ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. zhiqiang guo Case No. D2024-3420 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is zhiqiang guo, United States of America. 2. The Domain Name and Registrar The disputed domain name is 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 21, 2024. On August 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name 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 26, 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 August 26, 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 August 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2024.
page 2 The Center appointed Tobias Malte Müller 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. 4. Factual Background It results from the Complainant’s undisputed allegations that it is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. With a revenue of EUR 83 billion in 2022, the Complainant is listed on the index of the Paris Stock Exchange (CAC 40). It operates more than 12000 stores in more than 30 countries worldwide and has more than 384000 employees worldwide and 1.3 million daily unique visitors in its stores. The Complainant additionally offers travel, banking, insurance and ticketing services. The Complainant owns numerous trademark registrations throughout the world for or containing CARREFOUR, e.g., European Union trademark registration No. 005178371 CARREFOUR (word) registered on August 30, 2007 for goods and services in classes 9, 35 and 38. In addition, the Complainant owns and uses amongst others the following domain names (registered on October 25, 1995) and (registered on July 29, 2000) for advertising its goods and services The disputed domain name was registered on August 17, 2024. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a web-shop displaying the Complainant’s trademark and purportedly offering online retail sales under the Complainant’s trademark. 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: (1) the disputed domain name is confusingly similar to its earlier well-known and distinctive CARREFOUR trademark, since it incorporates said trademark in its entirety together with the three letters “uae”, a common abbreviation for the United Arab Emirates. This geographic reference corresponds to one of the territories in which the Complainant is commercially present, and therefore increases the likelihood of confusion; (2) the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not acquired any trademark for CARREFOUR or CARREFOURUAE which could have granted the Respondent rights in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. The Respondent reproduces the Complainant’s earlier registered trademark in the disputed domain name (and on the corresponding website) without any license or authorization from the Complainant. The disputed domain name resolves to a website where the Complainant’s device and word marks are illicitly used, misleading the average Internet user into believing that the disputed domain name and website content might be directly operated by, authorized by, or affiliated with, the Complainant; (3) the disputed domain name was registered and is being used in bad faith. According to the Complainant, the specific composition of the disputed domain name and the use of the Complainant’s trademark on the corresponding website leave no doubt that the Respondent was well aware of the existence of the Complainant and of its earlier rights. The Respondent necessarily had the Complainant’s
page 3 company name and trademark in mind when registering the disputed domain name. The Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that a disputed domain name be transferred or cancelled: (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 has been registered and is being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. 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 trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trademark for the purposes of the Policy, WIPO Overview 3.0, section 1.7. Although the addition of other term, here “UAE”, 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 trademark 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
page 4 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. Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered trademark CARREFOUR entirely and an abbreviation ”uae” for the United Arab Emirates. The composition of this disputed domain name carries a risk of implied affiliation: in fact, geographic terms are seen as tending to suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0 at section 2.5.1. The Panel also notes in this regard that the Complainant operates a similar domain name . 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 shares the view of other UDRP panels and finds that the Complainant’s trademark CARREFOUR is well known. Therefore, this Panel has no doubt that the Respondent knew or should have known the Complainant’s trademark when registering the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s trademark followed by the geographic abbreviation ”uae”. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the trademark 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 shares this view. 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. In this regard, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (i) the composition of the disputed domain name (a domain name incorporating the Complainant’s well-known CARREFOUR trademark plus an additional geographical abbreviation); (ii) the content of the website to which the disputed domain names resolves (i.e. web-shop displaying the Complainant’s trademark in a similar manner to the Complainant’s, and purportedly offering online retail sales under the Complainant’s trademark); (iii) a clear absence of rights or legitimate interests coupled with no response which would provide justification for the Respondent’s choice of the disputed domain name. The Panel finds that the Complainant has established the third element of the Policy.
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 disputed domain name be transferred to the Complainant. /Tobias Malte Müller/ Tobias Malte Müller Sole Panelist Date: October 7, 2024
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