Carrefour SA v carrefour brasil, CSF Carrefour

WIPO Case No. D2024-4702

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. carrefour brasil, CSF CARREFOUR

Case No. D2024-4702

1. The Parties

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

The Respondent is carrefour brasil, CSF CARREFOUR, Brazil.

2. The Domain Name and Registrar

The disputed domain name <carrefour.lat> is registered with Hostinger Operations, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2024. On November 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2024, 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 (Privacy Protect, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 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 15, 2024.

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 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2024.

The Center appointed Michele A.R. Bernasconi as the sole panelist in this matter on December 19, 2024.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant was founded in 1959 and is active worldwide mainly in the retail and hypermarket sectors. products under the CARREFOUR brand since 1976. Since then, the company has expanded all over the world and currently has around 14,000 stores in approximately 40 countries, including countries in South America (Argentina and Brazil), with more than 321,000 employees.

The Complainant is a public limited company listed on the index of the Paris Stock Exchange (CAC 40) and
is recognised as a global leader in the retail sector. The Complainant's yearly turnover is approximately EUR
80 billion, with 1.3 million daily visitors to its online stores.

The Complainant has a portfolio of several hundred registered trademarks. These trademarks are mainly used in connection with the hypermarkets and retail activities covering multiple jurisdictions. The following trademarks are of particular interest in the present case:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 1 to 34;

- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed

and designating services in international classes 35 to 42;

- Brazilian trademark CARREFOUR No. 6314210, registered on May 10, 1976, for services in

international class 38.

The Complainant owns numerous domain names corresponding to its trademarks CARREFOUR, both within generic and country code Top-Level-Domains (“gTLDs” and “ccTLDs”), and registered these domain names long before the Respondent's registration of the disputed domain name. For example, the Complainant has been the owner of the domain name <carrefour.com> since 1995, as its main corporate website. In addition, the Complainant is the owner of the domain names <carrefour.com.br> registered in 1997 and

<carrefour.com.ar> registered in 2015, which ccTLDs refer respectively to Brazil and Argentina (i.e.,
countries located in South America).

The disputed domain name is <carrefour.lat>, registered by the Respondent on November 6, 2024. The Top-Level-Domain (“TLD”) “.lat” refers to South (or Latin) America, where the Complainant operates with several stores and web shops. The website under the disputed domain name is currently not used. In fact,

the domain name initially displayed a default registrar page, and now displays an error page.

5. Parties’ Contentions

A. Complainant

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, given its worldwide reputation as a leader in the retail industry and the fact that the disputed domain name is identical to its trademark, there is a strong likelihood that the Respondent acted in bad faith. In fact, the Respondent wanted to create the impression of an association between the disputed domain name and the Complainant or to impersonate it in order to take advantage of its fame by attracting customers for its own economic benefit.

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Furthermore, the Complainant points out that the Respondent is using a privacy protection service in order to
avoid being recognized, and thus to elude the present proceeding. This is further evidence of the

Respondent's actual bad faith.

B. Respondent

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

6. Discussion and Findings

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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, i.e. 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 can be deemed identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

In fact, the Complainant has demonstrated that its owns several trademarks encompassing multiple jurisdictions (including Brazil) that reproduce “carrefour”. The disputed domain name registered by the Respondent reproduces the Complainant's registered and protected trademark in its entirety and without any addition. The disputed domain name does not contain any other element than the TLD “.lat” (referring to a region in which the Complainant is present and active), which is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The fact that lower- case letter format is used while the majority of the Complainant's trademarks are designed in capital letters, is irrelevant because the Domain Name System is case-insensitive (i.e., even when typing upper-case domain names as URL, the result is showed in lower-case letters).

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

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demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.

The Complainant has prima facie shown that the Respondent has no rights or legitimate interests to use the the trademark of a globally known company as a domain name. Indeed, there is no contractual (or any other) relationship between the Complainant and the Respondent. Therefore, the Complainant has not authorised or licensed the Respondent to use its trademark as domain name.

The Respondent has not provided any evidence demonstrating bona fide in its use (or demonstrable plans for such use) of the disputed domain name, or to be commonly known by the disputed domain name or that a legitimate noncommercial or fair use is taking place. Consequently, based on the available evidence, the Panel is satisfied with the Complainant's allegations that the Respondent has no rights or legitimate interests

in the disputed domain name.

Furthermore, because the disputed domain name is identical to the Complainant’s trademark, the Panel
considers that the composition of the disputed domain name carries a high risk of implied affiliation.

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

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 registered the Complainant's full trademark as domain name, without any addition or modification to differentiate or distinguish the disputed domain name from the Complainant's earlier registered trademark.

Considering that the Complainant is one of the largest retail companies in the world and its notoriety, it is highly unlikely that the Respondent did not know, when registering the disputed domain name, that the Complainant's company name was protected as a trademark in the whole word. Indeed, a quick and simple research on a search engine would have shown that the Complainant's websites appear in all the top results.

Therefore, the use of the Complainant's well-known trademark as a domain name without any modification makes it highly likely that the Respondent has attempted to take advantage of the Complainant's widespread fame so that Internet users would access to the Respondent's website. In fact, before viewing the content of the website, users would not be able to recognise that the Complainant was not the holder of the disputed domain name.

Panels 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. 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 Respondent’s use of a privacy service, 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.

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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 <carrefour.lat> be transferred to the Complainant.

/Michele A.R. Bernasconi/
Michele A.R. Bernasconi
Sole Panelist
Date: January 9, 2025