Carrefour SA v Josiane Bucci

WIPO Case No. D2024-4853

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. JOSIANE BUCCI

Case No. D2024-4853

1. The Parties

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

The Respondent is JOSIANE BUCCI, France.

2. The Domain Name and Registrar

The disputed domain name <carrefour-manager.online> is registered with Key-Systems GmbH (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2024. On November 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2024, 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 November 27, 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2024.

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The Center appointed Elise Dufour as the sole panelist in this matter on January 6, 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 the French company Carrefour SA, a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968.

With a turnaround of 76 billion euros in 2018, the Complainant operates more than 12.000 stores in more than 30 countries worldwide.

With more than 384.000 employees worldwide and 1.3 million daily unique visitors in its stores, the

Complainant is a major and well-known worldwide leader in retail.

The Complainant owns numerous CARREFOUR trademark registrations around the world, among which:

- European Union trademark CARREFOUR No. 008779498, registered on July 13, 2010, duly renewed,
covering services in class 35.
- International trademark CARREFOUR, No. 563304, registered on November 6, 1990, duly renewed,
covering services in classes 1 to 42;
- French trademark CARREFOUR, under No. 1565338 registered on May 25, 1990, duly renewed, covering
services in classes 1 to 34;

In addition, the Complainant is also the owner of numerous domain names including for example the following ones:

- <carrefour.com> registered since 1995;

- <carrefour.fr> registered since 2005.

The disputed domain name was registered by the Respondent on October 28, 2024.

At the time of filing the Complaint and the drafting of the Decision the disputed domain name is not active as it resolves to a registrar by default parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that (i) the disputed domain name are highly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name.

(i) The Complainant claims that the disputed domain name is confusingly similar to its earlier well-known trademarks, since the disputed domain name reproduces its CARREFOUR trademarks to which the word “manager” is added. For the Complainant, it is well established that, where the relevant trademark is

recognizable within the disputed domain name, the addition of descriptive, geographical, pejorative, trademark increases the risk of confusion in the mind of the average internet user.

meaningless, or other terms does not prevent a finding of confusing similarity. For the Complainant the
dominant feature of the disputed domain name is the Complainant’s mark CARREFOUR, the adjunction of
the term “manager” is insufficient to avoid confusing similarity between the disputed domain name and the

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(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name: The Respondent has acquired no trademark in the terms CARREFOUR, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark CARREFOUR.

The Respondent is not commonly known by the disputed domain name. In addition, the Respondent has made no use or preparation of use of the disputed domain name in relation to a bona fide offering of goods or services.

(iii) Due to the strong reputation and well-known character of the trademark CARREFOUR, the Complainant and is using the disputed domain name to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks. The Complainant also claims that the Respondent’s use of the disputed domain name is made in bad faith, as the disputed domain name is not actively used.

considers that the Respondent could not have ignored the existence of the Complainant’s trademark at the
time the disputed domain name was registered. Moreover, for the Complainant, it is nearly impossible,
regarding the composition and the complexity of the disputed domain name that the similarity with the
trademark is a coincidence. In addition, the Complainant alleges that is very likely that the Respondent
chose the disputed domain name because of their similarity or identity with a trademark in which the

B. Respondent

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

6. Discussion and Findings

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 mark 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 addition of other terms here “manager” may bear on assessment of the second and third elements, the Panel finds the addition of such term does 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.

Regarding the generic Top-Level Domain (“gTLD”) “.online” in the disputed domain name, it is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1.

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.

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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 name. 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 name such as those enumerated in the Policy or otherwise.

The Complainant contends that the Respondent lacks authorization to utilize the CARREFOUR trademark and is not affiliated with nor licensed by the Complainant. The composition of the disputed domain name suggests a deceptive affiliation, thereby precluding any rights or legitimate interests in the disputed domain name.

Additionally, it appears that the Respondent is not commonly known by the disputed domain name, reportedly holds no rights to the sign CARREFOUR, and demonstrates no bona fide use of it, either commercially or non-commercially. Based on these assertions, the Panel finds it reasonable to conclude

that the Respondent lacks legitimate interests or rights in the use of the disputed domain name.

Based on the available record, 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.

In the present case, the Panel notes that the Respondent knew of the Complainant and its mark, which many prior UDRP panels have confirmed to be distinctive and well-known (see for instance Carrefour v. Yunjinhua, WIPO Case No. D2014-0257; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v.

VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. WhoisGuard, Inc., WhoisGuard
Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-
2533; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. Jean-Pierre Andre Preca,
WIPO Case No. D2018-2857; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-
2610; Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895
and Carrefour SA v. Jamyz Baleck, Beneld Liis, WIPO Case No. D2023-1491).

The disputed domain name resolves to a parking page. Panels have found that the non-use of a domain name 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 or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the

circumstances of this case the passive holding of the disputed domain name does not prevent a finding of

bad faith under the Policy.

As a consequence, the Panel finds that the registration and use of the disputed domain name by the constitutes bad faith under the Policy.

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Based on the available record, the Panel finds the third element of the Policy has been established

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-manager.online> be transferred to the Complainant.

/Elise Dufour/ Elise Dufour Sole Panelist Date: 20 January 2025