WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo
Case No. D2019-0670
1. The Parties
The Complainant is Carrefour of Massy, France represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0152812191 of Toronto, Canada / Milen Radumilo of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <carrefurr.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 March 26, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2019, 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 March 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 29, 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 date of the Domain Name registration was confirmed by the Registrar to be September 30, 2018.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and redirects to a ‘parking page’ with links to advertisements, and with a statement on the bottom that says: “click here to buy this domain”.
The Complainant is the owner of the a number of trademark registrations, including inter alia, the following trademark registrations: French trademark CARREFOUR No. 1487274, registered on September 2, 1988, duly renewed, that covers services in classes 35, 36, 37, 38, 39, 40, 41,42. European trademark CARREFOUR No. 008779498, filed on December 23, 2009, registered on July 13, 2010 and covering services in class 35. European trademark CARREFOUR No. 005178371, filed on June 20, 2006, registered on August 30, 2007, duly renewed and covering goods and services in classes 9, 35 and 38.
5. Parties’ Contentions
The Complainant, Carrefour, is a global leader in food retail with its headquarters in France. Since it was founded in 1958, Carrefour has acquired considerable goodwill and renown, both in France as well as worldwide, in connection with a wide range of services, including supermarkets and banking and insurance services.
The Complaint alleges that Carrefour operates more than 12,300 stores and e-commerce sites in more than 30 countries and regions and employs more than 370,000 people worldwide. In 2017, Carrefour generated 88.24 billion euros in sales. Every day, Carrefour welcomes around 104 million customers around the world. Carrefour also receives 1.3 million unique visitors per day across all its websites, including “www.carrefour.com”. A pioneer in countries such as Brazil in 1975 and China in 1995, the Group now operates on three major markets: Europe, Latin America and Asia. With a presence in more than 30 countries, Carrefour generates more than 53% of its sales outside France. In 2018, Carrefour ranked amongst the top 10 French trademarks in the world, according to BrandZ Top 50 Most Valuable French Brands Report.
The Complainant alleges that the Respondent uses the Domain Name to direct Internet users to a parking page suggesting several commercial links and that reproduces Carrefour trademark. The Domain Name is now currently resolving to random websites and among others to a warning page that indicates that the computer of the user is infected and some files are automatically downloaded. Such use of the Domain Name demonstrates the Respondent’s intention to benefit abusively from the Complainant’s reputation and particularly from its trademark CARREFOUR for commercial gains or to download virus on the user’s computer. This cannot be considered as a use in good faith. This behavior results in customer diversion and unfair competition.
Furthermore, the Complainant argues that the presence of email server on the Domain Name cannot be considered as a use of good faith by the Respondent. In the present case, given the Complainant’s renown and goodwill worldwide and the nature of the Domain Name itself while misspelling the Complainant’s famous CARREFOUR trademark, there simply cannot be any “actual or contemplated good faith use” by the Respondent or any third party, as any use would result in misleading diversion and unfairly taking advantage of the Complainant’s rights.
The Complainant sent a ‘cease and desist’ email to the Respondent on 5 October 2018 (copy provided), to which the Complaint alleges a response was not received.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark CARREFOUR, in respect of a broad range of retail food goods and services. The Domain Name constitutes ‘typo-squatting’ and is confusingly similar to the trademark owned by the Complainant. Therefore, the Domain Name <carrefurr.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name could lead to phishing emails and would lead to a likelihood of confusion as to the source or sponsorship of the Domain Name. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for CARREFOUR. Further, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The slight misspelling does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel finds that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark CARREFOUR and uses it for the purpose of misleading and diverting Internet traffic. Given the Complainant’s goodwill and renown, the Panel agrees with the Complainant that the Respondent could simply not have chosen the Domain Name for any reason other than to deliberately cause confusion and to take unfair advantage of Complainant’s goodwill and reputation, which clearly constitutes bad faith.
Thus, the Panel finds that the Respondent’s use of the Domain Names creates confusion as to the source of the Domain Names in an attempt to trade on the goodwill associated with Complainant’s trademark. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy ¶ 4(b)(iv) and is consistent in this case. See WIPO Overview 3.0 at § 3.1.4 which states:
“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”)
Furthermore, the Panel finds that the presence of email server on the Domain Name constitutes a real risk of phishing scheme, aiming to deceive Internet users to believe they are dealing with the Complainant. See WIPO Case No. D2017-1225, Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj.
If all that were not enough, the Panel finds that the Respondent already registered domain names that reproduced the Complainant’s trademark CARREFOUR in which other UDRP Panels decided to transfer the disputed domain names to the Complainant. This finding of bad faith and ordering the Domain Name to be transferred is consistent with those decisions. See e.g. WIPO Case No. D2018-2203 <carrefourt.com>, WIPO Case No. D2018-2201 <supermercadocarrefour.com>, WIPO Case No. D2015-1851 <carrefour-sa.com>, WIPO Case No. D2018-2652 <carrefourconecta.com> and WIPO Case No. D2018-2662 <grupocarrefour.com>.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant and the Respondent’s failure to reply to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <carrefurr.com> be transferred to the Complainant.
Ellen B Shankman
Date: 5 May 2019