Carrefour SA. v Gregorio Romero, David Sandoval, Eduardo Caballero

WIPO Case No. D2024-4177

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA. v. Gregorio Romero, David Sandoval, Eduardo Caballero

Case No. D2024-4177

1. The Parties

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

The Respondents are Gregorio Romero, Spain, David Sandoval, Spain, and Eduardo Caballero, Spain.

2. The Domain Names and Registrar

The disputed domain names <carrefour-group.online>, <carrefour-group.shop>, and <carrefour-group.store> 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 October 10, 2024. On October 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 14, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact

information in the Complaint.

The Center sent an email communication to the Complainant on October 14, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, 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 October 16, 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 Respondents of the
Complaint, and the proceedings commenced on October 17, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 6, 2024. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on November 7, 2024.

page 2

The Center appointed Marina Perraki as the sole panelist in this matter on November 11, 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 is a worldwide leader in retail and hypermarkets starting in 1968. With a revenue of 83 billion Euros in 2022, 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 and additionally offers travel, banking, insurance, or ticketing services. The Complainant has more than 384,000 employees

worldwide and 1.3 million daily visitors in its stores. The Complainant’s Facebook page is currently “liked” by

more than 11 million Internet users.

The Complainant is the owner of numerous trademarks for CARREFOUR worldwide including:

- International trademark registration No. 351147, CARREFOUR (word), registered on October 2, 1968, for

goods and services in international classes 1 to 34; and

- International trademark registration No. 353849, CARREFOUR (word), registered on February 28, 1969, for

services in international classes 35 to 42.

The CARREFOUR brand enjoys wide reputation, as repeatedly recognised (Carrefour SA v. jean noel
ballart, WIPO Case No. D2023-2225; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, Carrefour SA v.

Youssefgcxh Elachourix, WIPO Case No. D2024-0840).

The Complainant is also the owner of domain names including the word CARREFOUR, such as
<carrefour.com> registered since 1995, <carrefour.fr> registered since 2005 and <pass-carrefour.com>

registered since 2019.

The disputed domain names were all registered on October 1, 2024, and they lead to inactive websites.

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.

B. Respondents

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain names:

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

(ii)       Respondents have 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.

page 3

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.

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 regards common control, the Panel notes that a) the disputed domain names were registered on the same exact day; 2) they all have the same Registrar; 3) all disputed domain names have the same structure, namely “carrefour-group”; 4) all disputed domain names lead to inactive websites; 5) according to the WhoIs details, all Respondents are located in Spain; 6) all Respondents have the same street address of residence even though they are located in different cities. Moreover, two of the registered Respondents share the same telephone and fax number while the third one has the same number with just a different final digit; 7) the email addresses of the different Respondents in the WhoIs contact details share the same naming pattern (first name + numbers + letters) and they are all Gmail accounts.

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.

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 the mark is recognizable within the disputed domain names. The Complainant’s mark is
reproduced in the disputed domain names together with the term “group”, separated by a hyphen.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The generic Top-Level Domains (“gTLDs”) “.online”, “shop”, “store” are disregarded, as gTLDs typically do
not form part of the comparison on the grounds that they are required for technical reasons (Rexel
Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International

Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds the first element of the Policy has been established.

page 4

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.

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.

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.

The Complainant’s CARREFOUR trademark is well known (see for example Carrefour SA v. jean noel ballart, WIPO Case No. D2023-2225; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, Carrefour SA v. Youssefgcxh Elachourix, WIPO Case No. D2024-0840). Because the CARREFOUR mark had been widely used and registered by the Complainant at the time of the disputed domain names’ registrations and enjoyed reputation, the Panel finds it more likely than not that the Respondent had the Complainant’s trademark in mind when registering the disputed domain names (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). Furthermore, the whole of the Complainant’s trademark is included in the disputed domain names. The above is a clear indication that the Respondent knew of the Complainant and its trademarks and chose the disputed domain names having those in mind.

Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith use 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.

The Panel notes a) the reputation of the Complainant’s trademark, b) the fact that the Respondent has not submitted a response, c) the fact that the Respondent used a privacy shield when registering the disputed domain names, and d) the composition of the disputed domain names, which incorporate the Complainant’s trademark entirely. Taking all the above into account, the Panel 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.

page 5

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 names <carrefour-group.online>, <carrefour-group.shop>,

<carrefour-group.store> be transferred to the Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: November 25, 2024