ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. luan vendas online, Loja Oficial Case No. D2024-1676 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is luan vendas online, Loja Oficial, Brazil. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2024. On April 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Contact Privacy Inc. Customer 0169963903) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 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 May 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 June 7, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2024. The Center appointed José de Pierola as the sole panelist in this matter on July 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 multinational retail and wholesaling corporation founded in 1959 and headquartered in France. Over the years, the Complainant has opened 12,225 stores in over 30 countries, with 6,605 convenience stores located solely in Europe, employing over 321,000 employees throughout the world. The Complainant’s revenue as of July 22, 2021, was of USD 82,211.30 million, and the value of its trades are up to EUR 16,285, as of September 29, 2023. Additionally, the Complainant is one of the Premium Partners of the Paris 2024 Olympics, selling special collections of such sports event. The Complainant is the owner of numerous trademark registrations for CARREFOUR, as per trademark certificates submitted as annexes to the Complaint: - International Registration No. 191353 for CARREFOUR, filed and registered on March 9, 1956, in International class 3. - International Registration No. 351147, for CARREFOUR, filed and registered on October 2, 1968, in International classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34. - European Union Registration No. 005178371, for CARREFOUR, filed on June 20, 2006 and registered on August 30, 2007, in International classes 9, 35 and 38. - International Registration No. 1609621, for CARREFOUR LINKS and design, filed on June 4, 2021, and registered on June 8, 2021, in International class 35, with designation in Brazil under the Madrid Protocol. - International Registration No. 1539537, for BIO CARREFOUR and design, filed on April 23, 2020, and registered on May 15, 2020, in International class 35, with designation in Brazil under the Madrid Protocol. The Complainant is also de owner of several domain names, as per the information submitted as annexes to the Complaint: - , registered on March 10, 2006. - , registered on June 23, 2005. - , registered on January 18, 1997. - , registered on June 18, 2001. - , registered on October 25, 1995. The Complainant uses the above-mentioned domain names as e-commerce websites, to promote and sell the goods sold on their stores located in Europe and Brazil. The disputed domain name was registered on January 21, 2024, resolved to an inactive webpage displaying “Error 1001”. 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. Notably, the Complainant contends that the disputed domain name is confusingly similar to its earlier trademarks CARREROUR. The disputed domain name reproduces the earlier trademark CARREFOUR in its entirety, along with the term “vendas”, used by several businesses to describe their services.
page 3 The Complainant alleges that the addition of the term “vendas” does not diminishes the confusing similarity of the disputed domain name, but rather reinforces it, as such term suggests that the disputed domain name belongs to the Complainant’s official service portal or a subsidiary website related to the CARREFOUR trademark. Additionally, previous UDRP decisions have stated that the addition of a generic or descriptive terms in a domain name does not prevent a finding of confusing similarity. The Respondent reproduces the Complainant’s earlier registered trademarks CARREFOUR in the disputed domain name without any license or authorization from the Complainant, which is strong evidence of the lack of rights or legitimate interests. The Complainant submits that the Respondent has not made demonstrable preparations to use the disputed domain name in connection to a bona fide offering of goods or services. On the contrary, the disputed domain name is inactive, which indicates that the Respondent has not established any rights or legitimate interests in the disputed domain name, and strongly suggests the presence of “passive holding”, by which the Respondent is retaining the disputed domain name without any legitimate justification. Furthermore, the Complainant claims that the disputed domain name was registered and used in bad faith, in light of the following arguments: First, the Complainant alleges that the Complainant and its trademarks are so renowned, that is clear that the Respondent had awareness of them prior to requesting the registration of the disputed domain name. Taking into account the widespread reputation of the Complainant’s trademarks, it is evident that the decision to incorporate trademark CARREFOUR in the disputed domain name implies the Respondent’s deliberate effort to capitalize on the trademark’s established reputation and goodwill, which is an indication of bad faith. In second place, the Respondent hid his identity on WhoIs data, and giving the circumstances, should be interpreted as an attempt to conceal their identity and contact details, which suggests that they do not want to be easily reached or held accountable, which is indicative of bad faith, taking into account that this case involves a renowned trademark (CARREFOUR). In third place, the disputed domain name remains inactive, and the passive holding of a domain name that incorporated a renowned trademark cannot be taken as a bona fide offering of goods or services. Also, this inactivity does not establish any rights or legitimate interests in the disputed domain name and, on the contrary, this passive holding suggests bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii) the disputed domain name was registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances.
page 4 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 (whether descriptive, geographical, pejorative, meaningless, or otherwise) may bear on assessment of the second and third elements, the Panel finds the addition of “vendas”, a Portuguese term that means “sales”, 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. 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 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The composition of the disputed domain name carries a risk of implied affiliation with the Complainant and its well-known CARREFOUR trademarks. WIPO Overview. 3.0, section 2.5.1. 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. 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 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.
page 5 In the present case, the Panel notes the notoriety of the Complainant’s CARREFOUR trademark and the composition of the disputed domain name, and thus, finds that the Respondent, more likely than not, was aware of the Complainant trademark when registering the disputed domain name. WIPO Overview 3.0, section 3.2.2. Moreover, 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. 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. /José de Pierola/ José de Pierola Sole Panelist Date: July 16, 2024
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