Carrefour SA. v avxdpcqnik mvokixwsta and oybdljpvz psebhnkoyel
WIPO Case No. D2024-4426
•30-12-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Carrefour SA. v. avxdpcqnik mvokixwsta and oybdljpvz psebhnkoyel
Case No. D2024-4426
1. The Parties
Complainant is Carrefour SA., France, represented by IP Twins, France.
Respondents are avxdpcqnik mvokixwsta, China, and oybdljpvz psebhnkoyel, China.
2. The Domain Names and Registrar
The disputed domain names <carrefourclearance.com> and <carrefoursale.com> are registered with
West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October
29, 2024. On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On October 30, 2024, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain names which differed from the named Respondent (Redacted For Privacy) and contact information
in the Complaint.
On October 30, 2024, the Center informed the Parties in Chinese and English, that the language of the
Registration Agreement for the disputed domain names is Chinese.
The Center also sent an email communication to Complainant on October 30, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint containing a request for English to be the language of the proceedings on October 31, 2024. Respondents did not submit any comment on Complainant’s submission.
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”).
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondents in Chinese and English of the Complaint, and the proceedings commenced on November 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. On November 12, 2024, an email was received by the Center from a contact email address featured on the website at one of the disputed
domain names. The Center informed the Parties that it would proceed to panel appointment on December
11, 2024.
The Center appointed Yijun Tian as the sole panelist in this matter on December 16, 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
A. Complainant
Complainant, Carrefour SA, is a company incorporated in France. Founded in 1968, Carrefour is one of the leaders in retail and hypermarkets. It is listed on the index of Paris Stock Exchange (CAC 40) with a turnaround of EUR 76 billion in 2018. Complainant operates more than 12,000 stores in more than 30 countries worldwide. It has more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores.
Complainant owns the CARREFOUR and CARREFOUR-formative marks that have been registered worldwide, including International Registration (e.g., International Trademark Registration number 351147, registered October 2, 1968) (Annexes 4-5 to the Complaint).
Complainant also registered domain names which contain the CARREFOUR trademark. For example, since 1995 (Annex 9 to the Complaint).
B. Respondents
Respondents are avxdpcqnik mvokixwsta, China and oybdljpvz psebhnkoyel, China.
The disputed domain names <carrefourclearance.com> and <carrefoursale.com> were registered by similar layout offering different clothing and footwear items for sale.
5. Parties’ Contentions
A. Complainant
Complainant contends that the disputed domain names are highly similar to the earlier well-known
trademarks CARREFOUR. Simply employing the addition of generic terms “clearance” and “sale” with the
CARREFOUR trademark does not diminish the likelihood of confusion.
Complainant contends that Respondents have no rights or legitimate interests in the disputed domain names.
Complainant contends that the disputed domain names were registered and are being used in bad faith.
Complainant requests that the disputed domain names be transferred to it.
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B. Respondents
Respondents did not formally reply to Complainant’s contentions. On November 12, 2024, an email was received by the Center from a contact email address featured on the website at one of the disputed domain names stating “ Dear customer We did refund the money […].”
6. Discussion and Findings
6.1. Preliminary Issues
A. Language of the Proceedings
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
From the evidence presented on the record, no agreement appears to have been entered into between proceedings for the following reasons:
Complainant and Respondents to the effect that the language of the proceedings should be English.
(a) Complainant, as a French entity, lacks the ability to communicate in Chinese and cannot reasonably
conduct these proceedings in Chinese without incurring significant expenses and delays due to the need for
translation.
| (b) | Respondents are capable of understanding and participating in proceedings conducted in English, |
which is supported by:
i. The inclusion of the English generic terms “clearance” and “sale” in the disputed domain names; and
ii. The fact that the websites associated with the disputed domain names are entirely in English.
| (c) | Should the Respondents be unable to participate in English, Complainant anticipates that |
Respondents will indicate this in their Response to the Complaint.
Respondents did not make any submissions with respect to the language of the proceedings.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).
| China and are thus presumably not English speakers but native Chinese speakers; but considering the | On the record, Respondents, avxdpcqnik mvokixwsta and oybdljpvz psebhnkoyel, appear to be located in indicated no objection to Complainant’s request that English be the language of the proceedings; and (e) the |
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Center also notified Respondents in both Chinese and English of the Complaint, and informed Respondents that it would accept a response in either English or Chinese, but Respondents chose not to file any response.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
B. Consolidation: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleged that the actual owner of the disputed domain names is the same entity and should be treated as a single Respondent.
The disputed domain name registrants did not comment on Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2.
As regards common control, the Panel finds that Complainant has provided sufficient evidence to establish that the disputed domain names or corresponding websites are subject to common control, for the following reasons:
| (a) | Both disputed domain names were registered on the same day with the same Registrar. |
(b) Both disputed domain names are delegated to the same name servers and share a similar structure: CARREFOUR + generic English terms.
| (c) | Both disputed domain names are registered under the “.com” gTLD and direct to the websites with a |
very similar layout.
| (d) | Both Respondents use email addresses ending in “@outlook.com” and are located in China. |
(e) Postal addresses provided in the registration details for both disputed domain names are fanciful at best, which prevented the Center from dispatching its written communications.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “Respondent”) in a single proceeding.
6.2 Substantive Issues: Three Elements
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
Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7.
Based on the available record, the Panel finds 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.
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The Panel finds Complainant’s CARREFOUR mark is recognizable within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
While the addition of other terms, “clearance” and “sale”, may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0,
section 1.8.
Based on the available record, the Panel finds 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 Respondent may demonstrate rights or legitimate interests in a disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognised that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. 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 record, the Panel finds Complainant has established a prima facie case that Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
More specifically:
(i) there has been no evidence adduced to show that Respondent used the disputed domain names in
connection with a bona fide offering of goods or services. Respondent has not provided evidence or reasons
to justify the choice of the term “Carrefour” which corresponds to the Complainant’s trademark in the
disputed domain names. There has been no evidence to show that Complainant has licensed or otherwise
permitted Respondent to use the CARREFOUR trademark or to apply for or use any domain name
incorporating the CARREFOUR mark;
(ii) there has been no evidence adduced to show that Respondent has been commonly known by the
disputed domain names. There has been no evidence adduced to show that Respondent has any registered
trademark rights with respect to the disputed domain names. Respondent registered the disputed domain
names on September 19, 2024, long after the CARREFOUR mark was registered internationally (since
1968). The disputed domain names are confusingly similar to Complainant’s CARREFOUR mark; and
(iii) there has been no evidence adduced to show that Respondent was making a legitimate noncommercial
or fair use of the disputed domain names. By contrast, the disputed domain names resolved to active
websites displaying the Complainant’s trademark together with “clearance” and “sale”, and offering different
clothing and footwear items for sale. It seems likely that Respondent was making profits through the Internet
traffic attracted to the websites under the disputed domain names. (See BKS Bank AG v. Jianwei Guo,
WIPO Case No. D2017-1041; and Pet Plan Ltd. v. 权中俊 and 李金梁 (Li Jin Liang), WIPO Case No.
D2020-3358).
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Panels have held that the use of a domain name for illegitimate activity (i.e., impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.
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.
In the present case, the Panel notes that Respondent has registered and uses the disputed domain names 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.
Based on the information provided by Complainant, the Panel finds that Complainant has a goodwill in the CARREFOUR marks with regard to its products and services. It is not conceivable that Respondent would not have had Complainant’s trademark in mind at the time of the registration of the disputed domain names (in September 2024). This has been reinforced by the fact that the disputed domain names entirely
incorporate Complainant’s distinctive trademark CARREFOUR, and by the use of Complainant’s trademark
on the websites at the disputed domain names.
Respondent has used the websites resolved by the disputed domain names for offering different clothing and footwear items for sale.
Thus, the Panel concludes that Respondent is using confusingly similar disputed domain names with the intention to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant. Such use constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.
UDRP panels have held that the use of a domain name for illegitimate activity (i.e., impersonation/passing off) constitutes bad faith.
Based on the available record, the Panel finds the third element of the Policy has been established.
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 names <carrefourclearance.com> and <carrefoursale.com> be transferred to Complainant.
/Yijun Tian/
Yijun Tian
Sole Panelist
Date: December 30, 2024
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