Carrefour SA v Midhun Mohan

WIPO Case No. D2022-4972

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Midhun Mohan

Case No. D2022-4972

1. The Parties

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

The Respondent is Midhun Mohan, India.

2. The Domain Name and Registrar

The disputed domain name <carrefour-qatar.com> 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 December 23, 2022. On December 23, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2022, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2022 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 December 28, 2022.

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 6, 2023. In accordance with the Rules, paragraph
5, the due date for Response was January 26, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 31, 2023.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 7, 2023. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is Carrefour, a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968, operating more than 12,000 stores with more than 384,000 employees worldwide and 1,3 million daily unique visitors in its stores. The Complainant additionally offers travel, banking, insurance and

ticketing services.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademarks

CARREFOUR, including the following:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968.

- International trademark CARREFOUR No. 353849, registered on February 28, 1969.

- European Union trademark CARREFOUR No. 5178371, registered on August 30, 2007.

The Complainant also owns numerous domain names consisting of CARREFOUR, including the domain
names <carrefour.com>, registered on October 25, 1995, and <carrefourqatar.com>, registered on July 31,
2000.

The disputed domain name was registered on December 8, 2022 and currently resolves to a pay-per-click page of commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name entirely reproduces the Complainant’s trademark since the trademark CARREFOUR is immediately recognizable within the disputed domain name.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name and there is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. The Complainant also informs that it has not authorized the use of its earlier trademarks or terms similar thereto in the disputed domain name in any manner or form.

The Complainant adds that the disputed domain name resolves to a pay-per-click page of commercial links and that such use trades off the goodwill of the Complainant and takes an unfair advantage of the Complainant’s well-known CARREFOUR trademarks, which cannot constitute any bona fide offering of goods or services.

The Complainant mentions that it is impossible that the Respondent did not have the trademark
CARREFOUR in mind while registering the disputed domain name.

The Complainant argues that reproducing famous trademarks in a domain name to attract Internet users to a parked page or an inactive website cannot be considered as fair use or use in good faith. In addition, the disputed domain name is also identical (with the hyphen, which can be disregarded) to the Complainant’s domain name <carrefourqatar.com>.

Further, the Complainant mentions that the Respondent used a privacy protection service in an attempt to conceal its identity, which is another evidence of bad faith.

page 3

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i)        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

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for CARREFOUR around the world, in addition to many domain names consisting of CARREFOUR, and all of them predate the registration date of the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark CARREFOUR in its entirety. Indeed, the addition of a hyphen and the geographical term “qatar” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks.

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Also, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (WIPO Overview 3.0, section 1.8).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s famous trademark or to register domain names containing the trademark CARREFOUR.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the disputed domain name resolves to a pay-per-click page of commercial links.

page 4

Moreover, the construction of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark CARREFOUR is registered by the Complainant in several jurisdictions and is considered as well-known mark by the consumers around the world. Also, the Complainant registered many distinct domain names consisting of the term CARREFOUR, including <carrefour.com> and <carrefourqatar.com>, the latter identical (except the hyphen) to the disputed domain name. The mentioned trademark protections owned by the Complainant predate the registration of the disputed domain name.

The disputed domain name comprises the Complainant’s mark CARREFOUR in which the Respondent has no rights or legitimate interests, in addition to the term “-qatar” which may lead Internet users to misrecognize the disputed domain name as affiliated with the Complainant’s activities in Qatar.

The Complainant’s CARREFOUR mark is widely known and has a strong online visibility. Thus, the fact that the disputed domain name comprises such a mark associated with the geographical term “Qatar” is itself evidence of the Respondent’s bad faith, as it is impossible that the Respondent did not know the Complainant’s mark when it registered the disputed domain name.

Taking also into account that the disputed domain name resolves to a pay-per-link page, this Panel finds under the circumstances that the Respondent has intentionally targeted the Complainant’s trademark in the disputed domain name.

Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, “[...] the failure of the Respondent to respond to the Complaint further supports an

inference of bad faith”.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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-qatar.com> be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: February 20, 2023