Carrefour SA v Strilchuck Strilchuck

WIPO Case No. D2024-4518

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Strilchuck Strilchuck

Case No. D2024-4518

1. The Parties

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

The Respondent is Strilchuck Strilchuck, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <carrefournaow.shop> and <carrefournaow.store> are registered with

Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2024. On November 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 5, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 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 the same day.

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 November 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2024.

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The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on December 12, 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, Carrefour SA, is a public limited company registered in France. The Complainant is a
global retail company operating more than twelve thousand stores in over thirty countries and has more than

384,000 employees worldwide. The Complainant has 1,3 million daily visitors to its websites.

As the record shows, the Complainant is the owner of several registered trademarks consisting of the word
CARREFOUR worldwide, including:

- International Trademark Registration CARREFOUR No. 191353, registered on March 9, 1956, under the priority of Swiss trademark No. 159210 registered on December 8, 1955, duly renewed and designating Benelux, Spain, and Italy for goods in class 3;

- International Trademark Registration CARREFOUR No. 351147, registered on October 2, 1968, under

the priority of French trademark No. 238949 registered on January 7, 1965, duly renewed and designating
Benelux, Spain, Italy, and Monaco for goods in classes 1 to 34; and

- European Union Trademark Registration CARREFOUR No. 005178371, registered on August 30,

2007, duly renewed and for goods and services in classes 9, 35, and 38.

In addition, several prior UDRP decisions recognized that the CARREFOUR trademark is well known carrefourlove2, WIPO Case No. DPW2020-0005).

(including, Carrefour v. Tucows Domains Inc. / Torsten Littmann, WIPO Case No. D2019-2328; Carrefour v.
Registration Private, Domains by Proxy LLC / Nisar Ahmad Zafar, WIPO Case No. D2016-2506; Carrefour
The Complainant owns several domain names incorporating its CARREFOUR trademark such as the
domain name <carrefour.com> registered on October 25, 1995. The record also shows that the Complainant
has a very strong presence on social media.

The disputed domain names were registered on September 11, 2024. At the time of filing the Complaint, the disputed domain names did not resolve to active websites. At the time of this decision, the disputed domain names are not active, and they both resolve to error pages.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s distinctive and globally recognized CARREFOUR trademark. The Complainant argues that the disputed domain names incorporate the CARREFOUR trademark in its entirety, and the addition of the term “naow” does not avoid confusing similarity. The Complainant notes that the generic Top-Level Domains “.shop” and “.store” imply retail activities that directly correspond with the Complainant’s business, and therefore, it aggravates consumer confusion.

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The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In this regard, the Complainant, inter alia, asserts that it has not authorized or licensed the Respondent to use its well-known trademark; there is no evidence that the Respondent is commonly known by the disputed domain names; and there is no indication that the Respondent has engaged in any legitimate or noncommercial use of the disputed domain names. The Complainant also notes that the passive holding of the disputed domain names, especially when they incorporate the famous and distinctive CARREFOUR trademark, does not constitute a bona fide offering of goods or services, nor does it demonstrate a legitimate noncommercial or fair use.

Finally, the Complainant argues that the disputed domain names were registered and are being used in bad faith. In this respect, the Complainant asserts that considering the widespread recognition of the CARREFOUR trademark, it is inconceivable that the Respondent was unaware of the Complainant’s rights when registering the disputed domain names which incorporate the said trademark in its entirety. The Respondent’s use of privacy or proxy services strongly supports a finding of registration in bad faith with the intention of misleading the consumers, disrupting the Complainant’s business, or otherwise exploiting its trademark’s reputation for illicit gain. The Complainant also affirms that the Respondent’s failure to actively use the disputed domain names constitutes evidence of bad faith use under the UDRP. This passive holding strongly suggests that the Respondent’s main intention was to prevent the Complainant from reflecting its well-known trademark in corresponding domain names or to exploit the Complainant’s goodwill at a later stage. According to the Complainant, this conclusion is further supported by the Respondent’s registration of multiple domain names incorporating the famous CARREFOUR trademark and its use of privacy services to conceal its identity.

B. Respondent

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

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 entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are 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, “naow”, 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 names and the trademark 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.

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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 names. In particular, the Complainant has established a prima facie case by asserting that it never authorized or licensed the Respondent to use its CARREFOUR trademark; there is no indication that the disputed domain names are being used in connection with a bona fide offering of goods or services; and there is no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. In addition, no evidence in the available record suggests that the Respondent is commonly known by the disputed domain names.

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 names such as those enumerated in the Policy or otherwise.

Accordingly, 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 Complainant’s registered trademark largely predates the registration of the disputed domain names and the disputed domain names incorporate this trademark in its entirety with the addition of the term “naow”. The Panel concurs with the prior UDRP decisions recognizing the well-known nature of the CARREFOUR trademark. The Panel finds it inconceivable that the Respondent was unaware of the Complainant’s well-known trademark when registering the disputed domain names. Therefore, the Panel infers that the Respondent knew or should have known that these registrations would be confusingly similar to the CARREFOUR trademark. WIPO Overview 3.0, section 3.2.2. The absence of the Respondent’s rights or legitimate interests in the disputed domain names further supports a finding of registration in bad faith.

The Panel also finds that the mere registration of the disputed domain names that are confusingly similar to the well-known CARREFOUR trademark by the Respondent, who has no affiliation with the Complainant, creates a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Finally, panels have found that the 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. In the present case, the disputed domain names are inactive and resolve to error pages. Having reviewed the available record, the Panel notes the

distinctiveness and the international reputation of the Complainant’s trademark, the composition of the disputed domain names, the Respondent’s failure to respond to the Complaint, the concealment of the Respondent’s identity on the publicly available WhoIs record, the absence of evidence of any good faith use

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to which the disputed domain names may be put, and finds that in the circumstances of this case the passive
holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Therefore, 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 names <carrefournaow.shop> and <carrefournaow.store> be transferred to the Complainant.

/Mehmet Polat Kalafatoglu/
Mehmet Polat Kalafatoglu
Sole Panelist
Date: December 26, 2024