Carrefour SA v robol vihn

WIPO Case No. D2024-1351

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. robol vihn

Case No. D2024-1351

1. The Parties

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

The Respondent is robol vihn, Spain.

2. The Domain Name and Registrar

The disputed domain name <bkcarrefour.com> (the “Domain Name”) is registered with Realtime Register

B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2024.
On April 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. On April 3, 2024, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name that differed from
the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an
email communication to the Complainant on April 4, 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 April 5, 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 April 8, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was April 28, 2024. The Respondent did not submit a response. Accordingly, the

Center notified the Respondent’s default on April 29, 2024.

The Center appointed A. Justin Ourso III as the panelist in this matter on May 6, 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.

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4. Factual Background

The Complainant, a French corporation, is a publicly traded global retailer of a wide variety of goods and financial services, which has operated since at least 1968 under the name and mark CARREFOUR and the mark BANQUE CARREFOUR, among others.

The Complainant owns an international registration, No. 351147, for its CARREFOUR trademark, issued on October 2, 1968, for goods in Classes 1-34; an international registration, No. 353849, for its CARREFOUR trademark, issued on February 28, 1969, for services in Classes 35 to 42, including Class 36 “insurance

underwriting and financial services”; and a French registration, No. 3585968, issued on December 5, 2008,
for its BANQUE CARREFOUR trademark for services in Class 36, including insurance; financial affairs;

monetary affairs; providing funds; direct banking; financing services, and related services.

The Complainant owns multiple domain names, including <carrefour.com>, which it registered in 1995, and
<carrefour-banque.fr>, which it registered in 2009.

The Registrant of the Domain Name as disclosed by the Registrar (the Respondent) does not own any trademark registrations. The address disclosed by the Registrar for the Respondent is incorrect. The Respondent registered the Domain Name, using a privacy service, on March 4, 2024, without any

authorization from the Complainant. At the filing of the Complaint and during the preparation of this Decision, the Domain Name resolved to a web site that offered competing financial products and services and that the Respondent branded with the Complainant’s CARREFOUR and BANQUE CARREFOUR trademarks.

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 Domain Name.

Notably, the Complainant contends that the Respondent does not own any trademark registrations for CARREFOUR or BKCARREFOUR; the Complainant’s use of its trademarks long before the Respondent’s registrations of the Domain Name shifts the burden to the Respondent to establish rights or legitimate interests in the Domain Name; the Domain Name resolves to a web site that impersonates the Complainant, including by using a similar color scheme with teal and blue colors, and intentionally misleads Internet users into believing that the Domain Name and the corresponding web site are affiliated with the Complainant; the site’s meta tags use the Complainant’s trademarks; and the site copies text from the Complainant’s web site, which establish that the Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not submit a response to the amended Complaint.

6. Discussion and Findings

A complainant must prove three elements to obtain relief: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent registered and is using the domain name in bad faith.

Policy, paragraph 4(a).

A. Identical or Confusingly Similar

On the first element, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered CARREFOUR trademark. The Complainant’s registration establishes its trademark rights. WIPO

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Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. The trademark is readily recognizable within the Domain Name and the additional letters “bk” do not avoid this confusing similarity finding. WIPO Overview 3.0, sections 1.7 and 1.8. Accordingly, the Panel concludes that the Complainant has proven the first element: the Domain Name is confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

The Respondent has not claimed the existence of any circumstance under the Policy, paragraph 4(c), that demonstrates that a respondent has rights to, or legitimate interests in, a domain name. The Complainant, on the other hand, has shown that it established its trademark rights long before the Respondent registered the Domain Name; it has not authorized the Respondent to use its trademark; and the record contains no evidence that the Respondent is commonly known by the Domain Name. These constitute prima facie a

showing that the Respondent lacks any rights or legitimate interests in the Domain Name under the Policy, showing.
paragraph 4(a)(ii), shifting the burden of production on this second element to the Respondent to come
forward with relevant evidence proving rights or legitimate interests in the Domain Name.

Additionally, the Panel finds that the Respondent masked its identity by using a privacy service; the Respondent provided a false address to the Registrar; the Registrar identified the Respondent with a name that does not resemble the Domain Name; the Respondent failed to respond to the Complaint; the Domain Name resolves to a web site that competes with the Complainant’s web site, including using its trademarks, which is not a bona fide commercial use, a noncommercial use, or a fair use of the Domain Name; and no other evidence exists of a bona fide commercial, noncommercial, or fair use of the Domain Name. Accordingly, the Panel concludes that the Complainant has proven the second element: the Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [. . .] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site . . ., by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site.” Policy, paragraph 4(b)(iv).

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a well-known trademark, can create a presumption of bad faith registration, which here is unrebutted by the Respondent. WIPO Overview 3.0, section 3.1.4. In this case, the Respondent also used the Complainant’s well-known trademarks on the Respondent’s web site to which the Domain Name resolves.

The Complainant has proven that the Domain Name resolves to a web site, designed to give the impression that it is the Complainant’s, on which the Respondent offers for sale competing financial products and services for commercial gain, under the Complainant’s well-known trademarks, and expressly promoting an affiliation with the Complainant, in effect, passing off the site as associated with the Complainant, without disclosing or disclaiming any relationship with the Complainant. The Panel finds this conclusive evidence that the Respondent’s registration and use of the Domain Name and the site are intended to attract, misleadingly and deceptively, customers and potential customers of the Complainant for the Respondent’s commercial gain and the Respondent must have been aware of the Complainant’s trademarks and of its rights in its marks at the time that the Respondent registered the Domain Name. Rules, paragraph 14(b); WIPO Overview 3.0, sections 3.1.4, 3.2.1, and 3.2.2.

These findings compel the Panel to conclude that the Respondent intentionally registered the Domain Name
in bad faith to take unfair advantage of the Complainant’s trademarks and that the Respondent is using the
Domain Name in bad faith intentionally to attract Internet users to its site for commercial gain by creating a

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likelihood of confusion with the Complainant’s trademarks as to the source of the site or the source of the
services offered on the site, in violation of the Policy, paragraph 4(b)(iv). Accordingly, the Panel concludes
that the Complainant has proven the third element: the Respondent registered and is using the Domain

Name 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 Domain Name <bkcarrefour.com> be transferred to the Complainant.

/A. Justin Ourso III/
A. Justin Ourso III
Panelist
Date: May 20, 2024