Carrefour SA v xx xxx

WIPO Case No. D2024-0853

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. xx xxx

Case No. D2024-0853

1. The Parties

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

The Respondent is xx xxx, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <carrefour-global.com> is 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 February 27, 2024. On February 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 28, 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 February 28, 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 1, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 21, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 22, 2024.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on April 3, 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.

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4. Factual Background

The Complainant is a multinational retail company headquartered in France, with a revenue of EUR 83 billion in 2022. 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 webstores. The Complainant

additionally offers travel, banking, insurance, and ticketing services.

The Complainant is the owner of numerous trademarks for or incorporating CARREFOUR, including:

- International Trademark Registration No. 351147 for CARREFOUR, registered on October 2, 1968, and
designating goods in international classes 1 to 34;
- International Trademark Registration No. 353849 for CARREFOUR, registered on February 28, 1969, and
designating services in international classes 35 to 42;
- European Union Trademark Registration No. 5178371 for CARREFOUR, registered on August 30, 2007,
and designating goods and services in international classes 9, 35, and 38;
- United States Trademark Registration No. 6763415 for CARREFOUR, registered on June 21, 2022,
designating services in international class 35.

In addition, the CARREFOUR trademark has been recognized as well-known by numerous prior UDRP panels.

The Complainant is also the owner of numerous domain names incorporating CARREFOUR trademarks, both within generic and country code Top-Level Domains, created well before the disputed domain name, including the domain name <carrefour.com>, created on October 25, 1995.

The disputed domain name <carrefour-global.com> was created on February 15, 2024, and resolves to a
webpage offering cryptocurrency investment opportunities prominently using the Complainant’s
CARREFOUR trademark. There is not any disclaimer disclosing the (lack of) relationship between the

Parties.

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.

Identical or Confusingly Similar

The Complainant contends that the disputed domain name and the CARREFOUR trademarks are confusingly similar.

The Complainant further contends that the CARREFOUR trademark remains recognizable within the disputed domain name and incorporation of a well-known trademark may be sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant also contends that the addition of the term “global” with the accompanying hyphen does not avoid confusing similarity.

No rights or legitimate Interests

The Respondent has no connection with the Complainant or any of its affiliates, and has never sought or obtained any trademark registrations for the CARREFOUR trademark.

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The Complainant has not found any evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or organization prior to any notice of the dispute.

The Complainant puts forth that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The disputed domain name resolves to a website where the Complainant’s t CARREFOUR trademark is

used to mislead the average Internet user into believing that the website is directly operated, supported, or
authorized by the Complainant, carrying out concerning activities around the Complainant’s clients, personal

accounts, online money deposits, funds, and cryptocurrencies.

Registered and used in bad faith

The Complainant submits that the Complainant and its trademarks are so widely known that it is inconceivable that the Respondent was not aware of the Complainant or its earlier trademark rights. Given the Complainant’s worldwide reputation and the ubiquitous presence of the Complainant’s CARREFOUR trademark in various markets, it is highly likely that the Respondent was aware of the CARREFOUR trademark long prior to registering the disputed domain name.

The Complainant further contends that the current use of the disputed domain name may not be considered as the good faith use.

The fact that the Respondent is trying to conceal its identity is among the factors that demonstrates the bad faith registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i. that the disputed domain name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights;

ii. that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. that the disputed domain name has been registered and is being used in bad faith.

Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its decision on the statements and documents submitted and in accordance with the Policy and the Rules.

Under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the
Panel “shall draw such inferences therefrom as it considers appropriate”.

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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 here, “global”, 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.

Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its CARREFOUR trademark. There is no actual or contemplated bona fide or legitimate use of the disputed domain name..

The Complainant further contends that the Respondent is not known under the disputed domain name, does not own any rights in the name “Carrefour” and does not make any bona fide use – neither commercial nor noncommercial, of the same.

Based on the case records, the Complainant has established that the Respondent has not been commonly known by or associated with the disputed domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name, which could demonstrate rights or legitimate interests of the Respondent. See, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

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In the Panel’s view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name. Noting the composition of the disputed domain name, and the general design of the website to which the disputed domain name resolves, the Panel finds the Respondent’s intention was to target the Complainant and trade off the goodwill of the CARREFOUR trademark.

Insofar as the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate domain name.

interests to the disputed domain name, this shifts the burden of production to the Respondent to show
evidence that it has rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO
Overview 3.0 (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261, and Document
Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). The

In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, 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.

As it was established by the Complainant, the disputed domain name was created on February 15, 2024 and resolves to a webpage offering various cryptocurrency investment opportunities prominently utilizing the Complainant’s CARREFOUR trademark without any disclaimer disclosing the (lack of) relationship between the Parties.

The Complainant has produced evidence showing that it owns registrations for the CARREFOUR trademark in various countries, of which dates of registration significantly precede the date of the registration of the disputed domain name.

In addition, the Complainant has credibly submitted that over the years it has developed substantial goodwill in the CARREFOUR trademark. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and goodwill in its trademark. See, e.g., Carrefour SA v. hanib bas, WIPO Case No. D2020-1798; Carrefour SA. v. Reliant-web Domain Admin / Jean Marie Grolleau / Joanne Elvert, WIPO Case No. D2021-2389.

Giving the distinctiveness and the famousness of the Complainant’s CARREFOUR trademark, and the content of the Respondent’s website, the Respondent undoubtedly had the Complainant’s business identifiers in mind when registering the disputed domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a strong presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0; Carrefour SA v. blackwhite, dolly tiwari, WIPO Case No. D2021-0274).

Previous UDRP panels have also found bad faith based upon the inclusion of the complainant’s entire famous mark in a disputed domain name, when due to the composition of the domain name there is no plausible circumstance in which the respondent could legitimately use it. See, e.g., Cellular One Group v.

Paul Brien, WIPO Case No. D2000-0028 (registration of <cellularonechina.com> constituted bad faith use because the domain name included complainant’s entire CELLULAR ONE mark).

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In view of the above, the Panel concludes that the Respondent’s website under the disputed domain name purports to offer investment services that take advantage of the Complainant’s reputation and, based on the balance of probabilities, the Respondent registered and used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s CARREFOUR trademark as to the endorsement by the Complainant of the cryptocurrency offerings on the website at the disputed domain name.

The fact that the Respondent is trying to conceal its identity also contributes to the bad faith findings in this case.

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-global.com> be transferred to the Complainant.

/Kateryna Oliinyk/
Kateryna Oliinyk
Sole Panelist
Date: April 22, 2024