Carrefour SA v Domain Administrator, NameSilo, LLC

WIPO Case No. D2024-4404

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Domain Administrator, NameSilo, LLC

Case No. D2024-4404

1. The Parties

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

The Respondent is Domain Administrator, NameSilo, LLC, United States of America.

2. The Domain Names and Registrar

The disputed domain names <carrefourksa.one>, <carrefour-ksa.sbs>, <carrefourksa.sbs>,
<carrefourksa.top>, <carrefourksa24.sbs>, and <carrefourksa24.top> are registered with NameSilo, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024.
On October 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On October 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 (REDACTED FOR PRIVACY, See PrivacyGuardian.org) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
October 29, 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 6, 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 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2024.

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The Center appointed Steven A. Maier as the sole panelist in this matter on December 5, 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. Identity of Respondent and Consolidation of Proceedings

The Complainant points out that the Registrar is itself the registrar-disclosed registrant of all six of the disputed domain names, albeit providing a registrant email address that appears unrelated to the Registrar. It states that it approached the Registrar on October 30, 2024, providing it with an opportunity to identify any other underlying registrant of the disputed domain names, but the Registrar did not respond. It submits in the circumstances that the Registrar is the correct Respondent in the proceeding, and that the proceedings in respect all six of the disputed domain names should be consolidated.

The Panel finds that there is no basis upon which to identify any respondent in the proceeding other than the
Registrar-disclosed registrant of all six of the disputed domain names, and that “Domian Administrator,
NameSilo, LLC” is therefore the proper Respondent.

The Panel also finds that all six of the disputed domain names are under common control. While each of the disputed domain names having the same registrant is sufficient in this regard, the Panel also notes that all of the disputed domain names were registered on the same date, and that all include the Complainant’s

trademark CARREFOUR together with term “ksa”.

The Panel therefore directs that the proceedings in respect of all six of the disputed domain names are duly consolidated.

5. Factual Background

The Complainant is a public company registered in France. It is a provider of supermarket services.

The Complainant is the owner of numerous registrations for the trademark CARREFOUR, including for example:

- International trademark registration number 191353 for a figurative mark CARREFOUR, registered on

March 9, 1956 in International Class 3; and

- International trademark registration number 351147 for a figurative mark CARREFOUR, registered on

October 2, 1968 in International Classes 1-34 inclusive.

The Complainant operates a website at “ and is the registrant of other domain names,
including those combining the term “carrefour” with a country-code Top-Level Domain (“ccTLD”), such as
<carrefour.fr> and <carrefour.eu>.

The Complainant’s CARREFOUR trademark has been found by previous panels under the UDRP to have obtained the status of a famous or well-known trademark (see e.g., Carrefour SA v. Milen Radumilo, WIPO Case No. DCO2022-0103).

All six of the disputed domain names were registered on September 8, 2024.

All six of the disputed domain names appears to have resolved only to an “error” message stating that the relevant page cannot be reached.

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6. Parties’ Contentions

A. Complainant

The Complainant reiterates that its CARREFOUR trademark is well known. It states that it was founded in
1959 and was the pioneer of the “hypermarket” concept. It submits that it operates over 12,000 stores in
over 30 countries, including the Kingdom of Saudi Arabia, with more than 384,000 employees worldwide,
and an annual turnover in the region of EUR 80 billion. The Complainant claims a high level of recognition in
Saudi Arabia, with 2.6 million followers on its Saudi Arabia Facebook page and 1.1 million followers on its
Saudi Arabia Instagram page.

The Complainant submits that the disputed domain names are confusingly similar to its trademark CARREFOUR. It states that each of the disputed domain names incorporates the CARREFOUR trademark in full, together with the term “ksa” (which would be understood to reference the Kingdom of Saudia Arabia), and in two cases the term “24” (which would imply round-the-clock services). It submits that these additions do not prevent a finding of confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has no relationship with the Respondent and has never authorized it to use its CARREFOUR trademark, that the Respondent has not commonly been known by the disputed domain names and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It states that, in view of the global recognition of the CARREFOUR mark, including in Saudi Arabia, it is implausible that the Respondent was unaware of that trademark when it registered the disputed domain names. The Complainant further submits that by adding the term “ksa” to each of the disputed domain names, the Respondent is deliberately misrepresenting that the disputed domain names are authorized and relate to the Complainant’s business in Saudi Arabia.

The Complainant adds that the Respondent’s concealing of its underlying identity in connection with the disputed domain names is further evidence of registration in bad faith.

The Complainant submits that the Respondent can only be using the disputed domain names to attempt trade off the goodwill that attaches to the famous CARREFOUR trademark, and in particular to prevent the Complainant from reflecting its trademark in the disputed domain names. The Complainant adds that there can be no legitimate explanation for the Respondent’s use of the disputed domain names, and that the fact that they have not resolved to any active websites, i.e. are “passively” held, does not prevent a finding of bad faith in all the circumstances of the case.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of registered trademark rights for the mark
CARREFOUR. Each of the disputed domain names incorporates that trademark in full, together with the
term “ksa”, and in two cases the term “24”, none of which additions prevent the Complainant’s trademark
from being recognizable within the disputed domain names. The Panel therefore finds that all of the disputed

domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain names, or evidence of rights or legitimate interests on its part in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant has established that its CARREFOUR trademark is famous worldwide and that it conducts substantial business in the Kingdom of Saudia Arabia. The Respondent has provided no explanation for its registration of the disputed domain names, which the Panel finds to be likely to be understood by Internet

users as referring to the Complainant and its business in the Kingdom of Saudia Arabia. The Panel infers in
the circumstances that the Respondent registered the disputed domain names with the Complainant’s
trademark in mind, and with the intention of deriving unfair commercial advantage from the goodwill attaching
to that trademark.

The Panel finds the disputed domain names to be inherently misleading, as inevitably suggesting to Internet users that they are owned or operated by, or otherwise legitimately affiliated with, the Complainant. While the Respondent’s ultimate intentions with regard to the disputed domain names is unclear, the Panel can conceive of no use that the Respondent could make of any of the disputed domain names without causing confusion with the Complainant’s trademark and taking unfair advantage of, and/or causing unfair detriment to, that trademark.

The Panel notes that the “passive” holding of a domain name does not prevent a finding of registration and use of that domain name in bad faith when all the circumstances of the case point to that conclusion (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel therefore finds that all of the disputed domain names have been registered and are being used in bad faith.

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8. 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 <carrefourksa.one>, <carrefour-ksa.sbs>, <carrefourksa.sbs>,

<carrefourksa.top>, <carrefourksa24.sbs>, and <carrefourksa24.top> be transferred to the Complainant.

/Steven A. Maier/
Steven A. Maier
Sole Panelist
Date: December 18, 2024