Carrefour SA v demsy rose, Monsieur Serenity

WIPO Case No. D2024-3513

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. demsy rose, Monsieur Serenity

Case No. D2024-3513

1. The Parties

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

The Respondents are demsy rose, France, and Monsieur Serenity, France.

2. The Domain Names and Registrar

The disputed domain names <clients-carrefour-banque.com> and <pass-carrefour-banque.com> are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2024. On August 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <clients-carrefour-banque.com>. On August 29, 2024, 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 (Registration Private/Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On August 30, 2024, the Complainant requested to consolidate the case with the disputed domain name <pass-carrefour-banque.com> for which a different complaint had been filed separately. On September 2, 2024, the Center informed the Complainant that it may request to terminate the ongoing proceeding

regarding the disputed domain name <pass-carrefour-banque.com>, submit an amended Complaint for both disputed domain names, and demonstrate that the underlying registrants are in fact the same entity and/or that all the disputed domain names are under common control. The Complainant submitted the request to terminate the separate ongoing proceeding for the disputed domain name <pass-carrefour-banque.com> and filed an amended Complaint on September 4, 2024, with regards both disputed domain names.

On September 9, 2024, the Center terminated the case regarding the disputed domain name <pass-carrefour-banque.com> and transmitted by email to the Registrar a request for registrar verification in connection with the added disputed domain name <pass-carrefour-banque.com>. On September 9, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact

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information for the disputed domain name <pass-carrefour-banque.com>, confirming that the Respondent (Monsieur Serenity) is listed as the registrant and providing the contact details in the amended Complaint.

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 Respondents of the Complaint, and the proceedings commenced on September 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 11, 2024.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 16, 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.

4. Factual Background

The Complainant owns several hundred trademark rights worldwide composed with CARREFOUR,
BANQUE CARREFOUR, or CARREFOUR PASS.

In particular, the Complainant is the owner of the following trademarks registered well before the registration of the disputed domain names:

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

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

- French trademark BANQUE CARREFOUR No. 3585968, registered on December 5, 2008, duly
renewed and designating services in class 36;

- International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly
renewed and designating services in class 36.

The Complainant is the registrant of the domain names <carrefour.com>, <carrefour.fr>,
<carrefour-banque.fr>, and <carrefourbanca.it>.

The disputed domain name <clients-carrefour-banque.com> was registered on August 8, 2024 in the name of demsy rose.

The disputed domain name <pass-carrefour-banque.com> was registered on July 26, 2024 in the name of

Monsieur Serenity.

Both disputed domain names are registered with the same registrar.

The disputed domain name <clients-carrefour-banque.com> resolves to a parking page with pay-per-click
(“PPC”) links.

When searching for the website at the disputed domain name <pass-carrefour-banque.com>, a warning message appears:

“Dangerous site password, phone, or credit card number. Chrome strongly recommends going back to safety.

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Chrome has built-in safety features to protect you while you browse — like Google Safe Browsing, which recently found phishing on the site you’re trying to visit. Phishing sites pretend to be other sites to trick you.”

There is no specific information about the Respondent(s), besides the fact that the respective postal addresses mention the same street in the same city. Each address mentions the name of a region, which is totally wrong.

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 names.

Notably, the Complainant contends that its earlier trademarks are well-known.

The Complainant asserts that its fame and notoriety is evidenced on the Internet, by the fact that its

Facebook page is currently “liked” by more than 11 million Internet users.

Confusing similarity

The disputed domain names <clients-carrefour-banque.com> and <pass-carrefour-banque.com> are both confusingly similar to the Complainant’s earlier well-known CARREFOUR and BANQUE CARREFOUR trademarks.

These trademarks are reproduced in the disputed domain name <clients-carrefour-banque.com> together with the generic term “clients” whereas the disputed domain name <pass-carrefour-banque.com> reproduces both the Complainant’s CARREFOUR, BANQUE CARREFOUR, and CARREFOUR PASS trademarks.

It is established case law that the addition of generic terms (whether “clients/pass” and “banque” if we consider the CARREFOUR trademark alone) to a trademark in a domain name does nothing to diminish the likelihood of confusion arising from that domain.

The earlier trademarks of the Complainant - CARREFOUR, BANQUE CARREFOUR, and CARREFOUR

PASS - are clearly recognizable within the disputed domain names.

Therefore, the Complainant contends that the disputed domain names are confusingly similar to the

Complainant’s earlier trademarks.

The Complainant contends that the first condition under the Policy should be deemed satisfied.

Absence of rights or legitimate interests

There is no evidence that the Respondent has been commonly known by the disputed domain names as an individual, business, or other organization.

The Respondent reproduces the Complainant’s earlier registered trademarks in the disputed domain names without any license or authorization from the Complainant.

The Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain names in relation to a bona fide offering of goods or services.

In fact, the disputed domain name <clients-carrefour-banque.com> resolves to a page with PPC links, some of which compete with the Complainant’s business. This use trades off the goodwill of the Complainant and accordingly cannot constitute any bona fide offering of goods or services.

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“Applying UDRP paragraph 4(c), 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 compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” (section 2.9,

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

Navigation using the disputed domain name <pass-carrefour-banque.com> is blocked by the browser’s

Phishing and Malware Protection feature and the following warning message appears:

“Dangerous site recently found phishing on the site you’re trying to visit. Phishing sites pretend to be other sites to trick you.”

Attackers on the site you’re trying to visit might trick you into installing software or revealing things like your
password, phone, or credit card number. Chrome strongly recommends going back to safety.

Since the adoption and extensive use of its trademarks by the Complainant predates by far the registration of the disputed domain names, the burden is on the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the disputed domain names.

The Complainant submits that it has made a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain names, in line with the Policy (section 2.1, WIPO Overview 3.0).

Considering all the elements mentioned above, the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names.

The Complainant contends that the second condition under the Policy should be deemed satisfied.

Bad faith registration and use

The Complainant submits that the Complainant and its trademarks are so widely well-known, that it is inconceivable that the Respondent, who asserts that it resides in France, where the Complainant is headquartered, ignored the Complainant or its earlier rights.

The Respondent necessarily had the Complainant’s name and trademarks in mind when registering the disputed domain names.

This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s domains. Such use cannot be considered a good faith use.

The Complainant furthermore submits that a simple search on Google for “pass-carrefour- banque” or
“clients carrefour banque” with a browser virtually located where the Respondent is resident provides results
related to the Complainant only.

By simply maintaining the disputed domain names, the Respondent is preventing the Complainant from reflecting its trademarks in the disputed domain names.

None of the respective uses of the disputed domain names can be regarded as a good faith use under the
Policy.

The disputed domain name <clients-carrefour- banque.com> resolves to a PPC page of commercial links generating revenue, what proves that the Respondent has tried to benefit from the traffic intended for the Complainant to obtain a commercial gain.

Given the long-lasting international use of the Complainant’s trademarks, the Complainant cannot think of any future use of the disputed domain name that may be done by the Respondent in good faith as the composition of the disputed domain names carries a high risk of implied affiliation with it.

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The Complainant contends that the third condition under the Policy is deemed satisfied.

B. Respondent

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

6. Discussion and Findings
Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the disputed domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the disputed domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel notes that the respective data have in common:

- The name of the street;

- The name of the city of Reims;

- The Registrar.

These data include the name of the regions “Bretagne” or “Aquitaine”, in which Reims is supposed to be based on the disclosed addresses, despite being obviously wrong.

Mentioning the name of the region is never requested in France.

Adding these names of regions is another common element.

These common characteristics and the absence of any reaction or response show that the disputed domain names are subject to common control.

Given these circumstances, as regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

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 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.

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<clients-carrefour- banque.com>

Although the addition of the terms (here, “clients”) to the BANQUE CARREFOUR trademark 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.

In addition, the disputed domain name is composed with two elements of the BANQUE CARREFOUR trademark and is therefore also confusingly similar to this trademark.

<pass-carrefour-banque.com>

The Panel finds the CARREFOUR, BANQUE CARREFOUR, and CARREFOUR PASS trademarks are recognizable 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.

The Panel finds the first element of the Policy has been established for both disputed domain names.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no
trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

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 names. 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 names such as those enumerated in the Policy or otherwise.

The Respondent was not authorized to use or register the disputed domain names, it did neither make any bona fide use of the disputed domain names (or demonstrable plans for such use), nor any legitimate noncommercial or fair use. Moreover, it is not being commonly known by the disputed domain names.

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

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C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered, or the Respondent has acquired the domain
name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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; or

(ii) the Respondent has registered the disputed 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; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, 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 the respondent’s website or location.

In the present case, the Panel notes that the Respondent could not ignore the Complainant’s well-known CAREFOUR, CARREFOUR BANQUE, and PASS CARREFOUR trademarks, when it decided to register the disputed domain names.

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.

<clients-carrefour-banque.com>

The Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

Panels have held that the use of a domain name for resolving to a parking page related to and capitalizing upon the Complainant’s activity constitutes bad faith. WIPO Overview 3.0, sections 3.1 and 3.5. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name <clients-carrefour-banque.com> constitutes bad faith under the Policy.

<pass-carrefour-banque.com>

Panels have found that the non-use of a domain name including a page providing a warning content 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, and the composition of the disputed domain name <pass-carrefour-banque.com>, and finds that in the circumstances of this case the passive holding of the disputed domain names 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 names <clients-carrefour-banque.com> and <pass-carrefour-banque.com> be transferred to the Complainant.

/Marie-Emmanuelle Haas/
Marie-Emmanuelle Haas
Sole Panelist
Date: October 30, 2024