Carrefour SA. v Amanda Deal

WIPO Case No. D2024-4389

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA. v. Amanda Deal

Case No. D2024-4389

1. The Parties

The Complainant is Carrefour SA., France, represented by IP Twins, France.

The Respondent is Amanda Deal, United States of America.

2. The Domain Name and Registrar

The disputed domain name <carrefour-on-boardcheap.shop> is registered with Web Commerce

Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2024.
On October 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On October 26, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on October 28, 2024, 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 October 28, 2024.

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 October 29, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 18, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 19, 2024.

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The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 25, 2024. 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 a French retail company, which operates in more than 30 countries and pioneered the concept of hypermarket back in 1968.

The Complainant owns numerous trademark registrations in different regions of the world for the brand
CARREFOUR, such as the International registration No. 351147, registered on October 2, 1968; and the
International registration No. 353849, registered on February 28, 1969.

In addition, the Complainant also owns several domain names reflecting its trademark CARREFOUR, including <carrefour.com> (registered on October 25, 1995).

The Respondent is Amanda Deal.

The Respondent registered the disputed domain name on September 13, 2024.

The Complainant submitted evidence showing that the disputed domain name is linked to an online supermarket website entitled “Carrefour-On-BoardCheap”. The section “A Propos De Nus” of the said website basically states it is a high-level online retailer, offering products at affordable prices due to long- term and strong partnerships with producers worldwide. The Panel accessed the disputed domain name on December 2, 2024, and the use of the disputed domain name remains the same.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the Complainant’s trademark CARREFOUR. The Complainant highlights its well-established global reputation, supported by numerous international trademark registrations and domain names that predate the registration of the disputed domain name. The disputed

domain name fully incorporates the Complainant's trademarks, with the addition of generic terms and
hyphens, which do not diminish the likelihood of confusion. The Complainant asserts that the use of its
trademark in the disputed domain name creates a clear association with its brand, satisfying the first

condition under the Policy.

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

Respondent is not associated with the Complainant, has no trademark rights, and is not commonly known by the disputed domain name. Additionally, the Complainant has not authorized the Respondent to use its trademarks. The disputed domain name resolves to a website offering products, including CARREFOUR branded items, misleading consumers into believing the site is affiliated with the Complainant. This exploitation of the Complainant's goodwill, without disclaimers or legitimate noncommercial use, further demonstrates the Respondent's lack of rights or legitimate interests. The Complainant asserts that the Respondent’s use of the disputed domain name violates the Policy and satisfies the second condition.

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- The disputed domain name was registered and is being used in bad faith. The Respondent was

aware of the Complainant’s trademarks and reputation, as evidenced by the deliberate incorporation of the registration and use of the disputed domain name aim to mislead users, create confusion, and profit from the Complainant’s reputation. The Respondent’s actions, including passive holding and operating a website with insufficient transparency, demonstrate a deliberate attempt to exploit the Complainant’s goodwill for commercial gain. Furthermore, the Complainant sees no plausible good-faith use for the disputed domain name. The combination of these factors supports the Complainant’s claim that the disputed domain name was registered and is being used in bad faith, satisfying the third condition under the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights;
(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. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Annex 4 to the Complaint shows numerous trademark registrations for CARREFOUR. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name incorporates the Complainant’s trademark CARREFOUR, with the addition of
“-on-boardcheap” as a suffix.

Although the addition of hyphens and other terms (here, “-on-boardcheap”) may bear on assessment of the second and third elements, the Panel finds the addition of such figure does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well established that the addition of a Top-Level Domain (“TLD”), such as “.shop”, is typically disregarded when determining whether a domain name is confusingly similar to a complainant’s trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark and that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds no indication that the Respondent is commonly known by the disputed domain name.

The Complainant has asserted that the Respondent is not an authorized representative, nor has obtained any permission to register the disputed domain name and link it to a website for such reproductions of trademarks, logos, and copyrighted materials. Therefore, the Panel finds that the nature of the disputed domain name comprising the Complainant’s trademark with the addition of hyphens and of the expression “on board cheap” and the “.shop” TLD, indicates an awareness of the Complainant and its trademark and intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The disputed domain name includes the trademark CARREFOUR in its entirety. According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity

can by itself create a presumption of bad faith.

Also, when the disputed domain name was registered in 2024, the CARREFOUR trademark was already notorious and directly connected with the Complainant’s retail services worldwide, including in the United States of America.

Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the registration of the disputed domain name was a mere coincidence. Actually, the choice of words to compose the disputed domain name (“on board cheap” and “shop”) and the use of the disputed domain name to host an online competing supermarket make clear that the intent of the Respondent with the disputed domain name was to specifically target the Complainant’s trademark. So that the Panel holds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the Respondent’s website.

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Consequently, having reviewed the record, the Panel finds the registration and use of the disputed domain name constitute 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 <carrefour-on-boardcheap.shop> be transferred to the Complainant.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: December 9, 2024