ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Gixhrebzvxbj Admin / My Store Case No. D2024-2164 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is Gixhrebzvxbj Admin / My Store, Japan. 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 May 27, 2024. On May 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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 0171199404”) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 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 May 31, 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 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2024. The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 28, 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, Carrefour S.A., is a multinational corporation headquartered in France. Carrefour is a leading retailer operating hypermarkets, supermarkets, and convenience stores. The company was established in 1959 and has since grown to become one of the largest retail chains in the world. Carrefour S.A. is a publicly traded company listed on the Euronext Paris stock exchange. The Complaint is based on several registered trademarks owned by Carrefour S.A. in various jurisdictions, which include but are not limited to the following: - International trademark CARREFOUR Reg. No. 351147, registered on October 2, 1968, designating goods in international classes 1 to 34; - International trademark CARREFOUR Reg. No. 353849, registered on February 28, 1969, designating services in international classes 35 to 42; - EUIPO trademark CARREFOUR Reg. No. 5178371, registered on August 30, 2007, designating services in international classes 9, 35 and 38. These trademarks are extensively used in connection with Carrefour’s business operations globally. The trademarks are well-known and have acquired significant goodwill and reputation over the years. Carrefour S.A. is also the owner of the following domain names incorporating the “CARREFOUR” trademark, including but not limited to: - - - The disputed domain name was registered on May 17, 2024. The domain name is currently being used to operate a website that purportedly offers retail services similar to those provided by Carrefour S.A. The website content and its use have changed over time, suggesting attempts to imitate or exploit the goodwill associated with Carrefour’s trademarks. 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. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s well-known “CARREFOUR” trademark. The inclusion of the geographic term “maroc” (Morocco in French) does not sufficiently distinguish the domain name from the Complainant’s trademark. Instead, it exacerbates the confusion by suggesting an association with the Complainant’s operations in Morocco. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has not authorized, licensed, or otherwise permitted the Respondent to use its “CARREFOUR” trademark. The Respondent is not commonly known by the disputed domain name and has not made any legitimate, noncommercial use of the domain. Instead, the Respondent is using the disputed domain name to divert internet traffic by creating a misleading impression of association with the Complainant.
page 3 The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Evidence suggests that the Respondent registered the disputed domain name primarily to exploit the Complainant’s established reputation and goodwill associated with the “CARREFOUR” trademark. The Respondent’s use of the disputed domain name to operate a competing retail website indicates an intention to attract Internet users for commercial gain by creating confusion with the Complainant’s trademark. Furthermore, the Respondent’s actions show a pattern of conduct intended to disrupt the Complainant’s business. The Complainant has provided substantial evidence to support these contentions, including trademark registration certificates, examples of the Respondent’s use of the disputed domain name, and evidence of the Complainant’s extensive use and recognition of the “CARREFOUR” trademark globally and specifically in Morocco. The Complainant requests that the disputed domain name be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed 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; 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. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. 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 recognizable 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, “maroc”) 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 name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel notes that the presence of the generic Top-Level Domain (gTLD) “.com” is typically disregarded when assessing confusing similarity, as it is a standard requirement for domain names.
page 4 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 Respondent has neither used the disputed domain name in connection with a bona fide offering of goods or services nor made any demonstrable preparations for such use. Additionally, there is no evidence that the Respondent has been commonly known by the disputed domain name or has made any legitimate noncommercial or fair use of it. The Respondent’s use of the disputed domain name appears to be aimed at misleadingly diverting consumers and taking unfair advantage of the Complainant’s well-known CARREFOUR trademark. 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. In the present case, the Panel notes that the Respondent registered and is using the disputed domain name in bad faith. In particular: The Respondent’s use of the disputed domain name disrupts the Complainant’s business by creating a likelihood of confusion among consumers. The disputed domain name suggests an association with the Complainant, misleading users and potentially diverting them away from the Complainant’s legitimate services. This misleading use constitutes bad faith as it disrupts the business operations of the Complainant. WIPO Overview 3.0, section 3.1.3. The Respondent’s use of the disputed domain name leads to consumer confusion and falsely suggests an affiliation or endorsement by the Complainant. This indicates an attempt to attract users for commercial gain by exploiting the goodwill associated with the Complainant’s “CARREFOUR” trademark. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.
page 5 Furthermore, 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. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademarks, and the composition of the disputed domain name, 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 Respondent has not come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name. The lack of response further supports an inference of bad faith registration and use. In light of these circumstances, the Complainant has demonstrated that the Respondent registered and is using the disputed domain name in bad faith. The combination of these factors unequivocally shows that the Respondent has acted in bad faith, satisfying the third element of 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. /Eva Fiammenghi/ Eva Fiammenghi Sole Panelist Date: July 12, 2024
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