Carrefour SA v Francois Jumel

WIPO Case No. D2022-4543

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Francois Jumel

Case No. D2022-4543

1. The Parties

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

The Respondent is Francois Jumel, France.

2. The Domain Name and Registrar

The disputed domain name <carrefour-grp.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2022. On November 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2022, 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 December 2, 2022, 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 December 5, 2022.

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 December 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2023.

The Center appointed William Lobelson as the sole panelist in this matter on January 23, 2023. 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.

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4. Factual Background

The Complainant is Carrefour, a French and worldwide retail group, devoted to the operation of hypermarkets.

The Complainant is the owner of numerous trademarks for or incorporating CARREFOUR, including:

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

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

The Complainant is also the owner of the domain name <carrefour.com> registered since 1995.

The disputed domain name is <carrefour-grp.com>, registered on October 27, 2022. It resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and

(iii)      the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

The Complainant is the owner of numerous CARREFOUR formative trademarks, as well as a domain name formed with CARREFOUR, all registered and used in relation with retail services.

The disputed domain name is <carrefour-grp.com>. It reproduces the Complainant’s trademark
CARREFOUR in its entirety.

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Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms
(whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the term “grp” - that is
likely to be understood as an abbreviation for “group”, would not prevent a finding of confusing similarity
under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”).

Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under
UDRP, paragraph 4(c) include the following:

(i)        before any notice 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 and services;

(ii)       the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent 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 misleading divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.

The Complainant has made a prima facie case showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Complainant further contends that the Respondent is not known under the disputed domain name, does not own any proprietary rights in the name “carrefour-grp” and does not make any bona fide use - neither commercial nor noncommercial, of the same.

The Panel finds that the Complainant has met the requirement under the Policy of showing that the

Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has substantiated the fact that its trademark CARREFOUR, which has been registered and
used for years, now benefits from a high level of public’s awareness, particularly – but not only – in France.

Earlier UDRP decisions have acknowledged the Complainant’s trademark reputation:

Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No.
D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing
clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET
Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd.,

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WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v.
Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002;
Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe carrefour, WIPO

Case No. D2008-1996; Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067.

When the identity of the Respondent was disclosed by the Registrar, it was found that that the said
Respondent had declared a French name and a place of residence in France. Due to the longstanding and
use of the Complainant’s mark in France, the Respondent could not reasonably be unaware of the
Complainant’s rights when it registered the disputed domain name.

It is also noted that the Center was not able to deliver the Complaint to the Respondent, as the email address and postal address declared are not valid. In all likelihood, the Respondent used false contact details, in order to evade liability. This is, in the Panel’s view, a further indication that the Respondent is acting in bad faith.

The Panel observes besides that the Respondent made the choice of associating the trademark
CARREFOUR with the term “grp”, that directly refers to the name “group” and may thus induce that the
disputed domain name is owned and used by the Complainant to communicate about its group of companies
and subsidiaries. For this Panel it is a clear indication that the Respondent necessarily had the
Complainant’s trademark in mind when it registered the disputed domain name, and intended to distract
Internet users searching for the Complainant’s services and products.

The Panel infers from the above that the Respondent acted in bad faith when it registered the disputed domain name.

It is further noted by the Panel that the disputed domain name is not being actively used by the Respondent, and does not resolve to any active web page with substantive content.

It is a consensus view among UDRP panels that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the apparent lack of so- called active use (e.g., to resolve to a website) of the domain name, does not prevent a finding of bad faith.

The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark and no response to the Complaint having been filed. UDRP panels may draw inferences about whether a domain name is used in bad faith given the circumstances surrounding registration.

As stated in WIPO Overview 3.0, section 3.3, there is a consensus view about “passive holding”:

“From the inception of the UDRP, panelists 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. While
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.”

Such passive holding is to be regarded as use in bad faith (Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574;
Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private
Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,

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WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). See also, Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572:

“Respondent knew or should have known that the Domain Name included Complainant’s CREDIT MUTUEL well-known trademark. […] However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith.”

The Panel further finds that passive holding of the disputed domain name in this case does not prevent a finding of bad faith.

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-grp.com> be transferred to the Complainant.

/William Lobelson/
William Lobelson
Sole Panelist
Date: January 31, 2023