Carrefour SA v Juliana Lorena da Mata, Davi Paixao

WIPO Case No. D2024-5245

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Juliana Lorena da Mata, Davi Paixao

Case No. D2024-5245

1. The Parties

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

The Respondents are Juliana Lorena da Mata and Davi Paixao, Brazil.

2. The Domain Names and Registrar

The disputed domain names <carrefouroferta.site> and <carrefourofertas.site> 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 December 20, 2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 21, 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 December 24, 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 December 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 Respondents of the Complaint, and the proceedings commenced on January 9, 2025. The Response was filed by Davi Paixao with the Center on January 15, 2025, and the Respondent sent email communications to the Center on the same day. The proceedings were suspended on January 15, 2025, and reinstituted on February 12, 2025.

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In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2025. The Center informed the parties about the commencement of panel appointment process on February 28, 2025.

The Center appointed John Swinson as the sole panelist in this matter on March 5, 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 an international retailer and is listed on the Paris Stock Exchange. The Complainant operates more than 12,000 stores in more than 30 countries worldwide.

In Brazil, for example, the Complainant has been present since 1975 and currently operates 140 hypermarkets, 50 supermarkets and 140 express convenience stores. The Complainant has a dedicated website for Brazilian customers at <carrefour.com.br>.

The Complainant has a portfolio of trademark registrations, including a Brazilian trademark registration for

CARREFOUR (No. 6314210, registered on May 10, 1976).

The disputed domain names were both registered on December 6, 2024.

The Respondents did not file a formal response, so little information is known about them. According to the

Registrar’s records, both Respondents have an address in Brazil.

The disputed domain names do not resolve to active websites.

In an email to the Center, Respondent Davi Paixao stated “I do not wish to dispute the domain”.

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.

Notably, the Complainant contends that the Complainant is well-known, including in Brazil. The Complainant inherently likely to mislead Internet users and their specific composition carries a high risk of implied affiliation with the Complainant which cannot constitute fair use as they effectively impersonate or suggest sponsorship or endorsement by the Complainant.

submits that the Complainant and its trademarks were so widely well-known, that it is inconceivable that the

The Complainant contends that by simply maintaining the disputed domain names, the Respondents are preventing the Complainant from reflecting its name and trademark in the corresponding domain names.

In addition, the disputed domain names are not associated with any active website, but the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.

B. Respondent

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

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As stated above, in an email to the Center, Respondent Davi Paixao stated only the following: “I do not wish to dispute the domain”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the

Policy have been satisfied, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the 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.

The onus of proving these elements is on the Complainant.

Each disputed domain name must be considered separately.

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 both disputed domain names were registered on the same day with the same Registrar, both Respondents have addresses in Brazil, and the disputed domain names are the same other than one disputed domain name also includes the letter “s”.

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.

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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 CARREFOUR mark is recognizable within the disputed domain names. Accordingly, the
disputed domain names are 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, “oferta” and “ofertas”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel notes that the terms “oferta” and “ofertas” are Portuguese for “offer” and “offers”.

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.

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

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

In the present case, the Respondent has not used the disputed domain names. 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. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003. The Panel finds that this is such a case.

Having reviewed the available record, the Panel concludes that the Complainant is well-known and has a reputation in Brazil. It is likely that the Respondent was aware of the Complainant and registered the disputed domain names to take advantage of the Complainant’s reputation. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. In

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fact, the Respondent has stated that he does not wish to contest at least one of the disputed domain names. It is not possible for the Panel to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.

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.

The Panel also relies upon and adopts the reasoning in a prior similar decision: Carrefour SA v. Carrefour

Ofertas, Minha loja, WIPO Case No. D2023-4273.

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 <carrefouroferta.site> and <carrefourofertas.site> be transferred to the Complainant.

/John Swinson/
John Swinson
Sole Panelist
Date: March 13, 2025