Carrefour SA v rogerio cecilio, loja online

WIPO Case No. D2024-4872

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. rogerio cecilio, loja online

Case No. D2024-4872

1. The Parties

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

The Respondent is rogerio cecilio, loja online, Brazil.

2. The Domain Name and Registrar

The disputed domain names <carreforbr.shop> and <carreforfr.shop> are registered with NameCheap, Inc.

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2024. On November 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 November 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 November 27, 2024.

The Center verified that the Complaint together with 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 December 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2025.

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The Center appointed Torsten Bettinger as the sole panelist in this matter on January 9, 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 Carrefour SA, a French company in retail and a pioneer of the concept of hypermarkets back in 1968.

The Complainant operates more than 12,000 stores in more than 30 countries worldwide, has more than
384,000 employees worldwide and 1.3 million daily unique visitors in its stores. The Complainant
additionally offers travel, banking, insurance, or ticketing services.

The Complainant owns several registered trademarks across multiple jurisdictions, including the following ones:

- European Union trademark CARREFOUR No. 008779498, registered on July 13, 20, and designating goods in international class 35;

- International trademark CARREFOUR No. 563304, registered on November 6, 1990, and designating
goods in international classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14,15, 16, 17, 18, 19, 20, 21, 22, 23, 24,
25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42;

- French trademark CARREFOUR No. 1565338, registered on May 25 1990, and designating goods in
international class 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27,
28, 29, 30, 31, 32, 33, 34;

- United States trademark CARREFOUR No. 6763415, registered on June 21, 2022, and designating goods in international class 35.

The Complainant also owns numerous domain names identical to, or comprising, its trademarks, both within generic and country code Top-Level Domains, i.e., <carrefour.com> registered since October 25, 1995 and <carrefour.fr> registered since June 23, 2005.

The disputed domain names <carreforbr.shop> <carreforfr.shop> were both registered on November 6,

2024, and not resolve to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its earlier trademarks enjoy a wide-spread continuous reputation, and refers to a number of previous UDRP decisions.

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant argues that:

- the disputed domain names reproduce and include the earlier trademark CARREFOUR except for the

letter “U”;

- the omission of one letter does not significantly affect the appearance or pronunciation of the disputed

domain names, thus the disputed domain names that consist in such misspelling should be regarded as
confusingly similar to the Complainant’s trademark;

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- the generic terms “FR” and “BR” are ISO codes for France and Brazil, and are not sufficient to avoid misleading Internet users and to avoid creating a likelihood and confusion with the Complainant’s trademark;

- the first level domain “.shop” should not be taken into consideration when evaluating the risk of

confusing similarity.

With regards to the Respondent having no rights or legitimate interests in the disputed domain names, the

Complainant submits that:

- it has found no evidence whatsoever that the Respondent is known by the disputed domain names;

- there is no evidence that the Respondent has been commonly known by the disputed domain names as an individual, business, or other organization;

- it has not authorized the use of its earlier trademarks or terms similar thereto in the disputed domain names in any manner or form;

- the Respondent has not, before the original filing of the Complaint, used or made preparations to use

the disputed domain names in relation to a bona fide offering of goods or services as no active website is
associated with the disputed domain name;

Finally, with regards to the disputed domain names having been registered and being used in bad faith, the
Complainant argues that:

- the Complainant’s trademarks are intensively used in numerous countries worldwide, such as France, Spain, Italia and Brazil for instance;

- the Complainant enjoys a solid notoriety in these countries, and it is therefore very likely that the

Respondent knew the trademark CARREFOUR at the time of registration of the disputed domain names;

- a simple online search for CARREFOUR shows results only related to the Complainant;

- the Respondent registered the disputed domain names on November 6, 2024 several years after the registration of the trademark CARREFOUR, which is well-known worldwide;

- the fact that the disputed domain names include the ISO code “FR” for France and “BR” for Brazil, two
countries where the Complainant is deeply implemented and where the trademark CARREFOUR is
intensively used, support the conclusion that the registrations were made by the Respondent with the
Complainant’s trademark in mind;

- it is likely that the Respondent registered the disputed domain names in order to resell them to the

Complainant later, or to prevent the Complainant from using it, which would be another evidence of bad faith registration;

- regarding the notoriety of the trademark CARREFOUR, and the number of trademark rights owned by
the Complainant, it is hard to imagine that the Respondent could use these disputed domain names in good

faith in the future;

- since the Respondent has no legitimate reasons to use the trademark CARREFOUR in the context of

a commercial activity, the fact that the Respondent’s website has been, and is still inactive, strengthens the assumption that the Respondent registered and is using the disputed domain names in order to disturb the Complainant’s activities or to resell them.

B. Respondent

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

6. Discussion and Findings

(i) the disputed domain names are 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 names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

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A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark CARREFOUR prior to the registration of the disputed domain names on November 6, 2024.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

As set forth in section 1.7 of the WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark.” (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”)).

In this case, the disputed domain names are identical to the Complainant’s CARREFOUR trademark except for the omission of the vowel “u” and the addition of the ISO country code “fr” or “br” for France and Brazil.

Although the omission of a letter and the addition of other letter here, “fr” or “br” may bear on assessment of the second and third elements, the Panel finds the “omission” of the letter “u” which appears to be a common, obvious, or intentional misspelling of the Complainant’s trademark and the addition of the country codes “fr” and “br” do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s CARREFOUR trademark for the purposes of the Policy.

Finally, it is well accepted in past UDRP decisions that a Top-Level Domain (“TLD”) such as “.shop” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable TLD may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview 3.0).

The Panel therefore concludes that the disputed domain names are confusingly similar to the Complainant’s

CARREFOUR trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection with a bona fide offering

of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by
the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant stated that it had not been able to establish that the Respondent had any registered trademarks and that there is no evidence that the Respondent has been commonly known by the disputed domain names or as an individual, company or other organization corresponding to the name “carrefour” and that it had never granted the respondent a license or other authorization to use the name “carrefour”.

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These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

From the record in this case, the disputed domain names do not resolve to an active website, and there is no other evidence to support the assumption that the Respondent has used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel therefore concludes that the Respondent lacks rights and legitimate interests in the disputed domain names and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i)        circumstances indicating that the Respondent has registered or has acquired the disputed domain

name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name disputed domain name; or
registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the

(ii)       the Respondent has registered the disputed domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain name, provided that the
Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)      by using the disputed domain name, the Respondent has intentionally attempted to attract, for

commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant holds multiple trademark registrations for the CARREFOUR mark in various jurisdictions that predate the registration of the disputed domain names.

Given that the Complainant’s CARREFOUR marks are well-known in many countries worldwide, it is likely
that the Respondent did not coincidentally register the disputed domain names but had knowledge of the

Complainant’s rights in the CARREFOUR marks when registering the disputed domain names.

As it has been established “the mere registration of a domain name that is identical or confusingly similar 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 and Carrefour SA v. Domain Administrator, See PrivacyGuardian.org /
Zhiqiang Chen, WIPO Case No. D2022-1851.

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The fact that there is no evidence that the disputed domain names have not yet been actively used does not prevent a finding of bad faith use.

Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the
Respondent, it is by now well accepted that the passive holding of a domain name, in certain circumstances,
can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of
America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited v.
Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.

While 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; and

(iii)      the implausibility of any good faith use to which the domain name may be put.

Based on the record in this proceeding, the Panel is satisfied that the Complainant’s CARREFOUR mark is well-known in many countries.

Given that the disputed domain names consist of a classical misspelling or typo of the Complainant’s mark with the addition of the country code “br” or “fr”, the Panel finds the disputed domain names were registered in bad faith.

Furthermore, the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain names.

The Panel therefore finds that the circumstances, as described above, show that the Respondent’s registration and passive holding of the disputed domain names equals a bad faith registration and use of the disputed domain names and therefore the Complainant also 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 <carreforbr.shop> and <carreforfr.shop> be transferred to the

Complainant.

/Torsten Bettinger/
Torsten Bettinger
Sole Panelist
Date: January 23, 2025