Carrefour SA v Idah Idah

WIPO Case No. D2024-5324

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Idah Idah

Case No. D2024-5324

1. The Parties

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

The Respondent is Idah Idah, United States of America (“USA”).

2. The Domain Name and Registrar

The disputed domain name <clubautocarrefourbanque.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2024. On December 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 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 (Domain Protection Services, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 2, 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 2, 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 3, 2025. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2025. The Respondent did not submit any response. Accordingly, the Center

notified the Respondent’s default on January 31, 2025.

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The Center appointed Jon Lang as the sole panelist in this matter on February 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

The Complainant is a worldwide leader in retail with turnover of 76 billion euros in 2018 and operates more than 12,000 stores in more than 30 countries worldwide. The Complainant also offers travel, banking, insurance, and ticketing services.

The Complainant owns several trademarks worldwide, including EU trademark CARREFOUR No. 008779498, registered on July 13, 2010; International trademark CARREFOUR No. 563304, registered on November 6, 1990; French trademark BANQUE CARREFOUR No. 3585968, registered on December 5, 2008, and USA trademark CARREFOUR No. 6763415, registered on June 21, 2022.

The Complainant also owns numerous domain names integrating “CARREFOUR”, such as <carrefour.com> registered on October 25, 1995 and <carrefour-banque.com > registered on October 7, 2009.

The Complainant’s Facebook page is currently “liked” by more than 11 million Internet users and it is also popular on TikTok and Instagram.

The disputed domain name <clubautocarrefourbanque.com> (hereafter the Domain Name) was registered on

December 3, 2024, and resolves to a pay per click 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 Domain Name. Below is a summary of its main assertions.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant’s CARREFOUR and BANQUE CARREFOUR trademarks enjoy a wide-spread reputation.

The Domain Name is highly similar to these trademarks. Given the similarity, the Domain Name is confusingly similar to the Complainant’s (earlier) trademarks.

The Domain Name includes the trademark CARREFOUR, but adds the words “club” and “auto”. The word

“banque” is also added but that word is part of the trademark, BANQUE CARREFOUR.

The addition of generic terms does not significantly affect the appearance or pronunciation of the Domain Name
and is not sufficient to avoid creating a likelihood of confusion. The trademarks CARREFOUR and BANQUE
CARREFOUR are easily identifiable and recognizable within the Domain Name.

The words “club”, “auto”, and “banque” increase the risk of confusion in the mind of the average Internet user as these terms are directly linked to the Complainant’s commercial activity; the word “club” is commonly used for fidelity programs that suit the Complainant’s retailing, banking and insurance activities; the word “auto” is a

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French word that commonly means “car”, which is directly linked to the insurance activity of the Complainant; and the word “banque” is not only linked to the Complainant’s banking activity, but is also a reproduction of the trademark, BANQUE CARREFOUR.

The first level domain (.com) should not be taken into consideration when evaluating the risk of confusing similarity.

The Respondent has no rights or legitimate interests in respect of the Domain Name

The Respondent has not been authorized by the Complainant to use the trademark CARREFOUR or BANQUE

CARREFOUR in any manner and did not give consent for registration of the Domain Name.

There is no contractual or commercial relationship between the Complainant and Respondent.

The Complainant performed searches and found no CARREFOUR or BANQUE CARREFOUR trademark owned
by the Respondent. The Respondent therefore has acquired no trademark in the names CARREFOUR or

BANQUE CARREFOUR which could confer on the Respondent rights in the Domain Name.

The Complainant has found no evidence that the Respondent is known by the Domain Name.

The Complainant has not used or made preparations to use the Domain Name in relation to a bona fide offering of goods or services. On the contrary, the Domain Name resolves to a pay per click page.

There are no circumstances that indicate that the Respondent has a legitimate interest in respect of the Domain

Name.

The Domain Name was registered and is being used in bad faith

The Complainant’s CARREFOUR and BANQUE CARREFOUR trademark registrations pre-date the registration date of the Domain Name.

Given the Complainant’s geographic presence and reputation, it is very likely that the Respondent knew of the
trademark CARREFOUR, or BANQUE CARREFOUR, at the time of registration of the Domain Name. By
choosing the terms “CARREFOUR” and “BANQUE” to use in the composition of the Domain Name, the
Respondent has sought to benefit from the Complainant’s reputation by suggesting an affiliation with the

Complainant’s trademarks. In so doing, Internet users will be misled.

A simple online search for “CARREFOUR” and “BANQUE CARREFOUR” shows results only related to the
Complainant.

A quick CARREFOUR or BANQUE CARREFOUR trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks. The Respondent’s failure to so search is a contributory factor to its bad faith.

The Respondent registered the Domain Name decades after registration of the well-known trademark
CARREFOUR. It is nearly impossible, given the composition and complexity of the Domain Name, that similarity
with the trademark is a coincidence. It is very likely that registration of the Domain Name took place with the
Complainant’s trademark in mind.

It is likely that the Respondent registered the Domain Name in order to resell it to the Complainant or to prevent the Complainant from using it.

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Since registration, the Domain Name has only resolved to a pay per click page. However, even inactivity can constitute bad faith use and here, the inactivity, in addition to lack of legitimate use, could suggest an intention by the Respondent to profit from the trademarks CARREFOUR or BANQUE CARREFOUR, or an intention to harm.

By reproducing the Complainant’s trademark in the Domain Name, the Respondent strengthens the impression that it is affiliated with the Complainant. This strategy of confusion could make Internet users wrongly believe that they are visiting an official website of the Complainant, or one that is affiliated to the Complainant.

Use of the Domain Name suggests an intention to profit from the reputation of the trademarks CARREFOUR and
BANQUE CARREFOUR’s by redirecting Internet users to the pay per click page.

Given the Complainants rights, it is difficult to imagine that the Respondent could use the Domain Name in good faith.

Although the Domain Name is not actively used, its non-use does not prevent a finding of bad faith pursuant to the doctrine of passive holding, the relevant question not being limited to whether the Respondent is undertaking a positive action in bad faith, but instead whether, in all the circumstances, the Respondent is acting in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove: (i) that a respondent has registered a domain name which is identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant is the owner of the CARREFOUR and BANQUE CARREFOUR trademarks and thus clearly has rights for the purposes of the Policy.

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(s) and the disputed domain name. (WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7).

Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the CARREFOUR trademark, preceded by the words “club” and “auto”, with the word “banque” added after the CARREFOUR trademark, to form the “clubautocarrefourbanque” string of words.

Given that the CARREFOUR and BANQUE CARREFOUR trademarks, and the Domain Name are not identical, the issue of confusing similarity must be considered.

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Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” (section 1.7 of the WIPO Overview 3.0). Section 1.7 goes on to provide “[...] in cases where a domain name incorporates the entirety of a trademark, [...] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The CARREFOUR trademark is incorporated in its entirety within the Domain Name. So too is the BANQUE similarity.
CARREFOUR trademark, albeit the two words are reversed. The trademarks are recognizable within the

The Panel finds that the Domain Name is confusingly similar to the CARREFOUR and BANQUE CARREFOUR trademarks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Complainant is deemed to have satisfied the second element. Despite the lack of any answer to the Complaint, however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name and given the nature of the website to which the Domain Name resolves i.e., a parking website with links to commercial websites (some of which may well compete with the Complainant’s business), it cannot be said that there is legitimate

noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of also its BANQUE CARREFOUR trademark (albeit with reversal of BANQUE and CARREFOUR), with the addition of words that could readily be associated with the Complainant i.e., “club” and “auto”, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party (and possibly competing) websites. In these circumstances, it would be difficult to

accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy.

In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant and its CARREFOUR trademark (and most probably its BANQUE CARREFOUR trademark too), at the time of registration of the Domain Name given its formulation.

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One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.

The purpose behind registration of the Domain Name appears to have been to attract Internet users to a parking words, the very circumstances envisaged above.

web page using a domain name confusingly similar to the Complainant’s CARREFOUR and BANQUE
CARREFOUR trademarks, which contains links to other web sites, some of which may well compete with the

The fact that links on the website to which the Domain Name resolves might be automatically generated does not prevent a finding of bad faith under the Policy. (Section 3.5 of the WIPO Overview 3.0).

The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain

Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <clubautocarrefourbanque.com> be transferred to the Complainant.

/Jon Lang/
Jon Lang
Sole Panelist
Date: February 18, 2025