Carrefour SA v Domingo Reyes, Ernesto Villanueva, Pedro Rivas, Sergio

WIPO Case No. D2024-4880

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Domingo Reyes, Ernesto Villanueva, Pedro Rivas, Sergio
Godoy, Diego Murillo, Alejandro Soriano, Carrefour, and Silvia Caceres,
Carrefour

Case No. D2024-4880

1. The Parties

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

The Respondents are Domingo Reyes, Ernesto Villanueva, Pedro Rivas, Sergio Godoy, Diego Murillo,

Alejandro Soriano, Carrefour, and Silvia Caceres, Carrefour, Spain.

2. The Domain Names and Registrar

The disputed domain names <carrefour-express-sr.shop>, <carrefour-express-sw.shop>,
<carrefour-express-sw.site>, <carrefour-express-sw.store>, <carrefour-express-sw.website>,
<carrefour-hr.online>, and <supermercado-carrefour.site> are 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 26, 2024. On November 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent (Privacy Protect, LLC (PrivacyProtect.org) and Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on December 4, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 27, 2024.

The Center appointed Mihaela Maravela as the sole panelist in this matter on January 9, 2025. 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

According to information in the Complaint, the Complainant is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. With a revenue of 83 billion euros in 2022, the Complainant is listed on the index of the Paris Stock Exchange. The Complainant operates more than 12,000 stores in

more than 30 countries worldwide. With more than 384,000 employees worldwide and 1,3 million daily unique visitors in its stores, the Complainant is a major and well-known worldwide leader in retail. The Complainant additionally offers travel, banking, insurance and ticketing services. The Complainant is

commercially present in Spain with more than 200 hypermarkets, 160 “Carrefour Market” supermarkets and 1,000 “Carrefour Express” supermarkets. A dedicated website for its Spanish customers is available at the domain name <carrefour.es>.

The Complainant is the holder of a number of trademarks for CARREFOUR and CARREFOUR EXPRESS, including the International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes of 1 to 34; the International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42; the European Union trademark CARREFOUR EXPRESS (figurative) No. 5405832, registered on October 18, 2007, duly renewed, and designating goods and services in international classes 29, 30, 31, 32, 33 and 35.

The Complainant has registered the domain name <carrefour.com> since October 25, 1995, that it uses as its official website.

The disputed domain names were registered between November 11, 2024 and November 14, 2024 and they resolve to landing pages of the Registrar, except for the disputed domain name <carrefour-hr.online>, which resolves to an error page.

5. Parties’ Contentions

The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain names.

Notably, the Complainant submits that the disputed domain names are confusingly similar to its earlier well- known trademarks, which are immediately recognizable and are entirely reproduced in the disputed domain names. The addition of generic terms, or letters, like “sr”, “sw”, “hr”, “supermercado” and “express”, to a

trademark in a domain name does nothing to diminish the likelihood of confusion arising from that domain
name and the presence of one or more hyphens is of negligible significance when assessing confusing
similarity.

As regards the second element, the Complainant submits that it has not authorized the use of its earlier trademarks or terms similar thereto in the disputed domain names in any manner or form. Moreover, the Respondents have not, before the 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 names

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are not associated with any active website and they resolve to standard landing pages provided by the inherently likely to mislead Internet users, and there is no evidence that the Respondents have been making a legitimate noncommercial or fair use of the disputed domain names. Also, there is no evidence that the Respondents have been commonly known by the disputed domain names as an individual, business, or other organization. The fact that the name “Carrefour” was indicated by the Respondents together with “Alejandro Soriano” and “Silvia Caceres” should be considered as further evidence of the Respondents’ lack of rights and bad faith.

With respect to the third element, the Complainant submits that the Complainant and its trademarks were so widely well-known, that it is inconceivable that the Respondents ignored the Complainant or its earlier rights. The current use of the disputed domain names may not be considered a good faith use. By simply

maintaining the disputed domain names, the Respondents are preventing the Complainant from reflecting its name and trademarks in the corresponding domain names. In addition, the disputed domain names are not associated with any active website but they resolve to standard landing pages and/or error pages. The non- use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.

B. Respondents

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

6. Discussion and Findings

6.1. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the 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, claiming that there is sufficient connection between all the disputed domain names whether in terms of their naming composition, date of registration, choice of registrar, disclosed registrant information or use.

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 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 are
subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
4.11.2.

As regards common control, the Panel notes that (i) the disputed domain names were registered in a very short time frame, between November 11, 2024 and November 14, 2024; (ii) the disputed domain names were registered through the same Registrar; (iii) the disputed domain names share a similar naming pattern,

reproducing the Complainant’s CARREFOUR name and trademark, together with other terms, separated by domain names is associated with an active website; (v) all the Registrants are supposedly resident in Spain and there are various commonalities in the contact details. Moreover, none of the named Respondents have challenged the Complainant’s contention that the underlying registrant of all disputed domain names is the same person and/or that all disputed domain names are under common control.
hyphens; moreover, five of the disputed domain names also reproduce the Complainant’s CARREFOUR

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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.

6.2. Substantive matters

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, and the Panel can draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0.

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (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

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.

The Panel finds that the marks CARREFOUR and CARREFOUR EXPRESS are recognizable within the disputed domain names. Accordingly, the disputed domain names are 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, “sr”, “sw”, “hr”, “supermercado” and hyphens) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well accepted that a generic Top-Level Domain, in this case “.shop”, “.site”, “.store”, “.website”,
“.online”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO

Overview 3.0, section 1.11.1.

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

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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.

As to paragraph 4(c)(i) of the Policy, the disputed domain names are inactive and therefore not being used for a bona fide offering of goods or services. Furthermore, the nature of the disputed domain names carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

There is no evidence that the Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. The Panel notes that the Respondent has provided registration details of “Alejandro Soriano, Carrefour” and “Silvia Caceres, Carrefour” for two of the disputed domain names; however, there is no evidence before the Panel that the Respondent is commonly known by the disputed domain names for the purposes of the Policy, and it appears more likely than not that the choice of registration details was intended to falsely suggest an affiliation with the Complainant.

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.

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.

In this case, according to the unrebutted assertions of the Complainant, its CARREFOUR and CARREFOUR EXPRESS trademark were widely used in commerce well before the registration of the disputed domain names: few of the Complainant’s trademarks date back to 1968, some 56 years before the registration of the disputed domain names, and the Complainant has registered the domain name <carrefour.com> that resolves to its main website since 1995. The reputation of the Complainant’s trademarks is clearly established. The disputed domain names are confusingly similar to the Complainant’s trademarks. Under these circumstances, the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the confusingly similar disputed domain names.

As regards the use, Panels have found that the non-use of a domain name (including a blank 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, the composition of the disputed domain names, the Respondent’s failure to respond to the present proceedings; the implausibility of any good faith use to which the disputed domain names may be put, 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.

In the circumstances of the case, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes 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-express-sr.shop>, <carrefour-express-sw.shop>,
<carrefour-express-sw.site>, <carrefour-express-sw.store>, <carrefour-express-sw.website>,

<carrefour-hr.online> and <supermercado-carrefour.site> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: January 20, 2025