Carrefour SA v Emiliano Santiago, Charles E Petty, packet emblazer, sian

WIPO Case No. D2025-0245

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Emiliano Santiago, Charles E Petty, packet emblazer, sian
su, karl max, backlash aloo

Case No. D2025-0245

1. The Parties

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

The Respondent are Emiliano Santiago, capsulemilio, Colombia, Charles E Petty, capsulecopr, United
States of America (“United States”), packet emblazer, Thailand, sian su, United States , karl max, United

States, and backlash aloo, Thailand.

2. The Domain Names and Registrars

The disputed domain names <aviso-carrefourpass.info>, and <avisos-carrefourpass.info> are registered with

PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

The disputed domain names <carrefourpassavisos.info>, <carrefourpass-cliente.com>,
<carrefourpass-login.com>, <carrefourpass-soporte.com>, <carrefourpass-usuario.com>, and

<es-carrefour-pass.com> are registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2025. On January 23, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 23 and 24, 2025, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Emiliano Santiago/capsulemilio, Charles E Petty/capsulecopr and REDACTED FOR PRIVACY) and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 24, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) 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 January 27, 2025.

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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 January 29, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 18, 2025. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on February 20, 2025.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 4, 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

It results from the Complainant’s undisputed allegations that it is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. With a revenue of EUR 84,9 billion in 2023, the Complainant is listed on the index of the Paris Stock Exchange (CAC 40). It operates more than 14,000 stores in more than 40 countries worldwide and has more than 500,000 employees worldwide and millions of daily unique visitors in its stores. The Complainant additionally offers travel, banking, insurance and ticketing services.

The Complainant owns numerous trademark registrations throughout the world consisting of or containing the verbal element CARREFOUR, e.g.

(1) CARREFOUR (word), European Union trademark No. 005178371 registered on August 30, 2007, for goods and services in classes 9, 35 and 38;

(2) CARREFOUR PASS (word), International trademark No. 719166 registered on August 18, 1999, for

services in class 36 and designating various countries.

The disputed domain names are the following:

Domain name	Creation Date	Registrant
aviso-carrefourpass.info	January 6, 2025	Emiliano Santiago, capsulemilio
avisos-carrefourpass.info	January 11,	Charles E Petty, capsulecopr
2025
carrefourpassavisos.info	January 10,	Charles E Petty, capsulecopr
2026
carrefourpass-cliente.com	January 17,	packet emblazer
2025
carrefourpass-login.com	January 7, 2025	sian su
carrefourpass-soporte.com	January 13,	karl max
2025
carrefourpass-usuario.com	January 9, 2025	karl max
es-carrefour-pass.com	December 21,	backlash aloo

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None of the disputed domain names is associated with an active website. They either resolve to an error page or to an “under construction” landing 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 names.

Notably, the Complainant contends that:

(1) The elements of the case at hand are sufficient to establish, on the day of the filing of the Complaint

and until rebutted, that the disputed domain names are registered by the same Registrant (or are at least
under common control). 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. Therefore, consolidation is deemed justified;

(2) The disputed domain names are confusingly similar to its earlier well-known CARREFOUR and

CARREFOUR PASS trademarks, which are entirely reproduced in the disputed domain names. The addition of generic terms such as “aviso(s)”, “cliente”, “login”, “soporte”, “usuario” and “es” to a trademark (if we consider the CARREFOUR PASS trademark) in a domain name do nothing to diminish the likelihood of confusion arising from that domain name and that the presence of one or more hyphens in a domain name is of negligible significance when assessing confusing similarity;

(3) None of the circumstances which set out how a Respondent can prove rights or legitimate interests in

the disputed domain names, are present in this case. In particular, the Respondents have acquired no trademark in the term CARREFOUR which could have granted them with rights in the disputed domain names. There is no evidence that the Respondents have been commonly known by the disputed domain

names as individuals, businesses, or other organizations. The Complainant did not grant the Respondents
any license or authorization regarding its trademarks. The disputed domain names are inherently likely to
mislead Internet users, and their specific composition carries a high risk of implied affiliation with the
Complainant which cannot constitute fair use. The adoption and extensive use of its trademarks by the
Complainant predates by far the registration of the disputed domain names;

(4) The combination of all the elements of the case unequivocally shows that the Respondents acted in bad faith when registering the disputed domain names. In particular, the Complainant and its trademarks were so widely well-known that it is inconceivable that the Respondent ignored the Complainant or its earlier

rights. Therefore, the Complainant considers it highly likely that the Respondents chose the disputed domain
names because of their similarity to the Complainant’s trademarks, which significantly predate the
registration date of the disputed domain names. Finally, the Complainant cannot think of any future use of

the disputed domain names that may be done by the Respondent in good faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

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(i) each 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 each disputed domain name; and

(iii) each disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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. Therefore, 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 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As set forth in section 4.11.2 of WIPO Overview 3.0: “Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’

contact information including email address(es), postal address(es), or phone number(s), including any
pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of
websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a
registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g.,
<mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names
particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to
any of the above items following communications regarding the disputed domain name(s), (ix) any evidence
of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior)
pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures

by the respondent(s).”

As regards common control, the Panel notes the following factors:

(1) The disputed domain names follow the same naming pattern by identically incorporating the trademark CARREFOUR PASS. In addition, all disputed domain names (except for <carrefourpass-login.com>) combine said trademark with a term in Spanish language (“aviso”, “avisos”, “cliente”, “soporte” and “usuario”) or referring to Spain (“es”);

(2) the email addresses of all the registrants rely on Proton Mail (proton.me), an online encrypted email service, and on SimpleLogin services (aleeas.com, simplelogin.com and slmail.me), a tool to shield Proton Mail (or other email) by generating temporary or permanent email aliases;

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(3) The Registrants share similar characteristics and irregularities: “packet emblazer” and “backlash aloo”

do not appear as plausible, real-world names. “Emiliano Santiago” and “Charles E Petty” share similar
organization names (“capsulemilio” and “capsulecopr”) and no clear street address is indicated for neither
Registrant;

(4) None of the disputed domain names resolve to an active website but rather to an error page or to an “under construction” landing page.

On the balance of probabilities and taking into account the above circumstances of the present case, the
Panel finds that the disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. The Respondents have been given the opportunity to comment on the foregoing and have elected not to file a response or to provide any explanation. In particular, the Respondents failed

to come forward with any allegations or evidence to object the consolidation.

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 trademark or service marks CARREFOUR and

CARREFOUR PASS for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of these marks are reproduced within the disputed domain names. Accordingly,
the disputed domain name is 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 “es”, “aviso”, “avisos”, “cliente”, “soporte”, “pass”, “usuario” and “login”, may bear on the 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 marks for the purposes of the Policy, WIPO Overview 3.0, section 1.8.

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 evidence, the complainant is deemed to have satisfied the second element, WIPO Overview 3.0, section 2.1.

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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.

UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of
implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the
second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it
effectively impersonates or suggests sponsorship or endorsement by the trademark owner,
WIPO Overview 3.0, section 2.5.1. In particular, certain geographic terms (e.g., <trademark-usa.com>, or
<trademark.nyc>), or terms with an “inherent Internet connotation” (e.g., <e-trademark.com>,
<buy-trademark.com>, or <trademark.online>) are seen as tending to suggest sponsorship or endorsement
by the trademark owner. The Panel shares this view for <es-carrefour-pass.com> (geographic term) and
<carrefourpass-login.com>, <carrefourpass-soporte.com>, <carrefourpass-usuario.com>,
<aviso-carrefourpass.info>, <avisos-carrefourpass.info>, <carrefourpassavisos.info>,
<carrefourpass-cliente.com>, (terms with an inherent Internet connotation, i.e. “login”, “soporte” which means
“support” in English, “usuario” which means “user” in English; and finally terms which can also be
understood as having an inherent Internet connotation, i.e. “avisos” which means “notification” in English and
“cliente” which means “client” in English).

In addition, the Respondents’ use of irregular names, organization names, diverging address data and country codes etc. as explained above is also taken in consideration, and this Panel finds it most likely that the Respondents selected the disputed domain names with the intention to take advantage of the Complainant’s registered trademarks CARREFOUR and CARREFOUR PASS by registering domain names containing these trademarks identically.

Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.

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.

None of the disputed domain names are associated with an active website but either resolve to an error page or to an “under construction” landing page.

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, WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, which has been confirmed by many UDRP Panels, and the composition of the disputed domain names, including the Complainant’s trademarks identically, 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.

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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, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the following:

(1) At least the Complainant’s trademark CARREFOUR enjoys a high degree of distinctiveness and even

reputation. This has been confirmed by many Panels and has not been contested by the Respondent.
Therefore, this Panel has no reason to call these findings into question;

(2) The composition of the disputed domain name show that all disputed domain names identically include

the Complainant’s trademarks CARREFOUR and CARREFOUR PASS (combined with other – non
distinctive terms/elements). These trademarks have existed and been used for many years before the
disputed domain names have been registered;

(3) The Respondent failed to submit a response and give any explanation of their behaviour;

(4) The Respondent evidently used false contact details, noting the mail courier’s inability to deliver the Center’s written communications.

In the light of the above, the Panel has no doubt that the Respondent positively knew or should have known that the disputed domain names identically contained the Complainant’s trademark CARREFOUR and CARREFOUR PASS, when they registered these domain names, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name.

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 all disputed domain names <aviso-carrefourpass.info>, <avisos-carrefourpass.info>
<carrefourpassavisos.info>, <carrefourpass-cliente.com>, <carrefourpass-login.com>,
<carrefourpass-soporte.com>, <carrefourpass-usuario.com>, and <es-carrefour-pass.com> be transferred to

the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: March 18, 2025