WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Jean Dorangeville
Case No. D2016-2003
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Jean Dorangeville of Sissy, France.
2. The Domain Name and Registrar
The disputed domain name <carrefourbanque-fr.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 22, 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
The Complainant is Carrefour of Boulogne-Billancourt, France. Over the past 50 years the Complainant has grown to become the largest retailer in Europe and the second-largest in the world. It currently operates more than 10,800 stores in 34 countries, offering a wide range of products and services to more than 10 million customers daily. The Complainant communicates directly to its customers via various websites including "www.carrefour.com".
The Complainant is the owner of many national, international and European trademark registrations for CARREFOUR and BANQUE CARREFOUR, among which:
- International Trademark Registration No. 1010661 dated April 16, 2009 covering services in class 35,
- European Trademark Registration No. 008779498 dated July 13, 2016, also covering services in class 35,
- French Trademark Registration No. 3585968 dated July 2, 2008 for services in class 36.
The Complainant also owns various domain names, and operates certain of those domain names to promote its services:
- <carrefour.com> since October 25, 1995,
- <carrefour.fr> since June 23, 2005,
- <carrefour-banque.fr> since October 7, 2009.
The Respondent registered the disputed domain name on September 9, 2016.
According to the Complainant, the disputed domain name was initially used to operate a website displaying the Complainant's trademark and inviting Internet users to create account and provide personal information. Further to a cease and desist letter sent by the Complainant, the website operated under the disputed domain name was deactivated and is inactive at the time of the present decision.
5. Parties' Contentions
Firstly, the Complainant claims that the disputed domain name <carrefourbanque-fr.com> reproduces the Complainant's trademarks CARREFOUR and BANQUE CARREFOUR. Previous panels have furthermore considered the CARREFOUR trademark to be "well-known" or "famous".
The disputed domain name associates the Complainant's trademark CARREFOUR to the generic term "banque" and the ISO Code "fr" for France. However, generic terms do not dispel any likelihood of confusion. Indeed, numerous WIPO UDRP decisions have established that adding a generic and descriptive term to the Complainant's mark does not influence the similarity between a trademark and a domain name. On the contrary, the generic term "banque" increases the level of confusion as it corresponds to one of Complainant's field of activities.
Furthermore, the domain name <carrefourbanque-fr.com> reproduces the Complainant's trademark BANQUE CARREFOUR as well. Reversing the terms "carrefour" and "banque" does not prevent any risk of confusion with the trademark BANQUE CARREFOUR. Also, the disputed domain name <carrefourbanque-fr.com> is virtually similar to the Complainant's website at <carrefour-banque.fr>.
Secondly, the Complainant asserts that Respondent has no prior rights or legitimate interest in the domain name.
The registration of the trademarks CARREFOUR and BANQUE CARREFOUR preceded the registration of the disputed domain name for years.
The Respondent is not commonly known by the name "CARREFOUR", in any way affiliated with the Complainant, nor authorized or licensed to use the trademark "CARREFOUR", or to seek registration of any domain name incorporating said mark.
Besides, the Respondent used the domain name <carrefourbanque-fr.com> for a phishing website imitating the Complainant's official website "www.carrefour-banque.fr". This is clearly a case of phishing aiming to obtain confidential information from the Complainant's clients believing that the disputed domain name is endorsed by the Complainant. It goes without saying that this behavior is not a bona fide offering of goods or services.
Besides, the Complainant deems that it is likely that the person indicated as the registrant in the Whois database might not be the real registrant. Considering that the disputed domain name was used for phishing purposes, it is not unlikely that the real registrant has committed an identity theft. Thus, such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thirdly, the Complainant asserts that it is implausible that Respondent was unaware of the Complainant when he registered the disputed domain name. CARREFOUR is a well-known trademark throughout the world particularly in France where Respondent is located. Previous Panels have established that knowledge of the Complainant's intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration
The Respondent is engaged in a phishing scheme and clearly aims at stealing valuable information through the use of the domain name <carrefourbanque-fr.com>. Panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company. Customers or Internet users are being misled and deceived into believing they are dealing with the owner of the trademark.
At the time of the decision, the Domain Name has become inactive. However, the Complainant underlines that previous panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the Panel must give close attention to all the circumstances of Respondents' behavior.
As a consequence, the Complainant requests that the disputed domain name be transferred.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Having consideration to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
It is undisputed that the Complainant owns trademarks that either consist of or include CARREFOUR in several countries, especially in France, where both parties are based, and that BANQUE CARREFOUR is a trademark of the Complainant, dedicated to its financial services.
The Panel holds that the disputed domain name is identical or confusingly similar to the CARREFOUR trademark owned by the Complainant, given that the first part of the disputed domain name, "carrefour," is identical to the Complainant's famous trademark CARREFOUR, and the remaining part, "banque," is merely a generic term meaning "bank" in French, which is not a distinctive feature of the disputed domain name.
Therefore, the Panel finds the disputed domain name is likely to confuse the Internet users, especially the Internet users in France.
See in similar circumstances the decision in Saxo Bank A/S v. Domains by Proxy, Inc. / Forexmedia LTD, WIPO Case No. D2011-0018.
The addition of a generic top-level domain (gTLD) name such as ".com" is irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant's trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, 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 the Respondent's rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, its 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 it 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.
The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
In the circumstances of this case, the Panel finds that this constitutes a clear acknowledgment that it has no rights or legitimate interests in the disputed domain name.
There is nothing that indicates that the Respondent is commonly known by the disputed domain name.
The Complainant has not licensed or otherwise permitted the Respondent to use the CARREFOUR and/or BANQUE CARREFOUR trademarks, or to register any domain name incorporating the CARREFOUR trademark.
Furthermore, the Respondent has made an unfair use of the disputed domain name.
Before the Complainant sent a cease and desist letter, the disputed domain name resolved to a website displaying Complainant's trademarks requesting login/password credentials. Because of the obvious fame of the Complainant, any Internet user could rightly assume that this web page was linked to the Complainant.
The fact that the webpage at the disputed domain name would require personal information to access the website is proof that the first goal of the Respondent was to collect personal data from Internet users.
These elements demonstrate clearly a phishing scheme, which does not establish rights or legitimate interests in the disputed domain name. See for instance: ACCOR v. Gerard Dulan / Contact Privacy Inc. Customer 0141224969, WIPO Case No. D2015-1713.
In light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the second element of the paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
In light of the evidence submitted by the Complainant, the Panel finds that the Complainant's trademarks and activities are well established and well known, in France at the very least, in connection with the sector of banking services.
Accordingly in the Panel's belief, the Respondent must have known about the Complainant's existence and rights at the time of the registration of the disputed domain name <carrefourbanque-fr.com>.
Indeed, the Respondent's awareness of the Complainant's activity and rights is proven by the fact that the Respondent registered a domain name consisting in a variation of the Complainant's trademark and domain name BANQUE CARREFOUR (and <banque-carrefour.fr>).
Previous panels have established that knowledge of complainant's intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464), NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077 and Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287).
The Panel considers that the Respondent, by registering and using the disputed domain name incorporating the Complainant's registered trademarks, is indeed attempting to attract Internet users and the Complainant's customers to its website, which identify services that are similar to the type of services offered by the Complainant under its registered trademarks.
The Panel finds it likely that Internet users and customers may think that the Respondent is connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. However, based on the available record, none of this is true. In the Panel's view, such misleading behavior is indicative of bad faith of the Respondent.
Moreover, the disputed domain name is currently inactive (following the Complainant's action). Passive holding of a domain name can also be an evidence of bad faith use. See for example: Cetera Financial Holdings, Inc. v. Whois Privacy Protection Service, WIPO Case No. D2013-1831.
Having considered the above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.
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 <carrefourbanque-fr.com> be transferred to the Complainant.
Date: December 6, 2016