Carrefour SA. v asd asd

WIPO Case No. D2024-4434

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA. v. asd asd

Case No. D2024-4434

1. The Parties

1.1 The Complainant is Carrefour SA., France, represented by IP Twins, France (the “Complainant”).

1.2 The Respondent is asd asd, Brazil (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <carrefourinvest.org> (the “Disputed Domain Name”) is registered with

CloudFlare, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, the Complaint. The Center sent an email communication to the Complainant on November 1, 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 November 4, 2024.

2024. On October 30, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Disputed Domain Name. On November 1, 2024, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the Disputed
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 November 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2024.

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The Center appointed Ike Ehiribe as the sole panelist in this matter on November 29, 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

4.1 The Complainant is Carrefour S.A. based in Paris, France and known as worldwide leader in retail and a pioneer of the concept of hypermarkets. In the year 2018, the Complainant generated a turnover of EUR 76 billion. The Complainant is listed on the Paris stock exchange and operates in more than 30 countries

worldwide and with over 384,000 employees.

The Complainant owns numerous trademark rights worldwide and in particular owns the following trademark
registrations created well before the Disputed Domain Name was registered; namely, (a) European Union
trademark CARREFOUR No. 008779498 registered on July 13, 2010, duly renewed and designating goods
in international class 35; (b) International trademark CARREFOUR No. 563304 registered on November 6,
1990, duly renewed and designating goods in international class 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14,
15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, and
42, (c) French trademark CARREFOUR No. 1565338 registered on May 25, 1990 duly renewed and
designating goods in International class 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21,
22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, and 34, (d) United States of America trademark CARREFOUR
No. 6763415 registered on June 21, 2021 duly renewed and designating goods in international class 35.
The Complainant also owns numerous domain names incorporating the CARREFOUR trademark with which
the Complainant uses to promote its products and services worldwide such as <carrefour.com> and
<carrefour.fr> both registered well before the Respondent registered the Disputed Domain Name. The

Complainant in addition also offers travel, banking, insurance, and ticketing services.

4.2 The Respondent herein is said to be based in Brazil and according to the WhoIs Database, the Disputed resolves to a website showing “Origin is unreachable Error code 523”.

5. Parties’ Contentions

A. Complainant

5.1 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 which wholly incorporates the Complainant’s CARREFOUR trademark, is highly similar to the CARREFOUR trademark, the only difference being the addition of the generic term “invest”. Such addition of descriptive, generic or geographic terms to a trademark in a domain name does not prevent creating a likelihood of confusion with the Complainant’s trademark. It is therefore submitted that the Disputed Domain Name must be regarded as confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Secondly, it is further argued that the word “invest” as associated with the Complainant’s trademark increases the risk of confusion in the mind of Internet users as the term is often associated with the Complainant’s other commercial activities with respect to its banking and insurance related activities.

Thirdly, it is submitted that the generic Top-Level domain “.org” should not be taken into account when conducting a confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

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The Complainant therefore asserts that the Disputed Domain Name is confusingly similar to the
Complainant’s CARREFOUR trademark.

Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

5.2 It is submitted that the Respondent who at the time of filing the Complaint had its identity REDACTED that the Complainant never gave any consent for the registration of the Disputed Domain Name nor is the Respondent a partner, distributor, or licensee of the Complainant and there is no commercial or contractual relationship between the Complainant and the Respondent such that would justify the Respondent’s use of the Disputed Domain Name. The Complainant further contends that there is no evidence that the Respondent was ever commonly known by the Disputed Domain Name as an individual, business, or other organisation. Also, it is argued that the Respondent has not used or made any preparations to use the Disputed Domain Name for the bona fide offering of goods and services, instead the Disputed Domain Name resolves to an error page. Finally, it is submitted that since the Respondent has not established any legitimate interests or rights in the Disputed Domain Name the Respondent bears the burden of proof to establish any rights or legitimate interest in the Disputed Domain Name in line with the decision in

5.3 With particular reference to the issue of bad faith registration, the Complainant first observes that the Complainant’s trademarks are intensively used in numerous countries such as France, Spain, Italy and in Brazil where the Respondent is based. Thus, the Complainant asserts that the Respondent must have been

aware of the reputation of the Complainant and its CARREFOUR trademark since its first trademark was registered in 1968, at the time of registering the Disputed Domain Name. The Complainant states further that a simple online search would have revealed to the Respondent the existence of the Complainant’s

CARREFOUR trademark and its worldwide reputation. Therefore, the Complainant submits that having created the Disputed Domain Name on October 2, 2024, it is nearly impossible considering the composition and the complexity of the Disputed Domain Name that the similarity with the trademark is a coincidence. It is further submitted that the Respondent must have registered the Disputed Domain Name with the intention to resell it to the Complainant later on or to prevent the Complainant from using it.

With specific reference to bad faith use, the Complainant refers to the ongoing inactive status of the Disputed
Domain Name which only resolves to an error page and contends that the non-use of the Disputed Domain
Name should not prevent a finding of bad faith use under the doctrine of passive holding. See Telstra

Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions and therefore the Panel shall draw such

adverse inferences from the Respondent’s failure to respond as may be deemed appropriate.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 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 3.0, section 1.7.

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 entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain
Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of other terms such as “invest” may bear on assessment of the second and third elements, the Panel finds the addition of such a term 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.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

6.2 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.

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.

Moreover, the Panel considers that the composition of the Disputed Domain Name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.3 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.

In the present case, the Panel observes that the Respondent intentionally registered the Disputed Domain CARREFOUR trademarks. The Disputed Domain Name clearly incorporates the Complainant’s trademark. Therefore, the Panel finds that the Respondent was aware or ought to have been aware of the Complainant and its numerous trademarks when registering the Disputed Domain Name and therefore deliberately set out to exploit the reputation of the Complainant’s CARREFOUR trademarks and or disrupt the Complainant’s business activities.

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.

Panels have found that the non-use of a domain name (including a blank, error or “coming soon” page)
would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section
3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the
Complainant’s trademark, the composition of the Disputed Domain Name, the Respondent’s failure to file a

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Response, and the provision of false or incomplete contact details when registering the Disputed Domain
Name by the Respondent (the courier service was not able to deliver the Written Notice due to the reported
use of a “bad address”), and finds that in the circumstances of this case the passive holding of the Disputed

Domain Name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

7.1 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 <carrefourinvest.org> be transferred to the Complainant.

/Ike Ehiribe/
Ike Ehiribe
Sole Panelist
Date: December 24, 2024