Carrefour SA v Zoe Freitas[1] and coumes christophe[2]
WIPO Case No. D2022-2920
•13-10-2022
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Carrefour SA v. Zoe Freitas[1] and coumes christophe[2]
Case No. D2022-2920
[2] The Complaint against this Respondent was originally filed against “Domain Administrator, See PrivacyGuardian.org”, a privacy
1. The Parties
The Complainant is Carrefour SA, France, represented by IP Twins, France.
The Respondents are Zoe Freitas, France and coumes christophe, France (hereinafter collectively referred
to as the “Respondent”).
2. The Domain Names and Registrars
The disputed domain names <achat-carefour.com>, <achat-carefour.pro>, <achats-carefour.com>, <commandes-carefour.com> and <commandes-carefour.pro> are registered with NameCheap, Inc.
(the “First Registrar”). The disputed domain name <commandes-carrefour.com> is registered with
NameSilo, LLC (the “Second Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2022.
On August 8, 2022, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On August 8, 2022, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names <achat-carefour.com>, <achat-carefour.pro>, <achats-carefour.com>, <commandes-carefour.com> and <commandes-carefour.pro> which differed from the named Respondent and contact information in the Complaint. On the same date, the Second Registrar transmitted by email to the Center its verification
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response disclosing registrant and contact information for the disputed domain name <commandes- contact information disclosed by the Registrars, and inviting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or file a separate complaint for a domain name for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 16, 2022 in which it requested consolidation of Respondents.
carrefour.com> which differed from the named Respondent and contact information in the Complaint. On
On August 17, 2022, the Center applying the principles and preliminary provider assessment stipulated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2 informed the Complainant that there appeared to
be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final
determination of the consolidation request on appointment.
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 Respondents of the
Complaint, and the proceedings commenced on August 23, 2022. In accordance with the Rules, paragraph
5, the due date for Response was September 12, 2022. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on September 27, 2022.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter September 30, 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, a company registered in France and listed on the Paris Stock Exchange, is a world leader in retail goods sales and has pioneered in 1968 the creation of the first hypermarkets. It operates more than 12,000 stores in over 30 countries, with more than 384,000 employees worldwide and 1.3 million visitors
daily in its stores. Besides retail, the Complainant offers banking, insurance, ticketing and travel services.
The disputed domain names were initially registered in the name of privacy services. The identity of the
Respondents was disclosed by the Registrars in response to the Center’s request for registrar verification in
connection with the disputed domain names.
The Complainant owns a very large portfolio of trademarks containing the distinctive element CARREFOUR, including the international trademark CARREFOUR, registered under No. 351147 on October 2, 1968 and the international trademark CARREFOUR, registered under No. 353849 on February 28, 1969 (together
hereinafter referred to as: “the Mark”).
The Complainant also owns the <carrefour.com> domain name, registered on October 25, 1995, and many
other domain names related to its activities, incorporating the element “carrefour”.
The disputed domain names <commandes-carrefour.com>, <commandes-carefour.com> and <commandes- carefour.pro> were created on April 4, 2022; the disputed domain names <achat-carefour.com> and <achat- carefour.pro> were created on April 5, 2022; the disputed domain name <achats-carefour.com> was created
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on April 6, 2022.
The Complainant has submitted evidence that the disputed domain names resolved to inactive parking pages.
5. Parties’ Contentions
A. Complainant
(i) The Complainant submits that the disputed domain names reproduce the Mark, in which the Complainant
has rights, and are confusingly similar to the Mark, insofar as the disputed domain names all contain the
Mark in its entirety or a misspelling of the Mark (with one “r” missing), preceded by the French words
“achats”, “achat” or “commandes” (i.e. “purchases”, “purchase” or “orders” respectively) and a hyphen, such
additions not being capable of dispelling the confusing similarity.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain names. Furthermore, the Complainant contends it never authorized the Respondent to use
the Mark in any manner and that the Respondent has no license from the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain names in bad faith
and alleges that the Respondent had knowledge of the Mark when registering the disputed domain names.
(iv) The Complainant submits that by its passive holding, the Respondent is using the disputed domain
names in bad faith.
(v) The Complainant requests that the disputed domain names be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Aspects
A. Request for Consolidation
In its amended Complaint, the Complainant requested a consolidation of Respondents.
Under paragraph 3(c) of the UDRP Rules, the Complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names specified in the Complaint is the same.
Pursuant to Article 10(e) of the UDRP Rules, a “Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”.
In this case, it is notable that:
| - | although they are not all registered with the same Registrar, the disputed domain names were |
registered in quick succession over a period of three days;
| - | the disputed domain names share the same registrant’s country of residence on the Whois, which is |
| France; |
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- the disputed domain names are similar to each other beyond the simple fact of containing the Mark, or a misspelling of the Mark, they all combine the Mark or a misspelling of the Mark with generic words in
French (“commandes”, “achat” or “achats”);
- even though the disputed domain names are not registered with the same Registrar, the combination
of the similarity in their structures as well as their registration over a short period of three days are very
unlikely to be a coincidence.
The combination of the above circumstances may indicate that the disputed domain names have been, in fact, registered by the same person or entity and are subject to common control.
After giving due consideration to paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), the Panel notes that the
Complainant’s above arguments have not been rebutted, that no objection was raised on the ground that
consolidation would be detrimental to the interests of the Respondent, and that none of the disputed domain
names is actively used.
Accordingly, on the balance of the probabilities and in the interest of procedural efficiency, the Panel decides that all named registrants of the disputed domain names are, in fact, the same entity and/or that all the disputed domain names are under common control, and accepts consolidation as requested by the Complainant.
B. Failure to Respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required
criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the
Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names, such as making legitimate noncommercial or fair use of the disputed domain names.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or
reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has
acted in bad faith.
6.2. Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain names, it is evident that the latter consist of the Mark, or a
misspelling of the Mark, preceded by either “achat” (“purchase” in French), “achats” (“purchases” in French)
or “commandes” (“orders” in French) and a hyphen, and followed by the generic Top-Level Domains
(“gTLDs”) “.com” or “.pro”.
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It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the elements “achat”, “achats” or “commandes” before the Mark or a misspelling of the
Mark do not dispel the confusing similarity, and that the Mark remains recognizable in the disputed domain names.
The Panel finds that the disputed domain names are confusingly similar to the Mark.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not
exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of
production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a
domain name, once the complainant has made a prima facie showing, as the Panel believes the
Complainant has made in this case. See Document Technologies, Inc. v. International Electronic
Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain names. There is no evidence that the Respondent is known by any of the disputed domain names.
The disputed domain names resolve to inactive parking pages.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain names.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has
argued that the Respondent received (i) no license from the Complainant and (ii) no authorization from the
Complainant to register or use the disputed domain names.
Furthermore, the nature of the disputed domain names, insofar as they are similar to the Mark, carries a high risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which has not been rebutted by the Respondent.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning
that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad
faith by creating confusion to the detriment of the Complainant by registering the disputed domain names
confusingly similar to the Mark, which can be considered as “cybersquatting”.
It has been established in prior UDRP decisions that where the respondent knew or should have known of a
trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances,
sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case
No. D2001-0775.
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In this case, given that the CARREFOUR element of the Mark is distinctive and well known, as was
recognized in a number of UDRP decisions (see for instance Carrefour v. Yunjinhua, WIPO Case
No. D2014-0257; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. VistaPrint
Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected /
Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case
No. D2017-2533; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. Jean-Pierre
Andre Preca, WIPO Case No. D2018-2857; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case
No. D2019-2610 and Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case
No. D2019-2895), the Panel finds that it is impossible to believe that the Respondent chose to register the
disputed domain names randomly with no knowledge of the “carrefour” element of the Mark. See Barney’s
Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO
Case No. D2001-1384, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and
SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
In addition, it is well established that the mere passive holding of a domain name may in appropriate
circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial
Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v.
Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
Prior UDRP panels have also held that bad faith use of a domain name by a respondent may also result from
the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148).
The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain
names that would not be illegitimate, considering the specificity of the Complainant’s activity and the
composition of the disputed domain names.
Moreover, in this case, the Respondent used a privacy service to hide its identity. Although using a proxy or registering the disputed domain names, the Respondent provided false or incomplete contact details that
privacy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use
(see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the Panel notes that
the fact that the Respondent used a privacy service to hide its identity and contact details prevented the
Complainant from contacting it. Prior UDRP panels have held that concealment of identity and contact
information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp
Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name
prevented the courier service from delivering the Center’s written communications.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an
affirmative duty to abstain from registering and using a domain name, which is either identical or confusingly
similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See
Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited
v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case
No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General
Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies,
Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the
disputed domain names constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is
also satisfied in this case.
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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 <achat-carefour.com>, <achat-carefour.pro>, <achats- carefour.com>, <commandes-carefour.com>, <commandes-carefour.pro> and <commandes-carrefour.com> be transferred to the Complainant.
/Louis-Bernard Buchman/
Louis-Bernard Buchman
Sole Panelist
Date: October 13, 2022
service found in the publicly available WhoIs details for the disputed domain names <commandes-carefour.pro>, <commandes- carefour.com>, <achat-carefour.pro>, <.achat-carefour.com> and <achats-carefour.com>. The identity of this Respondent was
subsequently disclosed by the First Registrar in response to the Center’s request for registrar verification in connection with the
aforementioned disputed domain names. The amended Complaint lists the person disclosed by the First Registrar as the first
Respondent.
service found in the publicly available WhoIs details for the disputed domain name <commandes-carrefour.com>. The identity of this
Respondent was subsequently disclosed by the Second Registrar in response to the Center’s request for registrar verification in
connection with the aforementioned disputed domain name. The amended Complaint lists the person disclosed by the Second
Registrar as the second Respondent.
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