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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. yxp

Case No. DLA2013-0002

1. The Parties

Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associes, France.

Respondent is yxp of Taizhou, Zhejiang Province, China.

2. The Domain Names and Registrar

The disputed domain name <carrefour.la> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

Complainant filed its Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2013. On September 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On September 6, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On September 9, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. Respondent did not submit any response. Accordingly, the Center entered Respondent’s default on October 4, 2013.

The Center appointed Kimberly Chen Nobles as the sole panelist in this matter on October 11, 2013. 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

Complainant is Carrefour, a French corporation, that operates in the field of retail, event tickets, travel, banking, and insurance. Complainant owns trademark registrations for the mark CARREFOUR in China, and internationally; Complainant registered CARREFOUR in China in 1994, in China with a logo in 2004, and internationally in 2009. Complainant operates websites at “www.carrefour.com”, registered in 1995, “www.carrefour.fr”, registered in 2005, “www.carrefour.com.cn”, registered in 2000, and “www.carrefour.in”, registered in 2006. Based on Complainant’s submissions and representations, Respondent does not possess a license or any authorization to use Complainant’s trademarks.

Respondent in this matter, according to the Registrar of the disputed domain name, is yxp. Respondent registered the disputed domain name on April 12, 2013.

5. Parties’ Contentions

A. Complainant

Complainant argues (1) that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; (2) that Respondent has no rights or legitimate interests in the disputed domain name; and (3) that Respondent registered and used the disputed the domain name in bad faith.

Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s well-known CARREFOUR mark because the disputed domain name fully incorporates the CARREFOUR mark. Complainant further argues that the addition of the top level domain suffix “.la” does not serve to differentiate use of the disputed domain name from Complainant’s mark.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, noting the lack of evidence that Respondent ever used any similar mark or that Respondent ever possessed any rights or legitimate interests in the disputed domain name.

Complainant asserts that Respondent’s registered the disputed domain name in bad faith, given the international reputation of Complainant’s mark. Complainant further argues that despite Respondent’s current non-use of the disputed domain name, bad faith use nonetheless exists because Respondent had actual or constructive knowledge of Complainant’s marks and does not hold any license or permission to use Complainant’s marks. Complainant further argues that bad faith use exists because there would not be “any plausible future active use of the disputed domain name by Respondent that would not be illegitimate […]” (Complaint, page 16). Complainant further relies on the concept of passive holding to substantiate bad faith use. Further still, Complainant looks to the lack of any response or explanation of any good faith use of the disputed domain name as evidence that any such use of the disputed domain name would be in bad faith.

B. Respondent

Respondent did not respond to Complainant’s contentions.

6. Discussion and Findings

A. Language of the Decision

The Registrar has confirmed that the language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. Respondent has not commented regarding the language of the proceeding. Complainant asserts that the language of the registration agreement for the disputed domain name is either in English or Chinese. Complainant argues that the registration of the disputed domain name using Latin characters indicates familiarity with languages other than Chinese and that that English is a common international language. More persuasively, the Panel notes that “Carrefour” has no meaning in Chinese pinyin, indicating an audience other than in China for any website that would resolve from the disputed domain name. The Panel concludes that English should be the language of the proceeding.

B. Standard for UDRP Proceedings

According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) The disputed domain name was registered and is being used in bad faith.

C. Identical or Confusingly Similar

The inclusion of the entire CARREFOUR mark within the disputed domain name militates strongly against Respondent. “In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark”. Research in Motion Ltd. v. One Star Global LLC, WIPO Case No. D2009-0227. Here, the disputed domain name is identical to Complainant’s registered trademarks. Moreover, the strength and widespread registration of the CARREFOUR marks, specifically in China where Respondent is located per the WhoIs data, supports Complainant’s contention that any use of the disputed domain name would lead to confusion.

The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is confusingly similar to Complainant’s CARREFOUR marks.

D. Rights or Legitimate Interests

The Panel finds that no evidence exists in the record to indicate that Respondent has any rights or legitimate interests in the word “Carrefour”. Further, no evidence exists in the record to indicate that any past or future use by Respondent of the disputed domain name would have any legitimate, noncommercial, or fair use, or that Respondent is commonly known by the disputed domain name. Further still, no evidence exists in the record to indicate that Respondent has any association or affiliation with Complainant in the form of a license, permission, or authorization to use the CARREFOUR mark. Complainant has thus presented a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not rebutted that prima facie case.

The Panel finds that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(a) requires Complainant to show both bad faith registration and bad faith use of the domain name.

As to bad faith registration, Complainant’s trademark is well-known internationally and registered specifically in China, the home country of Respondent. That fact, combined with Respondent’s identical use of Complainant’s full mark in its entirety suggests that Respondent likely knew of Complainant’s mark when Respondent registered the disputed domain name, which suggest opportunistic bad faith. Accordingly, and in the absence of any good faith explanation of Respondent’s action, the Panel finds that Complainant has established that Respondent registered the disputed domain name in bad faith.

As to bad faith use, Complainant has stated that “[t]he Respondent does not use the disputed domain name at present as it is currently inactive.” Such a statement that no use at all is occurring makes a finding of bad faith use problematic. None of the subparagraphs of 4(b) of the Policy directly apply in this case. Nonetheless, the Panel notes that the subparagraphs of paragraph 4(b) of the Policy are not exhaustive. Rather, paragraph 4(b) of the Policy provides “circumstances, in particular but without limitation, [that] if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Looking at all the circumstances, as explained below, the Panel finds that Complainant has established bad faith use sufficient to satisfy the Policy.

The Panel weighs Respondent’s failure to respond as supporting evidence of bad faith. see Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632. The absence of evidence as to how Respondent has used the disputed domain name in the past or intends to use the disputed domain name in the future results from Respondent’s failure to respond. The Panel also notes Complainant’s multiple email communications to Respondent, to which, based on the record, Respondent did not respond. (See Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc. WIPO Case No. D2002-0787). The Panel notes that Respondent has not attempted to challenge Complainant’s CARREFOUR mark such that Respondent has not acted as a good faith actor would, i.e. to provide explanation or argument to defend its actions.

The circumstances of this case present the question of whether a party that has clearly registered a domain name in bad faith can avoid an adverse ruling in a UDRP proceeding by not responding where the evidence of any actual use of the domain name is limited. The Panel notes that the lack of evidence of actual use does not establish that Respondent has never used the disputed domain name. Rather, any past use of the disputed domain name by Respondent could have gone unnoticed or undocumented. Alternatively, Respondent could simply be waiting to use the disputed domain name in the future. Complainant has raised the possibility that Internet users have attempted to access Complainant’s website but ended up on web page set up by Respondent; Complainant has also asserted that any plausible future activity of the disputed domain name by Respondent would be illegitimate. Further, Complainant’s arguments regarding passive holding are apropos to the question of whether a trademark holder must wait for overt activity before commencing a UDRP action to obtain transfer of the domain name. While the facts here are different from the passive holding decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the circumstances taken as a whole support a finding of bad faith.

Thus, when faced with a lack of evidence of actual use of the disputed domain name, where Respondent has clearly registered the disputed domain name in bad faith, where Respondent has not responded to the Complaint or to any of multiple attempted communications, and based on the strength of Complainant’s mark, Complainant’s registration of that mark within the jurisdiction where Respondent is located and where Respondent registered the disputed domain name, and the identical use of Complainant’s entire mark by Respondent, the Panel finds that bad faith use can be inferred from the circumstances. The Panel thus concludes that looking at all the circumstances, Complainant has established that Respondent registered and used the disputed domain name in bad faith and has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <carrefour.la> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: October 25, 2013

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