Carrefour SA v Sistemas RUA, Daramix S.A

WIPO Case No. D2024-0980

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Sistemas RUA, Daramix S.A.

Case No. D2024-0980

1. The Parties

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

The Respondent is Sistemas RUA, Daramix S.A., Uruguay.

2. The Domain Name and Registrar

The disputed domain name <carrefour-assistance.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 March 6, 2024.

On March 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On March 7, 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) and contact information in the

Complaint. The Center sent an email communication to the Complainant on March 8, 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 March 8, 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 March 15, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was April 4, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 5, 2024.

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The Center appointed Andrea Cappai as the sole panelist in this matter on April 19, 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, a public limited company operating in the retail sector, is headquartered in France and

reports a turnover of approximately 80 billion euros. It operates over 12,000 stores across more than 30

countries globally and attracts 1.3 million daily unique visitors to its web stores.

The Complainant holds numerous trademarks for the sign “CARREFOUR”, including:

- International Trademark Registration No. 191353, registered on March 9, 1956.

- International Trademark Registration No. 353849, registered on February 28, 1969.

- European Union (“EU”) Trademark Registration No. 5178371, registered on August 30, 2007.

Additionally, the Complainant owns several domain names that incorporate the CARREFOUR trademark

across both generic and country code Top-Level Domains, predating the disputed domain name. Notably,

the domain name <carrefour.com> was created on October 25, 1995.

The Complainant also has a significant online presence, particularly on French social networks.

The disputed domain name <carrefour-assistance.com> was registered on December 19, 2023, and is

currently not in use.

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 disputed domain name closely resembles its globally recognised

CARREFOUR trademarks. It further claims that the use of these trademarks in the disputed domain name

without authorization, coupled with no evidence of the Respondent being commonly recognized by this

name, indicates that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant maintains that the distinctiveness and fame of its trademarks suggest the Respondent was

aware of the Complainant's brand upon registration. Given the trademarks' well-established reputation, the

Complainant argues that any use of the disputed domain name by the Respondent would likely not be seen

as legitimate. Consequently, the Complainant alleges that the Respondent has registered and is using the

disputed domain name in bad faith.

B. Respondent

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

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6. Discussion and Findings

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 Panel finds the mark is 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 such as “assistance” may bear on assessment of the second and third

elements, the Panel finds the addition of such term 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

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.

The Complainant contends that the Respondent lacks authorisation to utilise the CARREFOUR trademark

and is not affiliated with nor licensed by the Complainant. The composition of the disputed domain name not

only suggests a deceptive affiliation but also hints to the Respondent's intention to unfairly capitalise on this

similarity, thereby precluding any legitimate rights or interests in the disputed domain name.

Additionally, it appears that the Respondent is not associated with the disputed domain name, reportedly

holds no rights to the sign CARREFOUR, and demonstrates no bona fide use of it, either commercially or

non-commercially. Based on these assertions, the Panel finds it reasonable to conclude that the

Respondent lacks any legitimate interest or rights in the use of the disputed domain name.

The Panel finds the second element of the Policy has been established.

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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.

Given the renown of the Complainant's trademark, underscored by its substantial business operations and

significant online presence, the registration of a domain name that melds this renowned trademark with a

generic term “–” potentially alluding to customer support “–” can foster a misleading association. The Panel

finds no credible rationale for the selection of this domain aside from an intent to target the Complainant.

Moreover, the Respondent cannot plausibly claim ignorance of the Complainant’s trademark, considering its

broad recognition and distinctive character. Additionally, prior UDRP panels have consistently determined

that the registration of a domain name identical or confusingly similar to a well-known trademark by an

unrelated party is generally indicative of bad faith, as outlined in WIPO Overview 3.0, section 3.1.4.

No justification for the selection of the disputed domain name has been provided by the Respondent.

Regarding the use, the absence of active utilization of the disputed domain name does not preclude a finding

of bad faith. In assessing whether the Respondent's actions constitute bad faith, the Panel examines a

range of indicative factors. These include the widespread recognition of the Complainant’s trademark, the

Respondent’s failure to respond, intentional concealment of identity, and the absence of any credible good

faith application of the disputed domain name. Taken together, these elements convincingly support the

conclusion that the disputed domain name was registered and is being used in bad faith, in accordance with

paragraph 4(b)(iv) 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 <carrefour-assistance.com> be transferred to the Complainant.

/Andrea Cappai/

Andrea Cappai

Sole Panelist

Date: May 3, 2024