ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA v. Hakim Abdullah, Allah Case No. D2024-4018 1. The Parties Complainant is Carrefour SA, France, represented by IP Twins, France. Respondent is Hakim Abdullah, Allah, South Africa. 2. The Domain Names and Registrar The disputed domain names
, , and (the “Domain Names”) are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2024, for the disputed domain names and . On the same day the Complainant requested the addition of the disputed domain name . On October 1 and 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 8 and 10, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 10, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 11, 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2024.
page 2 The Center appointed Clive L. Elliott K.C. as the sole panelist in this matter on November 13, 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 Complainant is a French company and a worldwide leader in retail, with the introduction of the hypermarket in 1968, as well as offering travel, banking, insurance, and ticketing services. Operating more than 12,000 stores in more than 30 countries worldwide, Complainant is also listed on the Paris Stock Exchange (CAC40). Complainant is the registered owner of several hundred trade marks worldwide in the term CARREFOUR (Complainant’s Mark), including but not limited to: Trade Mark Jurisdiction Registration No. Registration Date Class CARREFOUR International 351147 October 2, 1968 1 to 34 CARREFOUR International 353849 February 28, 1969 35 to 42 CARREFOUR European Union Intellectual Property Office 5178371 August 30, 2007 9, 35, and 38 CARREFOUR PASS International 719166 August 18, 1999 36 In addition, Complainant is the owner of numerous domain names identical to, or comprising Complainant’s Mark, including: (a) , registered since 1995 (b) , registered since 2005 (c) , registered since 2019. Complainant enjoys a widespread continuous reputation as evidenced by a large number of WIPO decisions including among others, Carrefour SA v. jean noel ballart, WIPO Case No. D2023-2225; Carrefour SA v. Sui Yuan, Bao Bao Liu, WIPO Case No. D2023-3003; Carrefour SA v. hanib bas, WIPO Case No. D2020-1798; Carrefour SA. v. Reliant-web Domain Admin / Jean Marie Grolleau / Joanne Elvert, WIPO Case No. D2021-2389; Carrefour v. Andre Machado, WIPO Case No. DIO2020-0004; and Carrefour SA v. Youssefgcxh Elachourix, WIPO Case No. D2024-0840. According to the publicly available WhoIs the Domain Names were registered as follows: (a) - September 20, 2024; (b) - September 20, 2024; and, (c) - September 24, 2024; At the date of the Complaint no active websites were associated with any of the Domain Names, and all three Domain Names resolved to error pages. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names.
page 3 Notably, Complainant contends that all three Domain Names are confusingly similar to Complainant’s Mark as they all contain Complainant’s mark in its entirety. As well as containing Complainant’s Mark, each Domain Name either contains the term “inicio(s), which is the Spanish word meaning “start” in English, which when used on the web typically refers to the homepage of a website, or the letter “m” which when used on the web and separated by a hyphen, is a common reference for “mobile”. Complainant asserts that there is no evidence that Respondent has been commonly known by any of the Domain Names, nor has Respondent been authorized by Complainant to use Complainant’s Mark in any trade mark or domain name. The fact that all three Domain Names revert to error pages, Complainant submits is evidence that it is not a bona fide offering of goods or services and the Domain Names are being passively held by Respondent. Complainant points out that the Domain Names, all containing Complainant’s Mark, are inherently likely to mislead Internet users and carry a high risk of implied affiliation with Complainant, which does not constitute fair use as they are effectively impersonating or suggesting sponsorship or endorsement by Complainant. All three Domain Names, in Complainant’s submission, have been registered in bad faith, firstly, because Complainant enjoys a long-lasting worldwide reputation with Complainant’s Mark which is widely well-known, and secondly because Complainants trade mark registrations significantly pre-date the registration dates of the Domain Names. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 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 Complainant’s Mark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant’s Mark is recognizable within the Domain Names. That is, on the basis that the Domain Names differ only to the extent of adding hyphens and additional words or letters, namely the word “inicio(s)”, and the letter “m”. Accordingly, the Domain Name is confusingly similar to Complainants Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of the above word/s and letter may be relevant in terms of assessing the second and third elements, the addition of the word/s and letter does not, in and of itself, prevent a finding of confusing similarity between the Domain Name and the mark 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 Respondent may demonstrate rights or legitimate interests in the Domain Names.
page 4 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 respondent lacks rights or legitimate interests, the burden of production on this element shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name (although the burden of proof always remains on complainant). If respondent fails to come forward with such relevant evidence, complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Based on the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Respondent has failed to rebut Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names such as those enumerated in the Policy or otherwise. Of particular significance in the present case, it is alleged that the Domain Names do not resolve to an active website. Instead, they revert to error pages. Complainant submits that this indicates that there is no bona fide offering of goods or services and the Domain Names are being passively held by Respondent. Such activity on its own is not indicative of any rights or legitimate interests. Instead, it carries a risk that the Domain Names may be used to impersonate Complainant. In this regard, the composition of the Domain Names, incorporating Complainant’s distinctive trade mark with the word “inicio(s)”, which is a Spanish word for “start” and the letter “m” which is said to be an abbreviation for “mobile”. Complainant submits that the Spanish word “inicio(s)”, means “start” in English, which may refer to the homepage of a website, and that the letter “m” in Internet-lingo is a common reference for “mobile”. Such composition of the Domain Names carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Moreover, there is no evidence that Respondent is actually commonly known by the Domain Names. Rather, in the circumstances of this case, it appears the choice of Respondent was intended to falsely suggest an affiliation with Complainant or otherwise mislead Internet users attempting to determine the authenticity of the Domain Names. Accordingly, 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 Panel notes that the composition of the Domain Names, incorporating Complainant’s distinctive and long-standing mark with terms/indicia related to its operations, suggests Respondent knew of and sought to take advantage of Complainant’s Mark when registering the Domain Names. Respondent has not put forward any credible explanation for the choice of the Domain Names, and the Panel considers that there is a significant risk that communications originating from or associated with the Domain Names would be misleading or deceptive, falsely suggesting a connection with Complainant. Furthermore, from the inception of the UDRP, 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; this is especially so as the Domain Names are inherently confusing or deceptive, for the reasons discussed above. Further, it appears that Respondent provided incomplete contact information when registering the Domain Names seeing as the WIPO Center was unable to send its written communication regarding these proceedings to the incomplete address provided. Such conduct reinforces a finding of bad faith. The Panel finds that 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 Domain Names , , and be transferred to Complainant. /Clive L. Elliott K.C./ Clive L. Elliott K.C. Sole Panelist Date: December 4, 2024
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