ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Abu Hurraira, Online store Case No. D2024-3777 1. The Parties The Complainant is Carrefour SA, France, represented by IP Twins, France. The Respondent is Abu Hurraira, Online store, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2024. On September 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 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 September 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 September 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2024.
page 2 The Center appointed Daniel Peña as the sole panelist in this matter on October 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, a company registered in France and listed on the Paris Stock Exchange, pioneered in 1968 the creation of the first hypermarkets and has since grown to become one of the world leaders in retail goods sales. In 2023, it operated close to 15,000 stores in many countries on several continents, with global net sales of EUR 83.3 billion. Besides retail, the Complainant offers banking, insurance, ticketing, and travel services. To that effect, the Complainant owns several hundred trademark rights worldwide in the CARREFOUR term. In particular, the Complainant is the owner of the following trademarks registered before the registration of the disputed domain name and notably: - International trademark CARREFOUR No. 191353, registered on March 9, 1956, duly renewed, and designating goods in international class 3; - International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 1 to 34; - International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42; - International trademark CARREFOUR No. 563304 designating Pakistan, registered on November 6, 1990, duly renewed, and designating goods in international classes 1 to 42; and - European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007. The disputed domain name was registered on July 30, 2024. It resolves to a website promoting a so-called “Carrefour PK Store” as a “Trusted Retail Partner” and inviting visitors to subscribe for updates. 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 the disputed domain name is confusingly similar to the Complainant’s CARREFOUR trademarks. The Complainant asserts that the disputed domain name incorporates the Complainant’s well-known trademark CARREFOUR in its entirety. The addition of the letters “pk” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. Instead, “pk” is commonly recognized as the country code for Pakistan, suggesting a geographical association rather than creating a distinctive difference. The Complainant contends that the addition of the generic Top-Level Domain (gTLD) “.store” does not affect the assessment of confusing similarity.
page 3 The Complainant asserts that the Respondent lacks any rights or legitimate interests in the disputed domain name. The Respondent has not been authorized, licensed, or otherwise permitted by the Complainant to use its well-known trademark in any form. The Complainant establishes that the Respondent’s webpage, to which the disputed domain name resolves, promotes a so-called “Carrefour PK Store” as a “Trusted Retail Partner” and invites visitors to subscribe for updates. The Complainant contends that the Respondent has taken steps to conceal its identity by using a privacy service during the registration of the disputed domain name. The Complainant asserts that the Respondent’s bad faith use is found in the visual presentation of the website to which the disputed domain name resolves. The webpage features a background image depicting a shelf in a supermarket, which directly aligns with the nature of the Complainant’s business as a global retail supermarket chain. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks CARREFOUR on the basis of its multiple trademark registrations including its international trademark registration and the European Union trademark registration. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1). It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of the WIPO Overview 3.0. The Respondent’s incorporation of the Complainant’s CARREFOUR trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s mark. Mere addition of the term “pk” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark CARREFOUR because the Complainant’s CARREFOUR mark remains clearly recognizable in the disputed domain name. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”
page 4 Furthermore, the addition of the gTLD “.store” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Panel also finds that there is no indication that the Respondent is commonly known by the disputed domain name because the Respondent’s name is “Abu Hurraira, Online store” which has no apparent connection with the CARREFOUR trademark. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the disputed domain name directs to a website that falsely claims to be a “Trusted Retail Partner” of the Complainant, without the Complainant’s authorization and adding “Copyright © 2024 Carrefour PK Store - All Rights Reserved” at the end of the website. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Panel concludes that the Respondent deliberately chose to include the Complainant’s CARREFOUR trademark in the disputed domain name, in order to achieve commercial gain by misleading third parties, and that such use cannot be considered as a legitimate noncommercial or fair use. The Respondent is using the disputed domain name to purportedly offer online retail and retail and supermarket services and inviting Internet users to subscribe to a newsletter. The disputed domain name’s content exacerbates the confusion caused by the incorporation of the Complainant’s trademark in the construction of the disputed domain name and further suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Furthermore, the Panel finds that the composition of the disputed domain name, including the term “pk”, carries a risk of implied affiliation with the Complainant. The term “pk” is recognized as the country code for Pakistan, suggesting a geographical association between the disputed domain name and the commercial activities of the Complainant in Pakistan. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. Given the above, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has
page 5 registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain name, the Respondent knew or should have known of the Complainant’s mark CARREFOUR considering the global renown of the Complainant’s prior mark and the website content targeting the Complainant’s supermarket and retail services. The Panel takes note of the construction of the disputed domain name, which combines the CARREFOUR mark with the term “pk” that is recognized as the country code TLD for Pakistan, where the Complainant has registered its trademark and develops its commercial activities, as well as the fact that the disputed domain name directs to a website that allegedly offers the Complainant’s services and inviting Internet users to subscribe to a newsletter. The Panel is satisfied that by directing the disputed domain name to a commercial website allegedly offering the Complainant’s services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark CARREFOUR as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (see section 3.1.4 of the WIPO Overview 3.0). Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Having considered the Complainant’s submissions and in the absence of a Response, the Panel accepts the Complainant’s submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the inherently misleading disputed domain name. Consequently, the Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith within paragraph 4(a)(iii) 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. /Daniel Peña/ Daniel Peña Sole Panelist Date: November 4, 2024
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