Carrefour SA v 伍誉 (Wu Yu)

WIPO Case No. DCO2022-0023

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. 伍誉 (Wu Yu)

Case No. DCO2022-0023

1. The Parties

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

The Respondent is 伍誉 (Wu Yu), China.

2. The Domain Name and Registrar

The disputed domain name <carrefourps5.co> is registered with Alibaba Cloud Computing Ltd. d/b/a

HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2022. On March 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2022, 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 in English on March 22, 2022.

On March 22, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 22, 2022, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the

proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on March 28, 2022. In accordance with the

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Rules, paragraph 5, the due date for Response was April 17, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2022.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 28, 2022. 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 worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. The Complainant is listed on the Paris Stock Exchange (CAC 40) with a turnover of EUR 76 billion in 2018. The Complainant operates more than 12,000 stores in more than 30 countries worldwide with more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. The Complainant also offers travel, banking, insurance, and ticketing services.

The Complainant owns numerous trademark registrations worldwide for CARREFOUR, including but not limited to the following:

- International Trademark Registration No. 351147 for CARREFOUR, registered on October 2, 1968; and

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

The Complainant also owns several domain names which contains its CARREFOUR mark, such as
<carrefour.com> which was registered on October 25, 1995.

The disputed domain name, <carrefourps5.co>, was registered on August 1, 2021, and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered CARREFOUR mark as the disputed domain name comprises the CARREFOUR mark in its entirety with the addition of a term “ps5” and the country code Top-Level Domain (“ccTLD”) “.co”.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the Respondent was well aware of the Complainant and its CARREFOUR mark at the time of registration of the disputed domain name and there is no plausible good faith use to which the disputed domain name can be put to.

B. Respondent

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

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6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In
the absence of this agreement, the language of the Registration Agreement shall dictate the language of the
proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances
of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both
parties taking into consideration matters such as command of the language, time, and costs. It is important
that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties
in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case
No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the Complainant is unable to communicate in Chinese and may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(ii)       the disputed domain name is comprised of Latin characters, rather than Chinese characters; and

(iii) the Respondent appears to be able to understand English and undergo the proceeding in the English language as it was part of several UDRP proceedings where English was the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. The disputed domain name contains the Complainant’s

CARREFOUR mark in its entirety and the term “ps5”.

It is also well-established that the addition of a term would not prevent a finding of confusing similarity
between a disputed domain name and a complainant’s mark. (See WIPO Overview of WIPO Panel Views
on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Wal-Mart Stores, Inc. v.
Kuchora, Kal, WIPO Case No. D2006-0033; and Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No.
D2008-1345). Here, the addition of the term “ps5” to the CARREFOUR mark does not prevent a finding of

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confusing similarity.

Further, it is well established that the addition of a ccTLD “.co” is viewed as a standard registration
requirement and as such is typically disregarded under the first element confusing similarity test. (See WIPO
Overview 3.0, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns trademark registrations of the CARREFOUR mark long
before the date that the disputed domain name was registered, and that it is not affiliated with nor has it
licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v.
DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO
Case No. D2010-0138).

The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation
or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the
Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence that the disputed domain name resolved to an inactive webpage. The test to apply to determine bad faith is that of the totality of circumstances. In doing so we must look to: (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, (iii) the respondent’s

concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. (See WIPO Overview 3.0, section 3.3).

In this case, the evidence shows that the Complainant’s mark is distinctive and has attained significant reputation. The strong reputation and distinctive character of the Complainant’s mark is evidence that the Respondent is unlikely to have registered the disputed domain name without sight and knowledge of the Complainant’s mark and it is implausible that there is any good faith use to which the disputed domain name may be put to. It is also the Complainant’s evidence that the Respondent could not have registered the disputed domain name without prior knowledge of the Complainant’s mark as the Respondent’s name has

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no connection with the Complainant’s CARREFOUR mark, which was registered long ago. This is another
indicator of bad faith on the part of the Respondent (see Boursorama SA v. Estrade Nicolas, WIPO Case No.
D2017-1463).

The Complainant argues and the Panel agrees that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent. It is well established that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. (See WIPO Overview 3.0, section 3.1.4).

In addition, the Panel has taken into consideration that the Respondent was involved in past UDRP proceedings as a respondent, including against the Complainant, in cases involving the same trademark, which demonstrates that the Respondent was indeed aware of the Complainant and its CARREFOUR mark at the time of registration of the disputed domain name and specifically targeted the Complainant, which is further evidence of bad faith.

The Panel also notes that the Respondent did not submit a Response in this proceeding which is another indication of the Respondent’s bad faith.

Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the fact that the disputed domain name resolved to an inactive website, and the fact that no Response was submitted by the Respondent in response to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used 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 disputed domain name, <carrefourps5.co>, be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: May 12, 2022