Carrefour SA v Coimbra Ofertas

WIPO Case No. D2024-2144

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Coimbra Ofertas

Case No. D2024-2144

1. The Parties

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

The Respondent is Coimbra Ofertas, Brazil.

2. The Domain Name and Registrar

The disputed domain name <grupo-carrefour.shop> 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 May 24, 2024. On May 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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 (unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 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 May 31, 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 June 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2024.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on July 1, 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.

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4. Factual Background

The Complainant, a global leader in retail, was established in 1959. It is well-known for pioneering the hypermarket concept in 1968 and is listed on the Paris Stock Exchange (CAC 40). Carrefour operates more than 12,000 stores in over 30 countries worldwide, with more than 384,000 employees and 1.3 million daily unique visitors in its stores. In addition to retail, Carrefour offers travel, banking, insurance, and ticketing services. The company's revenue in 2022 was EUR 83 billion. In Brazil, where the Respondent is located, Carrefour has been present since 1975 and currently operates over 140 hypermarkets, 50 supermarkets, and 140 express convenience stores.

The Complainant owns CARREFOUR trademark registrations in many jurisdictions, including the following:

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

- International trademark CARREFOUR Reg. No. 353849, registered on February 28, 1969, designating
services in international classes 35 to 42;

- EUIPO trademark CARREFOUR Reg. No. 005178371, registered on August 30, 2007, designating
services in international classes 9,35 and 38.

The Complainant is also the owner of several domain names that incorporate its trademark, including:

- <carrefour.com> (registered since 1995);

- <carrefour.fr> (registered since 2005);

- <carrefourmarket.fr> (registered since 2007);

- <carrefourbanca.it> (registered since 2011).

Additionally, Carrefour owns and actively uses domain names such as <grupocarrefourbrasil.com.br> and
<grupocarrefour.com.br>, further establishing its online presence and brand identity.

The disputed domain name, <grupo-carrefour.shop>, was registered on May 14, 2024. The disputed domain name incorporates Carrefour’s well-known trademark and adds the Spanish and Portuguese term “grupo” (meaning “group” in English), which implies affiliation with Carrefour’s brand and activities. The disputed domain name currently resolves to an error page and is not associated with an active website.

The Respondent has not provided any evidence of legitimate business activity or fair use of the disputed domain name, and there has been no active website associated with it.

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 the disputed domain name, <grupo-carrefour.shop>, incorporates the Complainant’s well-known CARREFOUR trademark in its entirety.

The addition of the term “grupo” (Spanish and Portuguese term for “group”) does not diminish the likelihood of confusion but rather increases it by suggesting an association with the Complainant.

The inclusion of a hyphen and the Top-Level Domain (“TLD”) “.shop” are irrelevant in distinguishing the disputed domain name from the Complainant’s trademark.

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The Complainant has extensive trademark rights for CARREFOUR, including registrations in multiple jurisdictions (e.g., International, EUIPO, Brazil), which predate the registration of the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The any domain name including its trademark.

The Complainant argues that the Respondent was likely aware of the CARREFOUR trademark’s fame and reputation when registering the disputed domain name. Lastly, the Complainant claims that the Respondent has registered and used the disputed domain name in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

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.
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.

Although the addition of other terms here “grupo” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

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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 Respondent is not commonly known by the disputed domain name and has not provided any evidence of legitimate business activity or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has no authorization or license from the Complainant to use the CARREFOUR trademark in any manner. Furthermore, the disputed domain name is currently not associated with an active website and resolves to an error page, indicating no legitimate non-commercial or fair use.

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 and is using the disputed domain name in bad faith under paragraph 4(b) of the Policy.

The Respondent has not demonstrated any legitimate interest in the disputed domain name, and there is no evidence of any active use, indicating bad faith.

The Respondent’s registration of the disputed domain name that closely resembles the Complainant’s well- known trademark suggests an intent to disrupt the Complainant’s business by causing confusion among consumers.

The disputed domain name is likely intended to attract Internet users by creating a likelihood of confusion with the Complainant’s CARREFOUR trademark. The addition of the term “grupo” (Spanish and Portuguese term for “group”) suggests an affiliation or association with the Complainant, misleading Internet users for potential commercial gain.

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.

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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 and 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.

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 <grupo-carrefour.shop> be transferred to the Complainant.

/Eva Fiammenghi/
Eva Fiammenghi
Sole Panelist
Date: July 15, 2024