ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Heroi Ofertas, Roberto Santiago, Atena3d Case No. D2024-1558 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondents are Heroi Ofertas, Brazil, and Roberto Santiago, Atena3d, Brazil. 2. The Domain Names and Registrar The disputed domain names , , and 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 April 12, 2024. On April 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2024, the Registrar 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 (Domain Admin/Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on April 18, 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 Respondents of the Complaint, and the proceedings commenced on April 23, 2024. In accordance with the Rules, paragraph 5,
page 2 the due date for Response was May 13, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 14, 2024. The Center appointed Tommaso La Scala as the sole panelist in this matter on May 18, 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 is a worldwide renown French leading global retailer, with over 321,000 employees throughout the world and a revenue of EUR 83 billion in 2022. The Complainant is the owner of several trademarks for CARREFOUR including: - International Trademark Registration CARREFOUR No. 351147, registered on October 2, 1968; - International Trademark Registration CARREFOUR No. 353849, registered on February 28, 1969; and - European Union Trademark Registration CARREFOUR No. 5178371, registered on 30 August 2007. The Complainant is also owner of several domain names including the designation “carrefour”, such as the domain name , registered on October 25, 1995, since 1997, since 2005, since 2007 and since 2017. The disputed domain names , , , and were registered between April 2 and 4, 2024. The Complainant has provided evidence showing that the disputed domain name previously resolved to an active website prominently displaying the Complainant’s trademark and purportedly stating that the website is the Complainant’s official website, while the remaining disputed domain names are not associated with active websites but they resolve to error pages and/or to a standard landing page provided by Shopify. 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. The Complainant affirms that the disputed domain names are confusingly similar to the Complainant’s CARREFOUR trademark, as they all reproduce the CARREFOUR trademark in its entirety, with the mere addition of the term “lojas” (Portuguese word meaning “stores” in English) and a further “r” after CARREFOUR, which would make the disputed domain names clear examples of typosquatting. The Complainant submits that the Respondents are neither licensees of the Complainant nor are they affiliated with the Complainant in any way. The Complainant says that it has not authorised the Respondents to make any use of its CARREFOUR trademark, whether in a domain name, in the use of its logos on the website, or otherwise. The Complainant says that there is no evidence to suggest that the Respondents are commonly known by the disputed domain name, as intended under paragraph 4(c)(ii) of the Policy.
page 3 The Complainant lastly asserts that the Respondents registered and used the disputed domain name in bad faith, as (i) the unauthorized use of the Complainant’s name and trademarks in the website corresponding to the disputed domain name and (ii) the passive holding of disputed domain names , , and makes it evident that the Respondents were well aware of the existence of the Complainant, which has been intentionally targeted to mislead Internet users. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that the Complainant managed to demonstrate that the disputed domain names are (i) identical registrations, if the generic Top-Level Domains (“gTLDs”) are disregarded, (ii) registered through the same Registrar, (iii) registered between April 2 to April 4, 2024. Furthermore, the Panel notes that the disputed domain names and share the same name server provider. Therefore, the Panel considers that the disputed domain names are likely to be owned by the same Respondent with different aliases and are subject to the common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2 Substantive Issues 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 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.
page 4 The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are 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, the Portuguese term “lojas”) 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 names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Likewise, the addition of letter “r” at the end of the CARREFOUR mark seems actually a case of typosquatting. 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 names. 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 names such as those enumerated in the Policy or otherwise. The Panel further notes that disputed domain name resolved to an active website prominently displaying the Complainant’s trademark and purportedly stating that it is the Complainant’s official website. Such use cannot confer any rights and legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1. 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. The registration of the Complainant’s trademarks predates the disputed domain names. In the present case, the Panel notes that the Respondent clearly had the CARREFOUR trademarks in mind while registering the disputed domain names, as one of them () falsely claimed to be the Complainant’s official website. Furthermore, as correctly indicated in a very similar case (see Carrefour SA v. Mkt Digital, WIPO Case No. D2023-0389), “There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the distinctive CARREFOUR Mark and the Portuguese word “lojas”, meaning “shops” unless there was an intention to create a likelihood of confusion between the Domain Name and the CARREFOUR Mark from which the Respondent would likely benefit”.
page 5 In this regard, the current use of the disputed domain name should not be considered a good faith use, as it involves passing off by mimicking the Complainant’s website. Considering the Complainant’s reputation in its trademark, the provision of the false or incomplete contact details by the Respondent when registering the disputed domain names (the courier service was not able to deliver the Written Notice due to bad addresses), and the Respondent’s failure to file a response, the Panel finds that the passive holding of the disputed domain names , , and does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. 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 names , , , and be transferred to the Complainant. /Tommaso La Scala/ Tommaso La Scala Sole Panelist Date: May 28, 2024
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