Carrefour SA v Maraiza Souza

WIPO Case No. D2024-3090

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Maraiza Souza

Case No. D2024-3090

1. The Parties

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

The Respondent is Maraiza Souza, Brazil.

2. The Domain Name and Registrar

The disputed domain name <cancelamento-segurocarrefour.online> is registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2024.

On July 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On July 29, 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 (Domains By Proxy, LLC, DomainsByProxy.com) and contact

information in the Complaint. The Center sent an email communication to the Complainant on July 30,

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

August 2, 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 August 8, 2024. In accordance with the Rules,

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

response. Accordingly, the Center notified the Respondent’s default on September 3, 2024.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 10, 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 7.

4. Factual Background

The Complainant in this proceeding is Carrefour SA, a French public limited company. The Complainant,

founded in 1959, operates more than 12,000 stores in more than 30 countries, employing over 384,000

employees worldwide. The Complainant has 1.3 million daily unique visitors to its webstores and a turnover

of around EUR 80 billion every year. The Complainant is a worldwide leader in the retail sector.

The Complainant owns numerous trademark registrations corresponding and/or including the “Carrefour”

sign.

The Complainant is, inter alia, the owner of:

- International trademark registration number 191353 for the CARREFOUR (device) trademark registered on

March 9, 1956;

- International trademark registration number 351147 for the CARREFOUR (device) trademark registered on

October 2, 1968;

- European Union Trademark registration number 005178371, for the CARREFOUR (word) trademark

registered on August 30, 2007;

- Brazilian trademark registration number 840719132, for the CARREFOUR express (device) trademark

registered on July 26, 2016.

In addition, the Complainant is the holder of numerous domain names consisting of or including its

CARREFOUR trademark, registered under various generic Top-Level Domains as well as under a number of

country code Top-Level Domains, including <carrefour.eu> (registered on March 10, 2006), <carrefour.fr>

(registered on June 23, 2005), <carrefour.com.br> (registered on January 18, 1997), <carrefour.es>

(registered on November 14, 2000), <carrefour.net> (registered on June 18, 2001), and <carrefour.com>

(registered on October 25, 1995).

The Complainant has also established a strong social media presence online by being active on various

social-media platforms.

The disputed domain name was registered on June 29, 2024.

Currently, the disputed domain name resolves to a GoDaddy page displaying the message that the disputed

domain name is “is parked free, courtesy of GoDaddy.com.” From the submissions provided by the

Complainant, it appears that previously (at least on July 27, 2024) the disputed domain name resolved to a

parked free page of GoDaddy containing links related to the Complainant’s activity.

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.

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Notably, the Complainant contends that the disputed domain name is confusingly similar to the

CARREFOUR trademark. In this sense, the Complainant claims that the addition of the terms

“cancelamento” (“cancellation” in Portuguese) and “seguro” (“insurance” in Portuguese) does not prevent a

finding of confusing similarity with the Complainant’s CARREFOUR trademark, which remains clearly

recognizable in the disputed domain name; that the Respondent has no rights or legitimate interests in

respect of the disputed domain name; and, particularly, that the Respondent registered and used the

disputed domain name for an unauthorized page containing pay-per-click links, and that such use does not

constitute a bona fide offering of goods or services nor does it provide the Respondent with rights or

legitimate interests in the disputed domain name. Furthermore, the Complainant notes that the reputation of

its CARREFOUR trademark has already been recognized in many previous UDRP decisions, and thus the

registration of the disputed name (which contains a well-known trademark) amounts per se to a registration

in bad faith. In addition, the Complainant states that the Respondent’s bad faith is also evident in the

Respondent’s endeavours to conceal its identity. Finally, the Complainant contends that the combination of

the terms “cancelamento” and “seguro” with the CARREFOUR trademark in the disputed domain name is

likely to mislead consumers into believing that the website at the disputed domain name is associated with

the Complainant or provides services related to the Complainant’s business, and that this deliberate attempt

to create confusion demonstrates bad faith use.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following

elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to a trademark 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.

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 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.

Although the addition of other terms here “cancelamento” and “seguro”, 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 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.

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.

In addition, panels have found that the use of a domain name to host a parked page comprising PPC links

does not represent a bona fide offering where such links compete with or capitalize on the reputation and

goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section

2.9. Considering the PPC links on the website at the disputed domain name relate to the insurance sector

in which the Complainant is active, Panel notes that such use does not represent a bona fide offering.

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.

In the present case, the Panel notes that the Respondent was aware of the Complainant’s trademark

registrations and rights to the CARREFOUR trademark when it registered the disputed domain name.

The disputed domain name contains in its entirety, without any authorization or approval, the Complainant’s

registered CARREFOUR trademark.

Owing to the substantial presence established worldwide and on the Internet by the Complainant, it is at the

least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademark when

registering the disputed domain name.

In fact, the CARREFOUR trademark was registered more than six decades before the Respondent

registered the disputed domain name. The CARREFOUR trademark has since been intensively used and is

therefore well known, as confirmed by many previous panels (e.g. Carrefour SA. v. Withheld for Privacy

Purposes, Privacy service provided by Withheld for Privacy ehf / Ben Luis, WIPO Case No. D2021-2633,

which includes many references to earlier panel decisions which found the CARREFOUR trademark to be

well known).

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Noting also the composition of the disputed domain name, it is more likely than not that the Respondent,

when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the

CARREFOUR trademark.

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

similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a

famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

WIPO Overview 3.0, section 3.1.4. The Panel is therefore satisfied that the Respondent registered the

disputed domain name in bad faith.

As evidenced in the Complaint, the disputed domain name was previously used for a website hosting PPC

links through which the Respondent presumably earned click-through revenue. As such, the Respondent

has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a

likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or

endorsement of the Respondent’s website.

In addition, Panels have found that the current 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 of the Complainant’s trademark, and the composition of

the disputed domain name, and finds that in the circumstances of this case the current passive holding of the

disputed domain name does not prevent a finding of bad faith under the Policy.

Finally, the bad faith registration and use of the disputed domain name is also affirmed by the fact that the

Respondent did not respond to nor has it denied the assertions of bad faith made by the Complainant in this

proceeding. This is further evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy.

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 <cancelamento-segurocarrefour.online> be transferred to the

Complainant.

/Fabrizio Bedarida/

Fabrizio Bedarida

Sole Panelist

Date: September 24, 2024