ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. João Pedro Case No. D2024-2895 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is João Pedro, Brazil. 2. The Domain Names and Registrar The disputed domain names and are registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2024. On July 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 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 July 23, 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 July 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2024.
page 2 The Center appointed Alfred Meijboom as the sole panelist in this matter on August 21, 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 leader in retail with a turnover of EUR 76 billion in 2018, which operates more than 12,000 stores in more than 30 countries worldwide, employing over 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. In addition, the Complainant offers travel, banking, insurance, and ticketing services. The Complainant owns several hundred trademark registrations worldwide for the term CARREFOUR, including: - International trademark registration with no. 351147 for the word mark CARREFOUR, registered on October 2, 1968, for goods in classes 1 to 34; and - International trademark registration with no. 353849 for the word mark CARREFOUR, registered on February 28, 1969, for services in classes 35 to 42. The Complainant is also owner of domain names which include the CARREFOUR trademark, including which was created in 1995. The disputed domain names were both registered on June 26, 2024, are passively held and generate an error page. 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. Notably, the Complainant contends that the disputed domain names are confusing similar to the Complainant’s CARREFOUR trademark because said trademark is well-known and the disputed domain names include the CARREFOUR trademark with the addition of a hyphen and a generic term “atualizacao” and “solucoes”, respectively. These added terms do nothing to diminish the likelihood of confusion arising from the disputed domain names. Further, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent has not been authorized by the Complainant to use its CARREFOUR trademark, the Respondent is not known by the disputed domain names, has not acquired rights in a corresponding trademark, and the Respondent did not use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, nor did it make any serious preparations to do so. According to the Complainant, the Respondent has also registered the disputed domain names in bad faith because the Complainant’s CARREFOUR trademarks, which were registered significantly prior to the registration of the disputed domain names, are so widely known that it is inconceivable that the Respondent was not aware of the Complainant earlier rights in its CARREFOUR trademarks. The Complainant alleges that the Respondent is also using the disputed domain names in bad faith as they do not resolve to an active website and generate an error page, while the Complainant invokes a well-known
page 3 trademark, no Response was filed and the Respondent concealed its identity, from which the Panel may draw inferences about whether the disputed domain names were used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. The Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances. Under the Policy, the Complainant must prove that: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. 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 names. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The CARREFOUR trademark is wholly reproduced within the disputed domain names. Although the addition of other terms, such as “actualizacao” (Portuguese for “update”) and “solucoes” (Portuguese for “solutions”), respectively, may bear on assessment of the second and third elements, the Panel finds that the addition of these terms to the disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the CARREFOUR trademark for the purposes of the Policy. Accordingly, the disputed domain names are confusingly similar to the CARREFOUR trademark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 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
page 4 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 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 CARREFOUR trademark was registered more than 65 years before the Respondent registered the disputed domain names and the Panel is satisfied that the CARREFOUR trademark has been intensively used and is therefore well known, as confirmed by many pervious UDRP panels (see Carrefour SA v. Marc Beck, WIPO Case No. D2022-2785). 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. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith. Further, previous 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 the reputation of the Complainant’s CARREFOUR trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Lastly, the Center was unable to send the written communication to the incomplete street address disclosed by the Registrar for the Respondent and such provision of false or incomplete registration information is another indicator of bad faith on behalf of the Respondent. 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. /Alfred Meijboom/ Alfred Meijboom Sole Panelist Date: September 3, 2024
Full & Egal Universal Law Academy