Carrefour SA v Host Master, Njalla Okta LLC
WIPO Case No. D2025-0168
•24-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Host Master, Njalla Okta LLC
Case No. D2025-0168
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
The Respondent is Host Master, Njalla Okta LLC, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <pass-carrefour.click> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2025. On January 16, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2025, the Registrar transmitted by email to the Center its verification response disclosing the name of the registrant and contact information for the disputed domain name which supplemented the named Respondent (Njalla Okta LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2025, 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 January 17, 2025.
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 January 22, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 11, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 12, 2025.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 17, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
4. Factual Background
The Complainant operates in the retail business since 1968, with more than 12,000 stores in over 30 countries, having had a turnaround of EUR 83 billion in 2022. The Complainant additionally offers travel, banking, insurance, and ticketing services.
The Complainant is the owner of several trademark registrations for CARREFOUR and PASS CARREFOUR
(“trademarks”), amongst which:
- International Trademark Registration No. 351147, in classes 1 to 34, registered on October 2, 1968,
successively renewed;
- International Trademark Registration No. 353849, in classes 35 to 42, registered on February 28, 1969,
successively renewed; and
- International Trademark Registration No. 719166, in class 36, registered on August 19, 1999, successively
renewed.
The Complainant owns different domain names that include the trademarks, such as <pass-carrefour.com>,
<pass-carrefour.info>, <pass-carrefour.org>.
The disputed domain name was registered on December 11, 2024, and it does not resolve to an active webpage.
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 asserts that its CARREFOUR trademark enjoys a worldwide reputation, as past
UDRP panels have already considered it to be well-known.
The Complainant submits that the disputed domain name reproduces entirely the Complainant’s
CARREFOUR trademark with the addition of the word “pass”, a term contained in the earlier CAFFEROUR
PASS trademark, and a hyphen, what is not sufficient to avoid a finding of confusing similarity under the
Policy.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
i. the Respondent has no prior rights or legitimate interests in the CARREFOUR or CARREFOUR PASS
trademarks;
ii. the Respondent is not commonly known by the disputed domain name;
iii. the Respondent was not authorized by the Complainant to use or register its trademarks as a domain name or in any manner or form;
iv. the Respondent has not used the disputed domain name in connection with a bona fide offering of
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goods or services given that the disputed domain name resolves to an error page; and
v. given the adoption and extensive use by the Complainant of the trademarks CARREFOUR and
CARREFOUR PASS, which long predate the registration of the disputed domain name, the burden is on the
Respondent to establish its rights or legitimate interests in the disputed domain name.
Furthermore, the Complainant submits that its CARREFOUR trademark is so widely well-known that it is inconceivable that the Respondent could have ignored the Complainant and its trademark rights. Quite to the contrary, the Complainant sustains that in view of the importance of its trademarks the Respondent has registered the disputed domain name seeking to unfairly capitalize on the goodwill and fame of the Complainant’s trademarks.
As to the use of the disputed domain name in bad faith, the Complainant contends that the redirection to an error page does not prevent a finding of bad faith under the doctrine of passive holding and cannot be regarded as a good faith use under the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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 entirety of the trademarks is reproduced within the disputed domain name. 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 inversion of the terms and the addition of a hyphen may bear on assessment of the second and third elements, the Panel finds such changes and addition do not prevent a finding of confusing similarity between the disputed domain name and the mark 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.
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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.
In that sense, and according to the evidence submitted, the Complainant has made a prima facie case against the Respondent who has not been commonly known by the disputed domain name and is neither authorized, licensed, or been allowed to use the Complainant’s trademarks, whether in the disputed domain name, or in any other way.
Also, the lack of evidence as to any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the indication of an absence of rights or legitimate interests in the disputed domain name.
Moreover, according to the evidence submitted by the Complainant, the apparent passive holding of the disputed domain name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
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.
This case presents the following circumstances which indicate under the balance of probabilities bad faith registration and use of the disputed domain name:
| (previous UDRP panels have consistently found that the mere registration of a domain name that is identical | a) the composition of the disputed domain name reproducing the Complainant’s well-known trademarks domain name, such as <pass-carrefour.com>, <pass-carrefour.info>, and <pass-carrefour.org>. |
| b) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; and |
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c) noting the misleading nature of the disputed domain name (due to its resemblance with the Complainant’s domain names and trademarks) there is no plausible good faith use to which the disputed domain name may be put.
Therefore, the present non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.
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 <pass-carrefour.click> be transferred to the Complainant.
/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: February 24, 2025
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