WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Hamdi Math
Case No. D2018-2653
1. The Parties
The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Hamdi Math of Madrid, Spain.
2. The Domain Name and Registrar
The Disputed Domain Name <carrefour-pass.net> is registered with 10dencehispahard, S.L. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name. The Center sent an email communication to the Complainant on December 4, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 7, 2018.
The Center sent an email communication, in English and Spanish, to the Parties on December 4, 2018, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on December 5, 2018. The Respondent did not reply to the Center’s notification.
The Center verified that the Complaint, together with the amended 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 December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 9, 2019. 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, Carrefour is a multi-local, multi-format and omni-channel retail Group, which operates more than 12,300 stores and e-commerce sites in 30 countries.
Currently, the Complainant operates on three major markets: Europe, Latin America and Asia.
In addition, the Complainant offers banking and insurance services. Carrefour Spain is the first national retailer to offer global mobile top-up solution to all Carrefour PASS card-holding customers.
The Complainant owns numerous trademark registrations for the terms CARREFOUR and CARREFOUR PASS. Among others, the Complainant is the owner of the following trademark Registrations:
- European Union trademark CARREFOUR, Registration No. 008779498, registered on July 13, 2010;
- European Union trademark CARREFOUR, Registration No. 005178371, registered on August 30, 2007;
- International trademark CARREFOUR PASS, Registration No. 719166, registered on August 18, 1999.
The Disputed Doman Name <carrefour-pass.net> was registered on August 31, 2018.
At the time of filing the Complaint, the Disputed Domain Name resolves to a page indicating that the requested page is temporary disabled.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks CARREFOUR and CARREFOUR PASS.
The addition of a hyphen in the Disputed Domain Name is insufficient to distinguish it from the Complainant’s trademarks, since the dominant portion of the Disputed Domain Name is CARREFOUR and CARREFOUR PASS trademarks. Moreover, the addition of the hyphen does not negate the confusing similarity.
Furthermore, the generic Top-Level Domain (“gTLD”) “.net” in the Disputed Domain Name does not affect the likelihood of confusion.
Finally, the Complainant submits that it is likely that the Disputed Domain Name could mislead Internet users into thinking that it is associated with the Complainant.
Rights or legitimate interests
The Complainant further submits that the Respondent is not affiliated with the Complainant in any way, nor authorized or licensed by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating its trademarks.
Moreover, the Respondent cannot claim prior rights or legitimate interests in the Disputed Domain Name as the Complainant’s trademarks precede the registration of the Disputed Domain Name for years.
What is more, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.
Registration and use in bad faith
The Complainant contends that it is implausible that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name.
Moreover, the composition of the Disputed Domain Name reproduces not one but two of the Complainant’s trademarks. This clearly indicates that the Respondent knew about the Complainant.
Furthermore, the Complainant’s trademark registrations significantly predate the registration date of the Disputed Domain Name.
The Complainant submits that a quick trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks.
Finally, the Complainant states that the fact that an email server has been configured on the Disputed Domain Name indicates that the Respondent is intending to or has engaged in a phishing scheme.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which 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. Language of the proceedings
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, the language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The Complainant has requested for the proceeding to be conducted in English due to the fact that the registrar’s website is available in three languages: Spanish, Catalan, and English. Thus, the language of the registration agreement of the Disputed Domain name is likely to be in that language.
Moreover, the Complainant also argues that it is located in France and has no knowledge of Spanish or Catalan.
It should be pointed out that the Respondent didn’t make any comment in this regard.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5 states the following: “[…], panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”
Therefore, taking into consideration the Complainant’s argument, the Panel decides that the language of the proceedings will be English, and that the decision will be rendered also in English.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademarks rights over the term CARREFOUR and CARREFOUR PASS.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <carrefour-pass.net> is confusingly similar to the Complainant’s CARREFOUR and CARREFOUR PASS trademarks. The Disputed Domain Name wholly incorporates the Complainant’s trademarks as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s trademarks in its entirety; the use of the hyphen does not alter the assessment of confusing similarity. Moreover, the addition, of the gTLD “.net” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name by several years.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has used its trademarks long before the Disputed Domain Name was registered.
The Complainant’s trademarks are well known as it has been recognized by previous decisions under the Policy (See Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; 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. Yunjinhua, WIPO Case No. D2014-0257).
In light of this, the Respondent had evidently knowledge of the Complainant’s trademarks when he registered the Disputed Domain Name. The addition of the generic term “pass” to the well-known trademark CARREFOUR (being CARREFOUR PASS, a service offered by the Complainant) in the Disputed Domain Name is evidence of this.
The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for its own commercial gain.
The Disputed Domain Name <carrefour-pass.net> is currently inactive. As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Name also amounts to bad faith.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith.
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-pass.net> be transferred to the Complainant.
Pablo A. Palazzi
Date: January 22, 2019