insofar as Complainant offers bank services. Thus, the Internet user of average attention would highly likely believe that the Domain Name originates from Complainant or is endorsed or sponsored by it. Using the lower-case letter format and hyphen on the one hand and the addition of the country-code Top-Level Domain (“ccTLD”) “.io” on the other hand, are not significant in determining whether the domain name is identical or confusingly similar to the Mark.
Complainant found no CARREFOUR trademark owned by any other person than Complainant. Thus, Respondent has acquired no trademark right in CARREFOUR which could have granted Respondent rights in the Domain Name. Also, Complainant has found no evidence that Respondent has been commonly known by the Domain Name as an individual, business, or other organization. This is reinforced by the fact that Complainant began this proceeding soon after the Domain Name was registered to prevent Respondent from being commonly known by it. Further, Respondent reproduces Complainant’s CARREFOUR Mark in the Domain Name without any license or authorization from Complainant, which is a strong evidence of the lack of legitimate interest. Complainant submits that it has not authorized the use of the terms “carrefour” or terms similar thereto in the Domain Name in any manner or form Complainant has not, before the original filing of the Complaint, used or made preparations to use the Domain Name in a bona fide offering of goods or services. On the contrary, the Domain Name resolves to an error page. Because the adoption and extensive use by Complainant of the Mark predates the registration of the Domain Name, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name.
Complainant’s CARREFOUR trademark registrations significantly predate the registration date of the Domain Name. Also, Complainant and its CARREFOUR Mark is so widely known that it is inconceivable Respondent ignored the Complainant or its earlier rights in the CARREFOUR Mark. A simple search on an online search engine shows results only related to Complainant. Therefore, at the very least, Respondent knew or should have known that, when acquiring and using the Domain Name they would do so in violation of Complainant’s earlier rights. It is very likely Respondent chose the Domain Name because of its identity with a trademark in which Complainant has rights and legitimate interest. This was most likely done in the hope and expectation that Internet users searching for Complainant’s services and products would instead come across Respondent’s site. Lastly, Complainant contends that Respondent engaged in a pattern of behavior reproducing Complainant’s well-known Mark in several domain names. See for example the recent decision in case Carrefour v. Andre Machado, WIPO Case No. D2020-0922 against the domain name <carrefour.cam>. This is a strong evidence of bad faith on the part of Respondent.
The relevant issue is not limited to whether Registrant is undertaking a positive action in bad faith in relation to the Domain Name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith. Inaction is within the concept. In light of all the elements above, Complainant contends that the Domain Name was registered and being used in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy as amended generally conforms to the Uniform Domain Name Dispute Resolution Policy (UDRP). The factors set forth in paragraph 4 of the Policy are identical to those set forth in paragraph 4 of the UDRP with one exception. Bad faith, as noted in paragraph 4(a)(iii) of the Policy merely requires a complainant to provide sufficient proof of either bad faith registration or bad faith use, not, as required by the UDRP, both. The Panel will rely on relevant UDRP jurisprudence for appropriate guidance, though cognizant of and taking this difference into account.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the CARREFOUR Mark by virtue of the aforementioned trademark registrations.
The Domain Name <carrefourbank.io> incorporates in its entirety Complainant’s CARREFOUR Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082, see also, Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo, WIPO Case No. D2019-0670.
Furthermore, adding the term “bank” does not alter the assessment of confusing similarity. See Crédit industriel et commercial S.A. v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2016-2447 (holding the domain name at issue <bank-cic.net> fully incorporates Complainant’s CIC Mark, adding the generic word “bank” does not avoid confusion or distinguish the domain name from the CIC mark, the word “bank” describes Complainant’s core services and so it is more likely to increase confusion). Similarly adding the ccTLD “.io” does not change the finding of confusing similarity because the TLD is generally disregarded in such an assessment.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
On the evidence of record, it is uncontested that Respondent has no rights or legitimate interests in the Domain Name.
Complainant maintains: (1) it has not found an owner of the CARREFOUR Mark other than itself. Thus, It maintains that Respondent does not have rights in the CARREFOUR Mark which could have permitted him to have rights in the Domain Name; (2) it has not found any evidence that Respondent has been commonly known by the Domain Name as an individual, business, or other organization; (3) it has not granted Respondent any license or authorization to reproduce Complainant’s CARREFOUR Mark in the Domain Name or for any other purpose; and (4) Respondent has not used or made preparations to use the Domain Name in a bona fide offering of goods or services because the Domain Name resolves to an error page.
Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
It is undisputed Complainant has been doing business under the CARREFOUR Mark since the 1960’s and Respondent registered the Domain Name on April 17, 2020, many years after Complainant’s trademark registrations issued (see for example, International Trademark No. 351147, registered October 2, 1968; International Trademark No. 353849, registered February 28, 1969). A gap of years between registration of a complainant’s trademark and respondent’s registration of a domain name containing the trademark at issue can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). Here, Respondent registered the Domain Name 52 years after Complainant established registered trademark rights in the CARREFOUR Mark. And it is undisputed that Complainant has a worldwide reputation. It is further undisputed: (1) Complainant advertises and sells its products and services through its website at “www.carrefour.com” (the domain name was registered in 1995); (2) Complainant is listed on the index of the Paris Stock Exchange; and (3) under the CARREFOUR Mark it operates more than 12,000 stores in more than 30 countries worldwide, and employs more than 384,000 employees worldwide. Given this undisputed evidence, the Panel finds it more likely than not that Respondent was aware of Complainant and its CARREFOUR Mark when it registered the Domain Name.
Respondent’s bad faith registration is also evidenced by the facts that the Domain Name <carrefourbank.io>: (1) was formed by adding “bank” to the CARREFFOUR Mark, which relates to Complainant’s business and work (e.g., Complainant offers banking services and its foundation donates meals to support its international food bank collection campaign); (2) is confusingly similar to the Mark; and (3) is not being legitimately used by Respondent.
The non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.3. Here, the Domain Name resolved to a page stating: The Domain Name resolved to a page stating: “This site can’t be reached” and “carrefourbank.io’s server IP address could not be found. Try running Windows Network Diagnostics”. While panelists will look at the totality of the circumstances in such cases, some of the factors they have considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) respondent’s concealment of its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. As indicated above, the Panel has found that Complainant and its CARREFOUR Mark have an international reputation. Indeed, that reputation has preceded the registration of the Domain Name by scores of years. Moreover, Respondent here failed to submit any response or provide any evidence of actual or contemplated good-faith use of the Domain Name. Further, in combining the CARREFOUR Mark with the descriptive term “bank”, which refers to products and services offered by Complainant, it appears that Respondent clearly intends to impersonate Complainant to attract users to its own website. Thus, the Panel concludes bad faith use of the Domain Name is present here under the passive holding doctrine.
Furthermore, panels have found that a respondent’s attempt to cause confusion, its lack of rights or legitimate interests in the disputed domain name, and the absence of any conceivable good faith use, are all circumstances which support a finding that a respondent registered the domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark. WIPO Overview 3.0, section 3.1.4. As previously determined, Respondent has registered a Domain Name that is confusingly similar to Complainant’s well-known Mark and that it has no rights or legitimate interests in. Further, as mentioned above, combining the well-known CARREFOUR Mark in its entirety with the term “bank”, which refers to products and services offered by Complainant, leads to the conclusion that Respondent does not have a good faith intent but, rather, an intent to infringe Complainant’s Mark. Thus, the Panel finds that the above circumstances are present in the current dispute.
Lastly, panels have held that establishing a pattern of bad faith conduct may be found on the basis of as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. WIPO Overview 3.0, section 3.1.2. Complainant contends that Respondent has engaged in a pattern of behavior reproducing Complainant’s Mark in several domain names namely this case and in Carrefour v. Andre Machado, WIPO Case No. D2020-0922 (in which case the disputed domain name was <carrefour.cam>). The Panel concludes further evidence of Respondent’s bad faith is his registration of domain names using Complainant’s well-known Mark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <carrefourbank.io> be transferred to Complainant.
Harrie R. Samaras
Date: August 11, 2020