Carrefour SA v carlos

WIPO Case No. D2023-1814

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. carlos

Case No. D2023-1814

1. The Parties

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

The Respondent is carlos, Spain.

2. The Domain Names and Registrar

The disputed domain names <carrefourstore.online>, <carrefourstores.online>, <carrefourstores.shop>, and

<carrefourstores.store> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2023.
On April 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On April 25, 2023, 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 (GDPR Masked) and contact information in the Complaint. The
Center sent an email communication to the Complainant on the same day, 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 April 28, 2023.

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 May 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2023.

The Center appointed Roger Staub as the sole panelist in this matter on May 30, 2023. 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.

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4. Factual Background

The Complainant is CARREFOUR SA, a French company. It is part of a group, which is a leading global retailer (“Carrefour”).

According to the Complainant’s website at “ the Complainant has over 321,000 employees throughout the world. In 2019 Carrefour generated a turnover of almost EUR 80.7 billion, over half of which was generated outside France. The Complainant has more than 12,000 stores in over 30 countries. The Complainant submitted that CARREFOUR is well present in the retail market of the Respondent’s home country Spain, with more than 200 hypermarkets and 1,100 supermarkets. The Complainant further offers services through a dedicated website for Spanish consumers, which is reachable under the domain name <carrefour.es>. Worldwide, the Complainant reaches some 104 million households a year and gets 1.3 million single visits to all of its online shopping websites every day.

The Complainant owns various trademark registrations consisting of, or containing, the word “Carrefour” in various jurisdictions. The Complainant’s portfolio of CARREFOUR trademark registrations includes, inter alia, the following trademark registrations:

- International trademark No. 351147 CARREFOUR, registered on October 2, 1968, in Classes 01 to
34;

- International trademark No. 353849 CARREFOUR, registered on February 28, 1969, in Classes 35
to 42;

- European Union Trade Mark No. 005178371 CARREFOUR, registered on August 30, 2007, in
Classes 09, 35 and 38.

The Complainant has registered numerous domain names containing the element “carrefour” with different generic Top-Level Domain (“gTLDs”). By way of example, the Complainant’s domain name portfolio includes the domain names <carrefour.com> registered on October 25, 1995, and <carrefour.es> registered on November 14, 2000.

The disputed domain names were all registered on February 6, 2023.

At the time the Complaint was filed, the disputed domain names <carrefourstore.online>,
<carrefourstores.online> and <carrefourstores.shop> resolved to error pages, whereas the disputed domain
name <carrefourstores.store> resolved to a website containing a number of pay-per-click (“PPC”) links for

“related searches” such us “Office Cleaning Supplies” or “Buy Groceries Coupons”.

5. Parties’ Contentions

A. Complainant

The Complainant submits the following arguments:

First, the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the owner of various CARREFOUR trademarks. The disputed domain names incorporate these earlier trademarks together with the generic terms “store” or “stores” respectively. The earlier trademarks of the Complainant are immediately recognizable within the disputed domain names. Both the use of the lower-case letter format and the addition of the gTLDs “.online”, “.shop” and “.store” are not significant in determining whether the disputed domain names are identical or confusingly similar to the trademarks of the Complainant.

Second, the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Searches conducted by the Complainant did not reveal any CARREFOUR trademarks owned by the
Respondent. The Complainant has found no evidence that the Respondent is known under the disputed

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domain names, neither as an individual nor as a business or other organization. This is further reinforced by to mislead Internet users. In light of the worldwide renown of the Complainant’s trademark, the Complainant sees no plausible use of the disputed domain names that would be legitimate, fair and noncommercial. The burden is on the Respondent to establish that he has rights or legitimate interests in the disputed domain names.
the fact that the Complaint was filed soon after registration of the disputed domain names. Further, the
Respondent did not have any license or authorization from the Complainant to use the Complainant’s earlier
trademarks or terms similar thereto. In addition, the Respondent has not, before the filing of the Complaint,

used or prepared to use the disputed domain names in relation to bona fide offering of goods or services.

Third, the disputed domain names were registered and are being used in bad faith. The Complainant and its name (“carlos” and no surname) for purposes of registering the disputed domain names.

trademarks were so widely well known that it is inconceivable that the Respondent ignored them. The
Complainant is well present in the Spanish market, including in the city where the Respondent is located,
and it enjoys a long-lasting worldwide reputation. It is highly likely that the Respondent chose the disputed
domain names because of their identity with, or similarity to, the Complainant’s trademarks in the hope and
expectation that Internet users searching for the Complainant’s services and products would instead come
across the disputed domain names. The Complainant’s trademarks also significantly predate the registration
dates of the disputed domain names. A simple search for “carrefourstores” on an online search engine with
a browser virtually located in the country of the Respondent would have shown results only related to the
Complainant. The current use of the disputed domain names may not be considered as good faith use.
Links such as “Carrefour Stores” and “Buy Groceries Coupons” are clearly misleading for Internet users.
The Complainant cannot think of any future use of the disputed domain names that may be done by the

B. Respondent

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

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, the Complainant must prove each of the following:

First, the disputed domain names are identical or confusingly similar to a trademark or service mark to which the Complainant has rights.

Second, the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Third, the disputed domain names have been registered and are being used in bad faith.

Since the Respondent did not submit a reply, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain names (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has registered trademark rights in the designation CARREFOUR in numerous jurisdictions.

The disputed domain names comprise the trademark CARREFOUR in its entirety. The addition of the terms

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“store” or “stores” respectively to the trademark does not prevent a finding of confusing similarity between the
disputed domain names and the Complainant’s trademarks (see section 1.8 of the WIPO Overview 3.0).

The Panel therefore finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, the following are examples for circumstances where a respondent may have rights to or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the absence of any evidence filed by the Respondent, the Panel does not see any indications being given for any of the above examples, or any other circumstances suggesting that the Respondent may have rights or legitimate interests in the disputed domain names. The Respondent’s name is supposed to be “carlos”

and there are no indications that “carlos” is in any way legitimately linked to the business that the accessible via the disputed domain names do not suggest any such link either. They are either error pages or a PPC page. On the other hand, due to the fact that the CARREFOUR trademark has prominently and intensively been used on the market internationally (including in the Respondent’s reported country) and for decades by the Complainant and its group companies, the Panel is inclined to assume that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain names. The addition of the term “store” (in singular or in plural), which is very close to the Complainant’s business activities as a leading retail organization, further adds to the conclusion that the Respondent has neither rights nor legitimate interests in the disputed domain names.

Moreover, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview 3.0). Accordingly, the use established under the disputed domain name <carrefourstores.store> does not represent a bona fide offering, whereas with respect to the other three disputed domain names no use at all has been established.

Additionally, since the disputed domain names consist of the trademark CARREFOUR plus the additional terms “store” or “stores” related to its services, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0).

Hence, the second element of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-
pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent

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has registered the domain name primarily for the purpose of disrupting the business of a competitor; or complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,

As far as the disputed domain name <carrefourstores.store> is concerned, the Complainant submits as evidence a screenshot of the website accessible under the disputed domain name showing a number of links to related searches. The Complainant submits that these are PPC links. The use of such PPC links suggests that the Respondent is using this disputed domain name as a tool to attract, for commercial gain, Internet users to its website. Hence, and to this extent, circumstance 4(b)(iv) is given and suggests bad faith intentions of the Respondent.

This finding is supported by the other circumstances of the present case, which lead the Panel to the
conclusion that the other three disputed domain names, which resolve to error pages, are registered and
used in bad faith: The disputed domain names incorporate the Complainant’s trademark, which is both
highly distinctive and reputed (also in the Respondent’s reported country). This distinctive and reputed
trademark has been combined with a descriptive term that refers to the business activities of the owner of
that widely-known trademark (i.e., the Complainant). There are no plausible indications at all for a possible
good faith use of the disputed domain names by the Respondent. The Respondent failed to submit a
response and, thus, any evidence of an actual or contemplated good faith use. The fact that the Respondent
seems to conceal its real identity by merely having provided a first name “carlos” but no family name is

further indication for the Respondent’s bad faith (see section 3.3 of the WIPO Overview 3.0).

Therefore, the third element of the Policy has also been fulfilled.

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, <carrefourstore.online>, <carrefourstores.online>,
<carrefourstores.shop>, <carrefourstores.store>, be transferred to the Complainant.

/Roger Staub/ Roger Staub Sole Panelist Date: June 13, 2023