ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. paulo silva sousa; and Hospedagem Hostinger, FP COMPANY Case No. D2024-2919 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondents are paulo silva sousa, Brazil; and Hospedagem Hostinger, FP COMPANY, 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 July 17, 2024. On July 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 18 and 24, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 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 August 16, 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 12, 2024. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 23, 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. 3.1. 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 that they are 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 registrants of the disputed domain names 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 in the present case, the disputed domain names share the same structure (i.e., the term “carrefour” followed or preceded by dictionary terms in Portuguese), all of them are registered under generic Top-Level Domains (“gTLD”) (“.online” and “.shop”, respectively). Also, all of the disputed domain names were registered with the same Registrar and were configured with the same name sever Cloudflare. Finally, the disputed domain names were registered on neighboring dates: June 23 and 25, 2024. 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 herein as “the Respondents”) in a single proceeding. 4. Factual Background The Complainant is a worldwide leader in retail and a pioneer of the hypermarket concept since 1968. The Complainant operates more than 12,000 stores in more than 30 countries worldwide, including Brazil. The Complainant is listed on the index of the Euronext Paris Stock Exchange.
page 3 The Complainant owns, among others, the following trademark registrations: Trademark Registration No. Jurisdiction Date of Registration Class CARREFOUR 191353 Benelux, Spain, Italy. March 9, 1956 Class 3. CARREFOUR 351147 Benelux, Italy, Monaco, Spain. October 2, 1968 Class 1, Class 2, Class 3, Class 4, Class 5, Class 6, Class 7, Class 8, Class 9, Class 10, Class 11, Class 12, Class 13, Class 14, Class 15, Class 16, Class 17, Class 18, Class 19, Class 20, Class 21, Class 22, Class 23, Class 24, Class 25, Class 26, Class 27, Class 28, Class 29, Class 30, Class 31, Class 32, Class 33 and Class 34. CARREFOUR 353849 Benelux, Croatia, Czech Republic, Estonia, Hungary, Italy, Latvia, Liechtenstein, Lithuania, Monaco, Montenegro, Morocco, North Macedonia, San Marino, Serbia, Slovakia, Slovenia, Spain February 28, 1969 Class 35, Class 36, Class 37, Class 38, Class 39, Class 40, Class 41 and Class 42. The Complainant is the owner of numerous domain names, such as , , , , , , among others. The disputed domain name was registered on June 23, 2024, whilst the disputed domain names and were registered on June 25, 2024. At the time of writing this decision, the disputed domain names resolve to error pages. 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.
page 4 Notably, the Complainant contends that: I. Identical or Confusingly Similar. That the Complainant owns several hundred trademark registrations that incorporate the brand CARREFOUR worldwide, which have a wide-spread well-known reputation (citing 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). That the Complainant’s fame and notoriety is also evidenced on its social media since its official Facebook page has more than 11 million likes. That the Complainant also owns numerous gTLD and country code TLD domain names identical to its CARREFOUR trademarks, and that the disputed domain names are highly similar to the Complainant’s CARREFOUR trademarks because they reproduce said marks along with Portuguese generic terms such as “aniiversário”, “liquida”, and “acesso”. That the addition of a generic term to a well-known trademark such as the Complainant’s CARREFOUR trademarks in the disputed domain names does not diminish the likelihood of confusion (citing Carrefour v. Telford Foucault, WIPO Case No. D2019-3191), and that the use of lower-case letter format and of TLDs are not significant in determining the similarity between the disputed domain names and the Complainant’s CARREFOUR trademarks. That the incorporation of a well-known trademark in its entirety may be sufficient to establish that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks (citing Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo, WIPO Case No. D2019-0670). That the disputed domain names comprise the Complainant’s CARREFOUR trademarks in their entirety, contending that the disputed domain names are identical or highly similar to the Complainant’s CARREFOUR trademarks. II. Rights or Legitimate Interests That the Respondents should be considered as having no rights or legitimate interests in respect of the disputed domain names. That there is no evidence of any CARREFOUR trademark being owned by the Respondents, or any evidence that could prove that the Respondents are commonly known by the disputed domain names. That the Respondents have reproduced the Complainant’s CARREFOUR trademarks without any license or authorization, which is strong evidence of the Respondents’ lack of rights or legitimate interests. That the Respondents have not used or made preparations to use the disputed domain names in relation to a bona fide offering of goods or services. That, the disputed domain names resolve to an error page. That the Complainant’s use of its CARREFOUR trademarks predates the registration dates of the disputed domain names, placing the burden on the Respondents to prove their rights or legitimate interests in the disputed domain names. III. Registered and Used in Bad Faith That the Respondents have registered and used the disputed domain names in bad faith.
page 5 That it is inconceivable that the Respondents ignored the Complainant and the Complainant’s rights over its CARREFOUR trademarks. That the Complainant enjoys a long-lasting worldwide reputation which has been established by previous panels appointed under the Policy (and cites Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc., WIPO Case No. D2015-0962; Carrefour v. VistaPrint Technologies Ltd., WIPO Case No. D2015-0769; Carrefour v. Park KyeongSook, WIPO Case No. D2014-1425; Carrefour v. Yujinhua, WIPO Case No. D2014-0257; Carrefour v. Karin Krueger, WIPO Case No. D2013-2002; Carrefour S.A. v. Patrick Demestre, WIPO Case No. D2011-2248; Carrefour v. groupe carrefour, WIPO Case No. D2008-1996; and Carrefour SA v. Eric Langlois, WIPO Case No. D2007-0067). That the Respondents’ choice of disputed domain names cannot have been accidental and must have been influenced by the fame of the Complainant’s CARREFOUR trademarks. That the Respondents chose the disputed domain names because of their identity or similarity to the Complainant’s CARREFOUR trademarks with the intention of directing Internet users searching for the Complainant to the disputed domain names, and that such use does not constitute a legitimate interest under the Policy (citing Shaw Industries Group Inc. Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583 and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.) That the Complainant’s trademark registrations for CARREFOUR significantly predate the registration of the disputed domain names, and that knowledge of said trademarks at the time of registration proves bad faith, given that a quick search of said mark in a search engine would have revealed to the Respondents the existence of the Complainant and its CARREFOUR trademarks (citing Lancome Parfums Et Beaute & Cie, L’oreal v. 10 Selling, WIPO Case No. D2008-0226). B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to successfully request remedies: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark to which the Complainant has rights; (ii) that the Respondents have no rights or legitimate interests in connection to the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Given the Respondents’ default and therefore, failure to specifically address the case merits as they relate to the three UDRP elements, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292; Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3).
page 6 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 its CARREFOUR trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The disputed domain names entirely comprise the Complainant’s CARREFOUR trademark, with the addition terms “aniiversário” and “liquida” before, and the term “acesso” after said mark. The Panel finds that the Complainant’s CARREFOUR trademark is recognizable within the disputed domain names and addition of such terms does not prevent a find of confusing similarity (see WIPO Overview 3.0, sections 1.7 and 1.8). It is also well established that the addition of the gTLDs “.online” and “.shop” is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1). Accordingly, the disputed domain names are confusingly similar to the Complainant’s CARREFOUR trademarks for the purposes of the Policy. 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 Respondents 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 Respondents lack rights or legitimate interests in the disputed domain names. The Respondents have 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 case file contains no evidence that demonstrates that the Respondents have used or have made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; and Associated Newspapers Limited v. Manjeet Singh, WIPO Case No. D2019-2914). Furthermore, the Panel considers that the composition of the disputed domain names carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Therefore, the Panel finds the second element of the Policy has been established.
page 7 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 Complainant has ascertained its rights over its CARREFOUR trademarks. The dates of registration and use of the CARREFOUR trademarks significantly precede the date of registration of the disputed domain names. The Panel agrees with decisions rendered by previous UDRP panels in the sense that the CARREFOUR trademarks are famous (see Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, supra and Carrefour v. Perfect Privacy, LLC / Milen Radumilo, supra). Previous panels appointed under the Policy have found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can in itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). This is so in the present case because the CARREFOUR trademark is well-known and extensively used worldwide, including in Brazil, the jurisdiction of residence declared by the Respondents. The Respondents’ bad faith registration is evidenced by the fact that (1) the CARREFOUR trademarks are famous worldwide; (2) the disputed domain names are confusingly similar to the CARREFOUR trademarks, as they incorporate said marks in their entirety; (3) said disputed domain names are also similar to the Complainant’s official domain names; (4) the Complainant has submitted evidence of use and registration of its CARREFOUR trademarks many decades prior to the date of registration of the disputed domain names; (5) the Respondents are in default and have not shown any rights or legitimate interests in the disputed domain names. Therefore, it is natural to infer that the Respondents knew the Complainant and its CARREFOUR trademarks at the time of registration of the disputed domain names, and that the Respondents opportunistically targeted the Complainant, its CARREFOUR trademarks, and its business (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; and Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980). On the uncontroverted evidence, the Panel finds that the Respondents registered the disputed domain names in bad faith. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names do not prevent a finding of bad faith in the circumstances of this proceeding. While 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 respondents to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondents’ concealing their identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the famous nature of the Complainant’s CARREFOUR trademarks, and the composition of the disputed domain names, and the Respondents’ failure to submit a response to the Complaint, and thus finds that under the circumstances of this case the passive holding of the disputed domain names do not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 8 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. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: October 7, 2024
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