WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour v. André Petit

Case No. D2015-2360

1. The Parties

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

The Respondent is André Petit of Québec, Canada.

2. The Domain Name and Registrar

The disputed domain name <carrefourcommercial.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2015. On December 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.¹

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2016.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on February 4, 2016. 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

According to the Complainant, it is the leading retailer in Europe and the second-largest retailer in the world, employing more than 380,000 people. With more than 11,900 stores in 35 countries, it generated revenues of EUR 100.5 billion in 2014.

As a multi-format, multi-channel and multi-location retailer, the Complainant responds to the diverse needs of its urban and rural customers, both individual shoppers and trade clients, wherever they are in the world. In addition, the Complainant states that it updates its stores on an ongoing basis to create a more comfortable shopping experience and improved service quality whilst reducing its environmental impact.

Furthermore, the Complainant indicates that it is a major player in global retail with strong roots in its local communities. Currently operating in mainland France and its overseas territories, and in Europe, Latin America, Asia, as well as in North Africa and the Middle East, the Complainant relies on a network of integrated and franchised stores, along with the stores it runs with local partners.

The Complainant noticed that the disputed domain name <carrefourcommercial.com> reproduced entirely the Complainant’s trademark CARREFOUR with the addition of the generic term “commercial”. The disputed domain name initially directed to an online store in French.

On January 7, 2015, the Complainant sent a cease-and-desist letter to the privacy service employed at the time by the Respondent, via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the privacy service to reveal the identity and contact details of the registrant, to cease the use of the disputed domain name and to cancel it.

Shortly after the sending of the cease-and-desist letter, the privacy service replied and revealed the registrant’s identity. By then, a cease-and-desist letter was sent to the Respondent via registered letter and email on the basis of the Complainant’s trademark rights to request the Respondent cease the use of the disputed domain name and to cancel it.

However, no response was obtained from the Respondent despite several reminders. The website which was linked to the disputed domain name was changed to an index page after the sending of the cease-and-desist letter to the Respondent.

The Complainant submits that under the trademark CARREFOUR it enjoys a worldwide reputation. Moreover it owns numerous trademark registrations for the mark CARREFOUR around the world.

In particular, the Complainant is the owner of International Trademark Registration CARREFOUR number 1010661 dated April 16, 2009 covering services in Class 35.

The Complainant is the owner of the domain name <carrefour.com> which incorporates the trademark CARREFOUR.

The disputed domain name <carrefourcommercial.com> was registered on October 18, 2014, well after the Complainant secured rights to the trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered mark in which the Complainant has rights.

The Complainant is and has been for many years (and before the disputed domain name was registered) the holder of the mark CARREFOUR (the “Trademark”) in numerous countries worldwide for services in class 35.

The Complainant contends that the disputed domain name is similar to the Complainant’s Trademark and domain name <carrefour.com>, which were both registered before the disputed domain name.

More precisely and by invoking several UDRP decisions, the Complainant contends that the disputed domain name, by combining the Trademark of the Complainant in its entirety and the generic term “commercial”, creates a confusing similarity.

The Complainant further asserts that the mere addition of the generic Top-Level Domain (“gTLD”) “.com” does not have to be taken into consideration when examining the identity or similarity between the Trademark and the disputed domain name.

Moreover, the Complainant contends that there is a risk of confusion given that the previous website set up by the Respondent corresponded to the Complainant’s activities. Hence, the Complainant contends that by registering and using the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s Trademark and thus it is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in CARREFOUR and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

More particularly, the Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register its Trademark, or to seek registration of any domain name incorporating said Trademark. Furthermore, the Complainant asserts that the Respondent has no prior rights or legitimate interests in the disputed domain name. Accordingly, the Complainant concludes that, in the absence of any license or permission from the Complainant to use its widely-known Trademark, no actual or contemplated bona fide use of the disputed domain name could reasonably be claimed.

Moreover, the Complainant asserts that the previous use of the disputed domain name for an online store (a marketplace in French) under the name “Carrefour Commercial” cannot be considered a legitimate one.

The Complainant further contends that the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. According to the Complainant, such assertion is supported by the fact that following the cease-and-desist letter sent to the Respondent, the disputed domain name resolved to an “index” page. In the same vein, the Complainant argues that the absence of any answer to its cease-and-desist letter, despite the Complainant’s reminders, allows for the assumption that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that the Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent the Complainant from contacting him.

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

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

First, with respect to the registration of the disputed domain name, the Complainant contends that given the reputation of its Trademark, it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. Such assertion is reinforced by the fact that the Respondent, in the disputed domain name, associated with the mark CARREFOUR the generic term “commercial” which refers to the Complainant’s activities. Also, on the basis of the evidence submitted and in particular the previous webpages set up by the Respondent, the Complainant concludes that there is no doubt that the Respondent knew about the Complainant’s existence and activities at the time of registration.

In addition, the Complainant argues that the registration of the disputed domain name with a privacy shield service indicates registration in bad faith. Similarly, the fact that the Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the disputed domain name in response to the Complainant’s cease-and-desist letter allows for the conclusion that the disputed domain name was registered in bad faith.

Second, with respect to the use of the disputed domain name, the Complainant puts forward several arguments to support that the Respondent uses the disputed domain name in bad faith.

More specifically, the Complainant argues that in the absence of any license or permission from the Complainant to use its widely known Trademark, no actual or contemplated bona fide use of the disputed domain name could reasonably be claimed.

Moreover, given that the disputed domain name is confusingly similar to the Complainant’s Trademark, a likelihood of confusion may be presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site. In this context, the Complainant reminds the Panel that the disputed domain name previously resolved to an online store under the name “Carrefour Commercial”.

Regarding the current inactive website at the disputed domain name, the Complainant contends that, in light of the surrounding circumstances and the Respondent’s overall behavior, such passive holding does not result in use in good faith.

Finally, the Complainant asserts that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its Trademark in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and (2 ) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CARREFOUR, dating to well before the disputed domain name was registered. Also, the Complainant has sufficiently demonstrated and evidenced its lengthy use of its Trademark for its commercial activities. This Panel finds that the Trademark is a well-known trademark.

The above conclusions are supported by several previous UDRP decisions (see, for instance, Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe carrefour, WIPO Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067).

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive and well-known CARREFOUR Trademark in which the Complainant has exclusive rights. This Panel finds on the basis of previous UDRP decisions, including cases involving the Complainant, that it is established that where a domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark for the purposes of the Policy.

Thirdly, according to previous UDRP decisions, mere addition of common or generic terms is, in general, insufficient to make a domain name distinctive such that it is not confusingly similar to a complainant’s registered trademark (see Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to, WIPO Case No. D2012-0739; Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith, WIPO Case No. D2012-0847; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694). Consequently, this Panel finds that the addition of the generic term “commercial” does not prevent the disputed domain name from being confusingly similar to the Trademark.

Fourthly, this Panel finds that, in the circumstances of this case, the addition of the gTLD “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for UDRP purposes (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877; Telecom Personal, S.A. v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s CARREFOUR Trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “Carrefour” or is in any way affiliated with the Complainant or authorised or licensed to use the mark CARREFOUR or to seek registration of any domain name incorporating the Trademark.

This Panel further finds that the previous use of the disputed domain name, as sufficiently evidenced by the Complainant, which directed to an online store (a marketplace in French) under the name “Carrefour Commercial”, cannot be considered as a legitimate one.

Furthermore, this Panel finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Such conclusion is supported by the Respondent’s failure to show any intention of noncommercial or fair use of the disputed domain name and the Respondent’s behaviour, such as in particular: (i) his failure to respond to the cease-and-desist letter sent by the Complainant; (ii) the registration of the disputed domain name with a privacy shield service; and (iii) directing the disputed domain name to an online store (a marketplace in French) under the name “Carrefour Commercial” and then to an “index” page.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website at the disputed domain name as evidenced by the Complainant, and in particular the previous website which directed to an online store (a marketplace in French) under the name of “Carrefour Commercial”, that the Respondent must have known of the Complainant’s well-known Trademark and its associated activities at the time of the registration of the disputed domain name.

Furthermore, this Panel finds that the Respondent’s deliberate concealment of his identity and contact information indicates in itself bad faith (TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725; Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729).

This Panel has further considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name. As asserted by the Complainant, and supported in evidence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trademark and that, with the previous website, the Responded attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark.

Moreover, with respect to the current inactive website to which the disputed domain name resolves, after examination of the surrounding circumstances and the Respondent’s overall behavior, this Panel finds that the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances of this case which lead to this conclusion are as follows: (i) the Complainant’s Trademark has a strong reputation and is widely known, as evidenced by its substantial use; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and (iii) the Respondent has taken active steps to conceal his true identity (Telstra Corporation Limited v. Nuclear Marshmallows, supra).

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used in bad faith under 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 <carrefourcommercial.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: February 18, 2016

¹ The Panel notes that the first name of the registrant of the disputed domain name as reported by the Registrar is “Andra(c)”. However, “a(c)” appears to be the Registrar’s method of representing “é”, as the Registrar also represents “Québec” as “Qua(c)bec”.