Carrefour SA. v Yilmaz Kabarak
WIPO Case No. D2024-4058
•12-11-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Carrefour SA. v. Yilmaz Kabarak
Case No. D2024-4058
1. The Parties
The Complainant is Carrefour SA., France, represented by IP Twins, France.
The Respondent is Yilmaz Kabarak, Türkiye.
2. The Domain Names and Registrars
The disputed domain names <kampanya-carrefoursa.info>, <kampanya-carrefoursa.space>,
<kampanyayonlendirmecarrefoursa.online>, <kampanyayonlendirme-carrefoursa.space>, and
<kampanyayonlendirme-carrefoursa.website> are registered with Network Solutions, LLC (the “Registrar”).
The disputed domain names <kampanyayonlendirme-carrefoursa.online> and <kampanyayonlendirme- carrefoursa.shop>, are registered with Hostinger Operations, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2024. communication to the Complainant on October 4, 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 October 7, 2024.
On October 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On October 3, and October 4, 2024, the Registrars 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 (PERFECT PRIVACY, LLC and Privacy Protect,
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”).
page 2
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on October 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. Aside from informal communications on October 4, and
7, 2024, the Respondent did not submit any formal response. Accordingly, the Center notified the
Commencement of Panel Appointment Process on October 30, 2024.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 5, 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 has submitted evidence that it is the owner of a number of CARREFOUR trademark registrations in various countries and classes, including:
| - | CARREFOUR, International trademark with registration number 351147 and registration date |
October 2, 1968, for goods and services in class 1-27.
| - | CARREFOUR, International trademark with registration number 353849 and registration date |
February 28, 1969, for goods and services in class 35-42.
The disputed domain names <kampanya-carrefoursa.info>, <kampanya-carrefoursa.space>,
<kampanyayonlendirmecarrefoursa.online>, <kampanyayonlendirme-carrefoursa.online>,
<kampanyayonlendirme-carrefoursa.online>, <kampanyayonlendirme-carrefoursa.shop>,
<kampanyayonlendirme-carrefoursa.space> and <kampanyayonlendirme-carrefoursa.website> were
registered on September 3, 2024. Five of the disputed domain names resolve to websites that display pay-
commercial per-click links (“PPC”) and two of the disputed domain names resolve to blank websites
displaying “403 Forbidden” error messages.
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 trademark CARREFOUR. The addition of generic or descriptive terms such as “kampanya” (meaning “campaign” or “promotion”) and “yonlendirme” (meaning “redirection”) does not prevent a finding of confusing similarity;
| - | The Complainant has never authorized, licensed, or otherwise permitted the Respondent to use its |
well-known trademark in any manner. The Respondent has no relationship, business connection, or
affiliation with the Complainant that would justify the use of the trademark in the disputed domain names.
| - | There is no evidence that the Respondent is commonly known by the disputed domain names. |
- The Respondent’s use of the disputed domain names as PPC parking webpages or “403 Forbidden” error pages demonstrates that the Respondent is not making any bona fide offering of goods or services.
page 3
- The domain names incorporate the Complainant’s well-known trademarks, with the addition of Turkish
words such as “kampanya” (campaign) and “yonlendirme” (redirection or guide) in the domain names
suggesting that the Respondent deliberately aimed to mislead Turkish consumers into believing that the
domains were associated with the Complainant’s legitimate activities in Turkey.
| - | All the disputed domain names were registered on the same day, further underscoring the |
Respondent’s bad-faith intent.
- Several of the domain names are being used as PPC parking pages. By directing traffic to these PPC
pages, the Respondent is seeking to generate revenue from Internet users who are misled by the
incorporation of the Complainant’s well-known trademark in the domain names.
- Passive holding of domain names that incorporate a well-known trademark, without any demonstrable
effort to use them for a legitimate purpose, has long been recognized as evidence of bad faith under the
UDRP.
B. Respondent
On October 4, 2024, the Respondent sent an email message to the Center stating “nice to see you again”
and on October 7, the Respondent sent another e-mail message stating “Sea Transfer Circular Easter Suns”.
Aside from the email messages above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, 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 the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing 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 is, according to the submitted evidence, the owner of the registered trademark
CARREFOUR. The disputed domain names incorporate the trademark in its entirety with the addition of the
letters “sa”, a common abbreviation of the term “Société Anonyme”, and the descriptive terms “kampanya”
(meaning “campaign” or “promotion” in Turkish) and “yonlendirme” (meaning “redirection” in Turkish).
Given that the trademark is recognizable in the disputed domain names, the addition of the letters “sa” and the terms “kampanya” and “yonlendirme” do not prevent a finding of confusing similarity for the purposes of the Policy. It is standard practice to disregard the gTLD under the confusingly similar test.
Having the above in mind, the Panel concludes that the disputed domain names are confusingly similar to the Complainants’ trademark CARREFOUR and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.
page 4
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that the Respondent uses or has made preparations to use the disputed domain name or a name
corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior
to the dispute; or
(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that 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. 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.
From the submitted material in the Complaint and its annexes, it is clear that the Complainant’s trademark registrations for CARREFOUR predate the Respondent’s registration of the disputed domain names. The Complainant has not licensed, approved, or in any way consented to the Respondent’s registration and use
of the trademark in the disputed domain names.
| <kampanya-carrefoursa.info>, <kampanya-carrefoursa.space>, <kampanyayonlendirmecarrefoursa.online>, | The Complainant has submitted evidence that the Respondent is using the disputed domain names carrefoursa.online> and <kampanyayonlendirme-carrefoursa.shop> do not resolve to any active websites and/or return “403 Forbidden” error messages. |
| Hence, there is no evidence in this case indicating that the Respondent has used or made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute. Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence indicating that it is the owner of any trademark or that it is commonly known by the disputed domain names. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. | |
| The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes | |
| that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. | |
| C. Registered and Used in Bad Faith | |
| Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation: |
page 5
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the
purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner
of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a
pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted
to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by
creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation,
or endorsement of the website or location or of a product or service on that website or location.
As previously mentioned, the Complainant’s trademark registrations predate the registration of the disputed
domain names, which entirely comprise the Complainant’s trademark. The Panel notes that the
Complainant’s CARREFOUR trademark is considered distinctive and well-known according to UDRP
decisions cited by the Complainant. See Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya
Rteam, WIPO Case No. D2019-2895 in which the Panel stated “CARREFOUR is a well-known trademark in
France and elsewhere”.
The Complainant has provided evidence that the disputed domain names <kampanya-carrefoursa.info>, <kampanya-carrefoursa.space>, <kampanyayonlendirmecarrefoursa.online>, <kampanyayonlendirme-carrefoursa.online>, <kampanyayonlendirme-carrefoursa.space> and <kampanyayonlendirme-carrefoursa.website>, resolve to websites displaying sponsored commercial PPC links competing with or capitalizing on the Complainant’s trademark. Thus, the circumstances in the case indicate that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on such websites or locations.
In addition, the evidence submitted by the Complainant demonstrates that the domain names
<kampanyayonlendirme-carrefoursa.online> and <kampanyayonlendirme-carrefoursa.shop> resolve to blank
webpages or return “403 Forbbiden” error messages. 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. See 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, that the passive holding of the disputed domain names does not prevent a
finding of bad faith under the Policy. Accordingly, the Panel is convinced by the evidence in the Complaint
and its annexes that the Respondent registered the disputed domain names to prevent the Complainant from
using its trademark in the corresponding domain names and that the Respondent’s behavior reflects a
pattern of conduct.
In the absence of any evidence to the contrary, the Panel is persuaded on the balance of probabilities that the Respondent registered and used the disputed domain names with the Complainant’s trademark and business in mind. Another factor to weigh in the balance is the fact that the Respondent has not responded to the Complainant’s contentions.
There is no evidence in this case that refutes the Complainant’s submissions and the Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and used in bad faith.
page 6
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 <kampanya-carrefoursa.info>, <kampanya-carrefoursa.space>,
<kampanyayonlendirme-carrefoursa.online>, <kampanyayonlendirmecarrefoursa.online>,
<kampanyayonlendirme-carrefoursa.shop>, <kampanyayonlendirme-carrefoursa.space> and
<kampanyayonlendirme-carrefoursa.website> shall be transferred to the Complainant.
/Johan Sjöbeck/
Johan Sjöbeck
Sole Panelist
Date: November 12, 2024
0
0
0