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, suf...

WIPO Case No. D2023-3003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION Carrefour SA v. Sui Yuan, Bao Bao Liu Case No. D2023-3003

1. The Parties

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

The Respondent is Sui Yuan, Bao Bao Liu, China.

2. The Domain Name and Registrar

The disputed domain name <carrefourshop.vip> is registered with Go Montenegro Domains, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2023. On July 13, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On July 14, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name, which dif fered f rom the named Respondent (Sui Yuan, Bao Bao Liu) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on July 19, 2023.

The Center verif ied that the Complaint together with 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 notif ied the Respondent of the Complaint, and the proceedings commenced on July 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2023. The Respondent did not submit any response.

Accordingly, the Center notif ied the Respondent’s default on August 18, 2023.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on September 1, 2023. The Panel f inds 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 worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968, operating more than 12,000 stores with more than 384,000 employees worldwide and 1,3 million daily unique visitors in its stores.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademarks

CARREFOUR, including the following:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968.
- International trademark CARREFOUR No. 353849, registered on February 28, 1969.

- European Union trademark CARREFOUR No. 5178371, registered on August 30, 2007.

The Complainant also owns numerous domain names consisting of CARREFOUR, including the domain
names <carrefour.com>, registered on October 25, 1995, and <carrefourqatar.com>, registered on

July 31, 2000.

The disputed domain name was registered on May 12, 2023, and resolves to a parking webpage.

5. Parties’ Contentions
A. Complainant

The Complainant argues that the disputed domain name entirely reproduces the Complainant’s trademark CARREFOUR, in addition to the term “shop,” and the generic Top-Level-Domain (“gTLD”) “.vip”, which do nothing to diminish the likelihood of confusion since the trademark CARREFOUR is immediately

recognizable within the disputed domain name.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name and there is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. The Complainant also informs that it has not authorized the use of its trademarks in the disputed domain name in any manner or form.

The Complainant mentions that it is impossible that the Respondent did not have the trademark
CARREFOUR in mind while registering the disputed domain name.

The Complainant states that the disputed domain name is not connected with an active website but resolved to a parking page rendered by the registrar GoDaddy where the following message appears: “Welcome to <carrefourshop.vip> - This domain is registered but may still be available. If you’re interested, try our Domain Broker service.,” suggesting that the domain could be offered for sale. The Complainant argues that this use cannot be considered a bona fide offering of goods or services as contemplated by the Policy nor a legitimate noncommercial or fair use.

The Complainant argues that reproducing famous trademarks in a domain name to attract Internet users to an inactive website cannot be considered fair use or use in good faith.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for CARREFOUR around the world, in addition to many domain names consisting of CARREFOUR.

The disputed domain name incorporates the Complainant’s trademark CARREFOUR in its entirety with the addition of the term “shop”, and the generic top-level domain (“gTLD”) “.vip.” The addition of the term “shop” and the gTLD “.vip” do not prevent a f inding of confusing similarity between the disputed domain name and the Complainant’s trademark, since CARREFOUR remains recognizable in the disputed domain name, and for the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD; see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is suf f icient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See section 1.7 of the WIPO Overview 3.0.

The Panel f inds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s famous trademark or to register domain names containing the trademark CARREFOUR.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute, the Respondent has made use of , or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide of fering of goods or services.

For the above reasons, the Panel f inds that the condition of paragraph 4(a)(ii) of the Policy has been satisf ied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark CARREFOUR is registered by the Complainant in many jurisdictions and has been used for decades. The Complainant’s trademarks predate the registration of the disputed domain name.

The Complainant’s trademark is well-known and has strong international reputation and online visibility. The disputed domain name reproduces the Complainant’s trademark CARREFOUR, and the Respondent has no rights or legitimate interests in the disputed domain name.

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Moreover, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, supra “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith” (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

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, suf ficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.

In this case, given that CARREFOUR is a well-known mark, 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 name randomly with no knowledge of the
mark CARREFOUR, particularly as it is reproduced in the disputed domain name along with the term “shop”,
a term connected to the retail business of the Complainant (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, while it appears that the disputed domain name has not been used in connection with an active website (except for a parking page), given the totality of the circumstances present here, the Panel f inds the Respondent’s conduct to be in bad faith.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.

For the above reasons, the Panel f inds that the condition of paragraph 4(a)(iii) of the Policy has been satisf ied, i.e., the disputed domain name has been registered and 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, <carrefourshop.vip> be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: September 15, 2022