ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Carmelo Vera, Jesus Murillo, Gregorio Arroyo, Lorenzo Redondo, Eduardo Miranda, Ignacio Vazquez Case No. D2024-3402 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondents are Carmelo Vera, Jesus Murillo, Gregorio Arroyo, Lorenzo Redondo, Eduardo Miranda, Ignacio Vazquez, Spain. 2. The Domain Names and Registrar The disputed domain names , , , , , and (the “Domain Names”) 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 August 20, 2024. On August 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 21, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (Domain Admin/Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 22, 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 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 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”).
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 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 23, 2024. The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 30, 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 to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant provides goods and services related to supermarkets, retail stores, food and non-food products. It had a turnaround of EUR 83 billion in 2022. The Complainant operates more than 12,000 stores in more than 30 countries worldwide, having more than 384,000 employees. With regards to Spain where the registrants supposedly are located, the Complainant has more than 200 hypermarkets, 160 “Carrefour Market” supermarkets and 1,000 “Carrefour Express” supermarkets. The Complainant owns hundreds of trademark registrations in many jurisdictions worldwide, for example International registration CARREFOUR no. 351147, registered on October 2, 1968, and European Union trademark CARREFOUR EXPRESS No. 5405832, registered on October 18, 2007. The Complainant has domain name registrations consisting of the CARREFOUR trademark, for example, , which has been registered since 1995. The Complainant has online presence via social media platforms. The fame of the Complainant’s trademark is evidenced by former UDRP decisions. The Respondents registered the Domain Names on and between July 24, 2024, and August 15, 2024. At the time of the Complaint, the Domain Names either resolved to an error page or a Registrar-parked webpage. 5. Parties’ Contentions A. Complainant The Complainant argues that the Domain Names are under common control. The Domain Names were registered in a very short time frame through the same registrar. Four Domain Names are identical under different new generic Top-Level Domains (”gTLDs”), and two Domain Names reproduce the entirety of CARREFOUR EXPRESS trademark and are only different by the presence of a hyphen. None of the Domain Names are associated with an active website. All registrants are listed in Spain with a similar naming pattern and Gmail email accounts. The Complainant provides evidence of trademark registrations and argues that the Complainant’s trademarks are well-known. Furthermore, the Domain Names are identical to the Complainant’s trademarks, altered only by the additional “es” and use of a hyphen in one of the Domain Names. The additions do not prevent a finding of confusing similarity. The Complainant argues that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Complainant trademarks predate the registration of the Domain Names, and the burden is on the Respondents to establish the Respondents’ rights or legitimate interests in the Domain Names. The Respondents reproduce the Complainant’s trademark in the Domain Names without authorization. The Respondents have not been commonly known by the Domain Names. The Respondents have not provided any evidence of bona fide use of, or demonstratable preparations to use, the Domain Names in connection with any legitimate offering of goods or services. The Domian Names have not resolved to active webpages.
page 3 The similarity between the Domain Names and the Complainant’s trademarks, results in a risk of implied affiliation with the Complainant. The Complainant argues that it is inconceivable that the Respondents ignored the Complainant or its earlier Rights. The Respondents’ choice of the Domain Names cannot have been accidental. It must have been influenced by the fame of the Complainant and its earlier trademarks and done to attract Internet users searching for the Complainant’s services and products. The current non-use of the Domain Names does not prevent a finding of bad faith under the doctrine of passive holding. Due to the long-lasting international relationship of the Complainant and its trademarks, the Complainant cannot think of any future use of the Domain Names that may be done by the Respondents in good faith. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural matter - consolidation The Complaint was filed in relation to nominally different domain name registrants. The Complainant argues that the domain name registrants are the same entity or 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. 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 to common control, the Panel notes that the Domain Names are registered within a short time period, under the same privacy registration service, the same Registrar, and with a similar pattern for the listed registrants data. All the Domain Names target the Complainant’s trademark and have a similar structure. None of the Domain Names resolve to an active webpage. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. The registrants have been granted the right to comment but opted not to. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to as “the Respondent”) in a single proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the Domain Names. See WIPO Overview 3.0, section 1.7. The Complainant has established that it has rights in the trademarks CARREFOUR and CARREFOUR EXPRESS. The Domain Names incorporate the Complainant’s trademarks with the addition of “es” and a hyphen. The additions do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 and 1.9.
page 4 For the purpose of assessing the confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD. See WIPO Overview 3.0, section 1.11.1. Based on the available record, 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. While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the 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 Domain Names. The Respondent is not affiliated or related to the Complainant. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired trademark rights. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. 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 incorporation of the entirety of the Complainant’s trademarks in the Domain Names, and the fame of the Complainant’s trademarks, make it probable that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the Domain Names. The Panel finds it likely that the Respondent chose the Domain Names because of its similarity with the Complainant’s trademarks. The non-use of the Domain Names does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Moreover, the mere registration of a domain name that is confusingly similar to a famous or widely known trademark by an unaffiliated entity may by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established.
page 5 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 Domain Names , , , , and be transferred to the Complainant. /Mathias Lilleengen/ Mathias Lilleengen Sole Panelist Date: October 2, 2024
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