Sole panelist – Adv. Adi Barkan-Lev
Decision given on January 25, 2023
Background and claims of the parties:
The Petitioner, a French company, filed a petition for the transfer of the rights to the domain name carrefour-il.co.il (the “Domain Name”), which the Respondent is the holder of.
The Respondent registered the Domain Name on March 6, 2022. There is no active site under the Domain Name. The Petitioner operates, directly and through franchisees, thousands of stores worldwide. The Petitioner’s website operates at the address carrefour.com and it also owns other identical domain names with other suffixes. The Petitioner has dozens of trademarks registered around the world, including the trademark “CARREFOUR” registered in Israel. The Petitioner submitted and won another petition, against another holder, for the domain name carrefour.co.il. The Respondent has not submitted an answer to the petition.
Decision:
The Dispute Resolution Procedure of the Israel Internet Association (IL-DRP) is an alternative dispute resolution mechanism, which is designed to provide a quick solution for disputes concerning the allocation of domain names in the Israel top-level domain (ccTLD), and is conducted in accordance with the dispute resolution rules of the Association. The Respondent accepted these rules upon registering the Domain Name.
The rules state that a dispute regarding the assignment of a domain name will be resolved on the basis of the following grounds: the disputed domain name is identical or misleadingly similar to a trademark, trade names, registered company name or the registered name of a legal entity of the petitioner; And also – the petitioner has rights in the name and the respondent has no rights in the name; And also – the request for the disputed domain name assignment was submitted in bad faith.
The Petitioner proved that it owns many registered trademarks around the world, including a trademark registered in Israel for the CARREFOUR mark, and also that the Petitioner owns additional domain names that include the mark, including domain names that were transferred to it as part of a decision on a similar dispute it initiated in the past. The Petitioner’s trade name, the name of the legal entity under which it operates – all of these strengthen the Petitioner’s claim that the Domain Name is identical or misleadingly similar to a trademark, trade name, registered company name, or registration of a legal entity of the Petitioner. The addition “-il” and the suffix co.il. are “transparent” components, which must be ignored for the purpose of determining the similarity between the Domain Name in dispute and the Petitioner’s marks, since this is a common suffix that indicates that it is a domain name associated with commercial activity in Israel.
Since the component “carrefour” in the Domain Name is identical or misleadingly similar to the registered marks used by the Petitioner, therefore, the first condition of the rules is met.
The Petitioner provided significant evidence indicating its rights to the CARREFOUR mark. The Petitioner’s rights to the name have been proven. The Petitioner claimed that it did not authorize the Respondent to use its trademark or its trade name. In the absence of a response from the Respondent, the Petitioner’s claims in this matter must be accepted and it must be determined that the Respondent has no legitimate interest in the Domain Name, at least not one that outweighs the Petitioner’s legitimate interest.
The Petitioner claimed that the Respondent registered the Domain Name in his name while being aware of its online presence and its trademarks, all with the aim of benefiting from its reputation. The fact that the Respondent has not operated a website under the Domain Name for almost a year also reinforces the conclusion that the Domain Name was registered by the Respondent in bad faith. In the absence of a response from the Respondent, the Petitioner’s claims in this matter must be accepted. It appears that the Domain Name was purchased by the Respondent in order to interfere with the business of the Petitioner or to create a commercial advantage by creating a likelihood of confusion with the Petitioner’s name regarding the origin of the website located at the Domain Name, its location, the entities that finance it, entities related to it, or a product or service that will be presented in the future.
The panel has granted the petition and ordered the Domain Name to be transferred to the Petitioner within 30 days of receipt of the decision.
The above is a summary of the decision. For the full decision, click here [PDF]