Carrefour SA v Ed Glenn

WIPO Case No. D2024-3945

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Ed Glenn

Case No. D2024-3945

1. The Parties

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

The Respondent is Ed Glenn, Netherlands (Kingdom of the).

2. The Domain Name and Registrar

The disputed domain name <carrefoursnsap.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2024. On September 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 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 the same day.

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 October 3, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 23, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on October 24, 2024.

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The Center appointed Daniel Peña as the sole panelist in this matter on October 29, 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, a company registered in France and listed on the Paris Stock Exchange, pioneered in
1968 the creation of the first hypermarkets and has since grown to become one of the world leaders in retail
goods sales. With a turnaround of EUR 80,7 billion in 2019, the Complainant is listed on the index of the

Paris Stock Exchange (CAC 40).

The Complainant operates more than 12,000 stores in more than 30 countries worldwide. With more than
321,000 employees worldwide, 11 million of daily checkout in its stores and 1.3 million daily unique visitors in

its online stores.

To that effect, the Complainant owns several hundred trademark rights worldwide in the CARREFOUR term. the disputed domain name and notably:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34; and

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

The disputed domain name was registered on September 1, 2024. It resolves to a blank page.

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 is highly similar to the earlier well-known trademark CARREFOUR. Indeed, the disputed domain contains the trademark CARREFOUR in its entirety, associated to the term “snsap” without any evident meaning.

The Complainant submits that it has not authorized the use of its trademark or terms similar thereto in the disputed domain name in any manner or form.

The Complainant puts forth that the Respondent has not used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services.

The Complainant submits that the Respondent has registered the disputed domain name in an attempt to use it to defraud Internet users of average attention.

The Complainant submits that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name.

The Complainant asserts that the current use of the disputed domain name should not be considered a good faith use. Indeed, the disputed domain name resolves to a blank page.

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The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

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 name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks CARREFOUR on the basis of its multiple international trademark registrations. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 1.2.1).

It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of WIPO Overview 3.0. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CARREFOUR marks. The Respondent’s incorporation of the Complainant’s mark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. The mere addition of the expression “snsap” to the Complainant’s trademark CARREFOUR does not prevent a finding of confusing similarity with the Complainant’s marks.

Furthermore, the generic Top-Level Domain “(gTLD”) “.com” is viewed as a standard registration requirement
and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section
1.11.1.

The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the first requirement of the Policy.

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.

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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.

Based on the information submitted by the Complainant, the Complainant has not granted the Respondent
authorization to use the disputed domain name. Moreover, there is no evidence indicating that the
Respondent is commonly known by the disputed domain name. Finally, the Respondent did not file a
Response to the Complaint.

The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that 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 disputed domain name reproduces the Complainant’s mark CARREFOUR in its entirety. Therefore,
the Panel finds it likely that the Respondent was aware of the Complainant’s mark at the time of registration
of the disputed domain name. On this subject, section 3.1.4 of the WIPO Overview 3.0 says: “Panels
have consistently found that the mere registration of a domain name that is identical or confusingly similar
[…] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad
faith.”

The Panel therefore holds that the disputed domain name was registered in bad faith. As to the requirement of use in bad faith, the Panel notes that the Complainant considers the matter to be a case of passive holding, i.e. a case where the disputed domain name was not connected to an active website. 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding.

Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes that the Complainant has provided evidence regarding the reputation of its trademark. The Respondent did not file a Response to the Complaint.

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 <carrefoursnsap.com> be transferred to the Complainant.

/Daniel Peña/ Daniel Peña Sole Panelist Date: November 11, 2024