Carrefour SA v Beregun Anton Viktorovich

WIPO Case No. D2024-5320

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Beregun Anton Viktorovich

Case No. D2024-5320

1. The Parties

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

The Respondent is Beregun Anton Viktorovich, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <carrefoureu.online> is registered with Hosting Ukraine LLC (ua.ukraine) (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on
December 27, 2024. On December 27, 2024, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the disputed domain name. On December 28, 2024, the Registrar
transmitted by email to the Center its verification disclosing registrant and contact information for the
disputed domain name which differed from the named Respondent (Hosting Ukraine LLC UA) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 30,
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
January 2, 2025.

On December 30, 2024, the Center informed the parties in Russian and English that the language of the registration agreement for the disputed domain name is Russian. On January 2, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any

comment on the 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 the Respondent of the
Complaint, and the proceedings commenced on January 7, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 27, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 28, 2025.

The Center appointed Clark W. Lackert as the sole panelist in this matter on February 3, 2025. 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. Procedural Issue

Paragraph 10(b) of the Rules requires the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Paragraph 10(c) requires that the administrative proceeding takes place with due expedition.

The Respondent’s mailing address is in Ukraine, which is subject to an international conflict at the date of this decision. These circumstances may impact case notification and it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

The Panel is of the view that the proceeding should continue, having considered all the circumstances of the case.

The Panel notes that the mail service was able to deliver the Written Notice sent by registered mail to the Respondent’s address in Ukraine. Also, the Complaint was delivered to the Respondent’s email address provided by the Registrar without any delivery failure response. The Respondent has not opposed the

continuation of the proceedings.

The Complainant has specified in the Complaint that any challenge made by the Respondent to any decision to transfer the disputed domain name will be submitted to the to the “jurisdiction of the courts at the location of the principal office of the concerned registrar and the domain name holder’s address”.

Additionally, as set out below, the Panel has formed the view that the Respondent registered and has used the disputed domain name in bad faith.

5. Factual Background

The Complainant is a worldwide leader in retail services and a pioneer of the concept of hypermarkets since than 12,000 stores in more than 30 countries worldwide. With more than 384,000 employees globally and 1.3 million daily unique visitors in its stores, the Complainant is a major and well-known worldwide leader in retail services. The Complainant additionally offers travel, banking, insurance, and ticketing services.

1968, using the trademark CARREFOUR (the “Mark”). With a turnaround of 76 billion euros in 2018, the

The Complainant owns hundreds of trademark registrations worldwide. In particular, the Complainant is the owner of the following trademark registrations, registered well before the registration of the disputed domain name:

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Jurisdictions	Registration Number	Registration Date
France	1565338	December 8, 1989
International Registration –	563304	November 6, 1990
designating the Russian
Federation, Ukraine, Germany,
Switzerland, and other
jurisdictions.
Unites States	6763415	June 21, 2022
European Union	008779498	July 13, 2010

Additionally, the Complainant owns numerous domain names including <carrefour.com> registered on Mark’s notoriety are also evidenced on the Internet. Complainant’s Facebook page is currently “liked” by more than 11 million Internet users, with 6.2 million Internet users “liking” the CARREFOUR TikTok account, and more than 740,000 followers on the CARREFOUR Instagram platform.

The disputed domain name was registered on November 25, 2024.

6. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name completely incorporates the Mark owned by Complainant. The disputed domain name is only different from the Mark by the addition of the suffix “EU”, a common abbreviation for “European Union”. This addition of a generic geographic term does not significantly affect the appearance or

pronunciation of the domain name. Adding descriptive, generic or geographic terms to a trademark in a
domain name is not sufficient to avoid misleading Internet users and to avoid creating a likelihood and
confusion with the Complainant’s Mark. The Mark is in the front position within the disputed domain name,
which makes it very identifiable and recognizable. The domain name that consists in such composition
should 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”), paragraph 1.8.

Moreover, the term “EU”, associated with the trademark increases the risk of confusion in the mind of the average Internet user. This term is directly linked to the location of the Complainant’s commercial activity, which makes the confusion even more likely to occur in the mind of a consumer, who would expect to find the Complainant’s or an affiliated company, seeing the disputed domain name.

Finally, the first level domain (.ONLINE) should not be taken into consideration when evaluating the risk of confusing similarity (WIPO Overview 3.0, section 1.11.

The Respondent has no rights or legitimate interests in respect of the domain name(s);
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Respondent has never been authorized by the Complainant to use the trademark CARREFOUR in any manner. The Complainant never gave consent for the registration of the disputed domain name, neither in an explicit nor an implicit way. The Respondent is not a partner, distributor or licensee of the Complainant, and there is no contractual or commercial relationship between the Complainant and the Respondent which could eventually legitimize the registration and use of the disputed domain name by the Respondent.

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Furthermore, the Complainant has found no evidence whatsoever that the Respondent is known by the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization.

The domain name(s) was/were registered and is/are being used in bad faith. (Policy, paragraphs 4(a)(iii),
4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that the disputed domain name has been registered and is being used in bad faith, for the following reasons:

The Complainant’s trademarks are intensively used in numerous countries worldwide, such as France, Spain, Italy and Brazil for instance. The Complainant enjoys fame in these countries and globally, the first CARREFOUR trademark being registered in 1968. This geographic presence, as well as the establishment of the reputation of the Complainant, required important investments. A simple search on an online search engine shows results for “Carrefour” only relate to the Complainant. Regarding that, it is very likely that the Respondent knew the Mark at the time of registration of the disputed domain name. By adopting a famous mark of another company and using it as an inactive site to attract web traffic, Respondent does so to mislead Internet users.

Even the inactivity can be qualified of bad faith use, particularly when the disputed domain name is identical to an anterior trademark. Here, the inactivity, in addition to the lack of legitimate use, could suggest the intention by the Respondent to take profit from the Mark, or an intention to harm. By reproducing the Complainant’s trademark in the disputed domain name, the Respondent strengthens the impression that he or she is affiliated with the Complainant. This strategy of confusion, that could make Internet users wrongly believe that they are visiting an official website of the Complainant, or affiliated to the Complainant, is a typical example of bad faith use in cybersquatting cases.

Although the disputed domain name is not actively used on the web, the Complainant contends that the nonuse of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.

Indeed, and as specified in the WIPO Overview 3.0, the relevant issue is not limited to whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

7. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Russian. 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.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that Complainant is not in a position to conduct this proceeding in the language of the registration agreement without a great deal of additional expense and delay due to the need for translation of the Complaint. Moreover, Respondent likely knows the English language, e.g., the

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WhoIs details of the Respondent’s registration contain generic English words such as “hosting”. Moreover, the suffix “eu” is added to the Complainant’s trademark CARREFOUR within the domain name, being the abbreviation for “European Union” in the English language.

The Respondent did not make any submissions with respect to the language of the proceeding. 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).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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 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.

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 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.

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

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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 the Respondent has copied Complainant’s famous Mark and added the descriptive term “EU” (for “European Union”) to it. As WIPO Overview 3.0, section 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar

(particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous
or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

Panels have found that the non-use of a domain name 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, and the composition of the disputed domain name, 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.

8. 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 <carrefoureu.online> be transferred to the Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: February 14, 2025