Carrefour SA v carlos

WIPO Case No. D2023-0840

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. carlos

Case No. D2023-0840

1. The Parties

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

The Respondent is carlos, Spain.

2. The Domain Name and Registrar

The disputed domain name <carrefourstores.com> is 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 February 24, 2023. On February 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2023, 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 (GDPR Masked) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2023, 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 March 8, 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 March 16, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 5, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on April 13, 2023.

The Center appointed Kyslyy, Taras as the sole panelist in this matter on May 2, 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 a worldwide retailer, employing more than 384,000 people. It counts more than 12,000 stores in more than 30 countries with around 1.3 million daily visitors. The Complainant additionally offers travel, banking, insurance or ticketing services.

The Complainant owns multiple CARREFOUR trademark registrations in various jurisdictions including for instance international trademark registration No. 353849, registered on February 28, 1969.

In addition, the Complainant operates <carrefour.com> domain name registered on October 25, 1995. The
Complainant’s Facebook page is currently “liked” by more than 11 million Internet users

The disputed domain name was registered on February 6, 2023, and resolves to an inactivewebsite with the wording available as follows: “We’re working on it! This site is currently under construction. Please check back soon. Domain: carrefourstores.com.”

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain reproduces the earlier trademark CARREFOUR in attack position, together with the term “stores”. The addition of a generic term to a well known trademark in a domain name does nothing to diminish the likelihood of confusion arising from that domain name. The use of lower-case letter format on the one hand and the addition of the generic Top-Level Domain (“gTLD”) “.com” on the other hand, are not significant in determining whether the domain name is identical or confusingly similar to the trademarks of the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has acquired no trademark in the name CARREFOUR which could have granted the Respondent rights in the disputed domain name. There is no evidence that the Respondent (as an individual, business, or other

bona fide offering of goods or services.
organization) has been commonly known by the disputed domain name. The Complainant has filed the use of the term “carrefour” in the disputed domain name in any manner or form. The Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a
present Complaint soon after the registration of the disputed domain name, intending to not allow the

The disputed domain name was registered and is being used in bad faith. The Complainant and its trademarks were so widely well known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights in the Complainant’s trademark. The Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. The Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. The Respondent chose the disputed domain name because of its similarity to the Complainant’s trademark. This was done in the hope and expectation that internet users searching for the Complainant’s services and products would instead come across the Respondent’s site. The Complainant’s trademark registrations significantly predate the registration date of the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD” in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name

incorporates the entirety of the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The disputed domain name includes the Complainant’s trademark, adding the word “stores” associated with the Complainant’s business, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The available evidence do not confirm that the Respondent is commonly known by the disputed domain
name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding
Federation, Inc. v. Daniel Jones, TheDotCafe, WIPO Case No. D2008-0642).

, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the be reasonably claimed (see

The Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. Given the meaning of the word “stores” and the Complainant’s business carried through stores, the addition of the term “stores” to the Complainant’s trademark in the disputed domain name potentially conveys to the Internet users the false belief that the website linked to the disputed domain name is associated or endorsed with the Complainant’s official services. See WIPO Overview 3.0, section 2.5.1.

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the
disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the
Policy.

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C. Registered and Used in Bad Faith

According to section 3.1.4 of the WIPO Overview 3.0 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. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in France and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith.

According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain name may be put.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of 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 <carrefourstores.com> be transferred to the Complainant.

/Taras Kyslyy/ Taras Kyslyy Sole Panelist Date: May 9, 2023