ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Domain Name Privacy Inc. Case No. D2024-1659 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is Domain Name Privacy Inc., Cyprus. 2. The Domain Name and Registrar The disputed domain name is registered with Communigal Communications Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2024. On April 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on April 29, 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 April 29, 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 May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2024. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 4, 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.
page 2 4. Factual Background The Complainant is a French company mainly active in the retail sector. It was founded in 1968 and has more than 12,000 retail locations in more than 30 countries worldwide. Additionally, the Complainant offers travel, banking, insurance, and ticketing services. The Complainant is the owner of registered trademarks in the mark CARREFOUR, amongst which: International Trademark No. 351147 for CARREFOUR, registered on October 2, 1968, in International Classes 01 to 34; and International Trademark No. 353849 for CARREFOUR, registered on February 28, 1969, in International Classes 35 to 42. In addition, the Complainant owns domain names containing the CARREFOUR trademark, amongst which . The disputed domain name was registered on April 10, 2024, well after the Complainant secured rights in the mark CARREFOUR. The disputed domain name currently resolves to a web page containing Pay-Per-Click (“PPC”) links relating to what appear to be local competitors of the Complainant located in the United Arab Emirates and neighboring Qatar: “Jumbo Supermarket”, “Lulu Qatar”, and “Jumbo Electronics”. 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. With respect to the first element, the Complainant contends that it has rights in the mark CARREFOUR and that the disputed domain name is confusingly similar to this mark. The disputed domain name reproduces the well known CARREFOUR mark in its entirety. In addition, the Complainant notes, the disputed domain name merely appends the term “uae” to the Complainant’s CARREFOUR trademark which should be read as the ISO code of the United Arab Emirates. This addition in fact further reinforces the confusing similarity considering the Complainant is present and active in the United Arab Emirates. Finally, the Complainant claims that the generic top-level domain (“gTLD”) “.club”, featured in the disputed domain name, is not significant in determining whether the disputed domain name is identical or confusingly similar to the trademarks of the Complainant. Regarding the second element, the Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent does not own any trademark rights in CARREFOUR and is not known by the disputed domain name. Furthermore, the Complainant confirms that the Respondent has not been granted any license or authorization from the Complainant to use domain names featuring the CARREFOUR trademark. Moreover, the Complainant contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of services or is making preparations for such use. On the contrary, they mention, the disputed domain name is used for a void page. As to bad faith registration and use, the Complainant claims that the Complainant and their CARREFOUR trademarks predate the registration date of the disputed domain name by many years and are well known. It is therefore inconceivable, they note, that the Respondent was unaware of the Complainant or its earlier rights in the mark CARREFOUR. Moreover, the Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier
page 3 trademarks. In that respect, the Complainant also points out that a simple search on an online search engine only yields results related to the Complainant. The Complainant also contends that the Complainant likely chose the disputed domain name because of its similarity to the CARREFOUR mark and with the intention to use it to attract Internet users searching for the Complainant’s services and products to the Respondent’s website instead. Finally, referring to the passive holding doctrine, the Complainant claims that the non-use of the disputed domain name cannot be seen as good faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 entirety of the mark is reproduced 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 “uae” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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. Finally, as for the applicable gTLD “.club”, the Panel holds that this can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. 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
page 4 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds that the Respondent does not use the disputed domain name in connection with a bona fide offering of services and has neither made a legitimate noncommercial or fair use of the disputed domain name. On the contrary, it appears from the case file that the disputed domain name is currently being used for a web page with PPC links to local competitors of the Complainant located in the United Arab Emirates and neighboring Qatar. This kind of use of the disputed domain name does not represent a bona fide offering and does not support rights or legitimate interests in the disputed domain name. WIPO Overview 3.0, section 2.9. In addition, the Complainant confirmed that the Respondent is not affiliated with the Complainant in any way nor has the Complainant licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. The Panel has taken note of the Complainant’s confirmation in this regard and has not seen any evidence that would suggest the contrary. Noting the composition of the disputed domain name, in the absence of any license or permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). Finally, there is no evidence that the Respondent has been commonly known by the disputed domain name or owns any registered trademarks in CARREFOUR. Based on the available record, 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 Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks (paragraph 4(b)(iv) of the Policy). The case file shows that the disputed domain name currently resolves to a web page with PPC links to local competitors of the Complainant located in the United Arab Emirates and neighboring Qatar. These circumstances, in combination with the Respondent’s clear absence of rights or legitimate interests in the disputed domain name, are strong indicators of bad faith. Furthermore, it should be noted that 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 also 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. First of all, the Panel believes that the Respondent knew or, at least, should have known at the time of registration that the disputed domain name included the Complainant’s CARREFOUR trademarks. As demonstrated by the Complainant, prior UDRP panels have previously recognised that the CARREFOUR trademark is well known (see, for example: Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895; and Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610). Other prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, Section 3.1.4).
page 5 Furthermore, the PPC advertisement links on the web page to which the disputed domain name resolves all relate to local competitors of the Complainant in the United Arab Emirates and neighboring Qatar. In addition, the disputed domain name incorporates the CARREFOUR trademarks in their entirety and includes the term “uae”, which would be understood as a reference to the UAE, or United Arab Emirates. These circumstances show that the Respondent had the Complainant and its trademarks in mind when registering the disputed domain name since the Complainant is active and present in the United Arab Emirates. Finally, the Complainant’s evidence shows that the CARREFOUR trademarks were registered many years before registration of the disputed domain name in several countries. The Respondent’s knowledge of the Complainant and its trademarks and therefore its registration in bad faith of the disputed domain name may accordingly also be inferred from these circumstances. WIPO Overview 3.0, section 3.2.2. 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 be transferred to the Complainant. /Benoit Van Asbroeck/ Benoit Van Asbroeck Sole Panelist Date: June 13, 2024
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