Carrefour SA v Contact Privacy Inc. Customer 0163853166 / Milen Radumilo

WIPO Case No. D2022-1695

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Contact Privacy Inc. Customer 0163853166 / Milen Radumilo

Case No. D2022-1695

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 0163853166, Canada / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <carrefour-es.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2022. On connection with the disputed domain name. On May 10, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on May 11, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 12, 2022.

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 Respondent of the Complaint,
and the proceedings commenced on May 16, 2022. In accordance with the Rules, paragraph 5, the due
date for Response was June 5, 2022. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on June 8, 2022.

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The Center appointed Lorelei Ritchie as the sole panelist in this matter on June 13, 2022. 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. Factual Background

Complainant is a global retailer, based in France. For decades preceding the registration of the disputed
domain name, Complainant has offered its retail and other services under the CARREFOUR mark.
Complainant has several trademark registrations for its CARREFOUR mark. These include International
Registration Nos. 351147 (registered October 2, 1968) and 353849 (registered February 28, 1969); along
with European Union Trade Mark Nos. 005178371 (registered August 30, 2007) and 008779498 (registered
July 13, 2010).

Complainant owns the registration for numerous domain names that incorporate its CARREFOUR mark. These include, among others, <carrefour.com> (registered October 5, 1995). Complainant uses the website associated with this domain name to inform customers about its CARREFOUR mark and its retail and other services.

The disputed domain name was registered on February 28, 2022. Respondent has no affiliation with pay-per-click (“PPC”) website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s
trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)

Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it is a “major and well-known” company with a distinctive mark and a
strong reputation in the field of retail services around the world. Complainant contends that it has
established rights in the CARREFOUR mark, as well as an active Internet presence via its domain name
<carrefour.com>, along with other variations, including one with the Spanish country code Top-Level Domain
(“ccTLD”) <carrefour.es> (registered November 14, 2000). Complainant contends that Respondent has
merely added a hyphen to Complainant’s CARREFOUR mark, along with the Spanish geographical
abbreviation, “es,” in a manner intended to confuse consumers looking for information about services offered
by Complainant in Spain, where “Complainant is active.”

Complainant contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering and using the disputed domain name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

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A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name is identical or confusingly similar to a
trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the

Policy. The Panel finds that it is.

The disputed domain name directly incorporates Complainant’s registered trademark CARREFOUR mark,
along with the Spanish geographical abbreviation, “es”, and the minor addition of a hyphen. Numerous
UDRP panels have agreed that supplementing or modifying a trademark with other words, including
geographically descriptive wording, does not make a domain name any less confusingly similar for purposes
of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v.
Polanski, WIPO Case No. D2000-1614; General Electric Company v. Recruiters, WIPO Case No. D2007-
0584; Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K

Concepts Corp., WIPO Case No. D2000-1065.

The Panel therefore finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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.”

No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate
interests in the disputed domain name, and Respondent has no license from, or other affiliation with,

Complainant.

Therefore, the Panel finds that Complainant has provided sufficient evidence for a prima facie case that
Respondent lacks “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which

Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location.” The disputed domain name resolves to a PPC website. In the circumstances, the Panel finds it most likely that Respondent registered and used the disputed domain name to intentionally attract, for commercial gain, Internet users to the PPC website linked to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark.

Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names 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. See

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section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”).

Further, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here used a privacy service, and Respondent did not formally respond to the Complaint. Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world. A number of prior UDRP panels have found Complainant’s CARREROUR mark to be well known. See, for example, Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; Carrefour v. Giuseppe Bottos WIPO Case No. D2017-0587. Given the level of exposure of Complainant’s mark, the Panel finds a likelihood that Respondent was aware of Complainant’s rights at the time of registering the disputed domain name.

Therefore, the Panel finds that Complainant has satisfied paragraph (4)(a)(iii) of the Policy.

7. Decision

For all 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-es.com> be transferred.

/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Dated: June 27, 2022