Carrefour SA v tongliang li

WIPO Case No. D2024-3843

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. tongliang li

Case No. D2024-3843

1. The Parties

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

The Respondent is tongliang li, Japan.

2. The Domain Name and Registrar

The disputed domain names <carrefour-club.com>, <carrefour-club.me> and <carrefour-club.online> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2024. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 20, 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, See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 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 September 25, 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 September 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2024.

The email Notification included the Complaint and annexes thereto as well as a document titled “Notification of Complaint and Commencement of Administrative Proceeding”, informing you of your rights and obligations

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under the UDRP, the UDRP Rules and the WIPO Supplemental Rules. Due to a technical issue, it appears that the Notification of Complaint, email was not delivered. Therefore, on October 28, 2024, the Center re- notified the Complaint.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on
November 18, 2024.

The Center appointed Dawn Osborne as the sole panelist in this matter on November 25, 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 is a significant player in retail operating in hypermarkets back to 1968. It is the owner, inter alia of the following trademarks:

- International trademark CARREFOUR No. 351147, registered on October 2,1968 designating goods in
international classes 1 to 34;
- International trademark CARREFOUR No. 353849, registered on February 28, 1969 designating services in
international classes 35 to 42; and
- European Union trademark CARREFOUR No. 5178371, registered on August 30, 2007.

In addition, the Complainant is also the owner of numerous domain names identical to, or comprising, its trademark, both within generic and country-code Top-Level Domains including <carrefour.com> registered since 1995 and <carrefour.fr> since 2005.

The disputed domain names <carrefour-club.com>, <carrefour-club.me> and <carrefour-club.online> were registered on September 2, 2024.

The page displayed at <carrefour-club.me> was headed “Carrefour Enjoy MY Club Reward Program at Carrefour Egypt today and unlock a world of exclusive benefits and rewards!”, displayed a log in screen and attempted to divert Internet users from the Complainant’s rewards program page “Carrefour Egypt MY Club Rewards - Exclusive Discounts” available at “ The disputed domain names also used the Complainant’s device marks. The disputed domain names <carrefour-club.com> and <carrefour- club.online> also displayed similar log in screens. Currently, the disputed domain names no longer appear to resolve to active sites.

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 well known CARREFOUR trade mark, containing it in its entirety and adding a hyphen and the designation “club” which do not prevent the Complainant’s mark being recognizable in the disputed domain names. The Top-Level domains “.com”,

“.online” or “.me” (country code for Montenegro) are not significant in determining whether the domain names
are identical or confusingly similar to the trademarks of the Complainant.

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The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorised the Complainant and the Respondent is not commonly known by the disputed domain names. Pointing a domain name to pages that carry log in screens and/or seeking to affiliate them with the Complainant by use of the Complainant’s device marks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names carry a risk of implied affiliation with the Complainant and cannot be put to any conceivable legitimate use. They have been registered in opportunistic bad faith to take advantage of the Complainant’s trade mark to mislead Internet users and disrupt the Complainant’s business and/or are being passively held. The Respondent has given incorrect and apparently false address and telephone details in the WhoIs details for the disputed domain names, also an indication of bad faith.

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 names. 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 CARREFOUR 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 a hyphen and the dictionary word “club” 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 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.

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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. 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.

The disputed domain names inherently carry a risk of affiliation with the Complainant.

Further, Panels have held that the use of a domain name for illegitimate activity here log in screens
apparently designed for phishing purposes and in the case of <carrefour-club.me> use of the Complainant’s
device marks for passing off purposes can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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.

In the present case, the Panel notes that the Respondent has by means of log in pages and in the case of
<carrefour-club.me> the Complainant’s device marks to disrupt the business of the Complainant and confuse
Internet users for commercial gain.

While 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, 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 particular, Panels have held that the use of a domain name for illegitimate activity here log in screens designed for phishing and in the case of <carrefour-club.me> use of the Complainant’s device marks for passing off purposes constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The disputed domain names do not currently appear to resolve to active sites.

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. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the

disputed domain names 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.

The Panel also notes that the Respondent appears to have given false address and telephone details to the

WhoIs database also an indication of bad faith. WIPO Overview 3.0, Section 3.2.1

The Panel finds that the Complainant has established the third element of the Policy.

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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 <carrefour-club.com>, <carrefour-club.me>, and

<carrefour-club.online> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: December 4, 2024