Carrefour SA v Maciej Dębiec, carrefour

WIPO Case No. D2024-3941

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Maciej Dębiec, carrefour

Case No. D2024-3941

1. The Parties

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

The Respondent is Maciej Dębiec, carrefour, Poland.

2. The Domain Name and Registrar

The disputed domain name <carrefourpl.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26,

2024. On September 26, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On September 26, 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 September 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 October 1, 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 October 8, 2024. In accordance with the Rules, paragraph

5, the due date for Response was October 28, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 6, 2024.

The Center appointed Anna Carabelli 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

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4. Factual Background

Founded in 1959, the Complainant has been engaged in retail activities under the mark CARREFOUR for

more than 60 years. Currently it operates over 12,000 stores in more than 30 countries with an annual

turnover around 80 billion Euros and is listed on the Paris Stock Exchange (CAC 40).

The Complainant owns several trademark registrations for CARREFOUR in many jurisdictions, including the following:

-	International trademark registration no. 351147, registered on October 2, 1968 in classes 1-34;
-	International trademark registration no. 353849, registered on February 28, 1969, in classes 35-42;
and
-	European Union trademark registration No. 5178371, registered on August 30, 2007 in classes 9, 35,
38.

The Complainant also owns domain name registrations consisting of the CARREFOUR trademark, for example: <carrefour.com>, registered since 1995; <carrefour.eu>, registered since 2006; <carrefour.net>, registered since 2001; and <carrefour.pl>, registered since 2000. The Complainant has online presence via social media platforms.

The disputed domain name was registered on August 19, 2024 and resolves to an error 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 disputed domain name.

Notably, the Complainant contends that:

-	The Complainant’s CARREFOUR trademark is distinctive and globally recognized, including in Poland
where the Respondent appears to be located;
-	The disputed domain name is confusingly similar to a trademark in which the Complainant has rights,
since it consists of the Complainant’s CARREFOUR mark with the addition of “pl” which is commonly
understood as an abbreviation for Poland. Given the Complainant’s strong presence in that country,
the inclusion of “pl” strengthens the association with the Complainant’s trademark, rather than distinguishing it;
-	The Respondents have no rights or legitimate interests in the disputed domain names since: (i) the Complainant has not authorized or somehow given consent to the Respondents to register and use
the disputed domain name, (ii) the Respondent is not commonly known by the disputed domain name,
and (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use. In fact, passive holding under the circumstance of the case supports the conclusion that the Respondent is intentionally withholding the disputed domain
name in bad faith with no legitimate interest;
-	The disputed domain name was registered and is being used in bad faith. The structure of the
disputed domain name suggests that the Respondent registered it having in mind the Complainants’
CARREFOUR mark. Passive holding, which is the case here, demonstrates bad faith; and
-	The fact that the Respondent registered the disputed domain name with a privacy shield service and
presenting itself as “carrefour” during the registration process, are further evidence of the Respondent’s bad faith.

Based on the above the Complainant requests the disputed domain name be transferred to the Complainant.

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B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and

documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it

deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which

   the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

1. the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph

4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the

respondent, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name

for the purpose of paragraph 4(a)(ii) of the Policy above.

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 entirety of the Complainant’s registered trademark CARREFOUR is reproduced and

recognizable 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. The addition of the

generic Top-Level Domain, such as “.com”, is viewed as a standard registration requirement and as such is
typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Although the addition of another element, here “pl” (which is commonly understood as an abbreviation for Poland), may bear on assessment of the second and third elements, the Panel finds the addition of such

element 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.

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

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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. There is no indication before the Panel of any activity in relation to the disputed domain

name that would give rise to rights or legitimate interests to the Respondent. Moreover, the Panel notes that

the Respondent has provided registration details of “Maciej Dębiec, carrefour”; however, there is no

evidence before the Panel that the Respondent is commonly known by the disputed domain name for the

purposes of the Policy, and it appears more likely than not that the choice of registration details was intended

to falsely suggest an affiliation with the Complainant.

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 Complainant’s CARREFOUR trademark has been continuously
and extensively used globally for many years and have, as a result, acquired considerable reputation and

Carrefour v. Simon LundgrenCarrefour v. Tool Domains Ltd, WIPO Case No. DGE2018-0002. In view of the well-known character of

goodwill worldwide, as recognized by prior UDRP decisions. See , WIPO Case and

the CARREFOUR trademark, it is difficult to believe that the Respondent did not have in mind the

Complainant’s trademark when registering the disputed domain name, incorporating the Complainant’s well-

known trademark with a common geographic abbreviation for one of the Complainant’s markets. Prior

panels have consistently found that the mere registration of a domain name that is identical or confusingly

similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of

bad faith. WIPO Overview 3.0, section 3.1.4.

As to bad faith use, the evidence submitted with the Complaint shows that the disputed domain name does

not point to an active website and merely resolves to an error page stating, “This site can’t be reached”.

Panels have found that the non-use of a domain name (including a blank page) would not prevent a finding

of bad faith under the doctrine of passive holding. Panels 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; (iii) the respondent’s

concealing its identity or use of false contact details (noted to be in breach of its registration agreement);

and, (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0,

section 3.3.

Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark as an

international established mark, the composition of the disputed domain name as discussed above, the failure

of the Respondent to submit a response, 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.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <carrefourpl.com> be transferred to the Complainant.

/Anna Carabelli/
Anna Carabelli
Sole Panelist
Date: November 22, 2024