ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION CARREFOUR SA v. Ivanukshkin S Ivan Case No. D2024-4680 1. The Parties The Complainant is CARREFOUR SA, France, represented by IP Twins, France. The Respondent is Ivanukshkin S Ivan, Russian Federation. 2. The Domain Name and Registrar The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2024. On November 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2024, 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 (Privacy protection service - whoisproxy.ru) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 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 November 15, 2024. Together with registrant and contact information, on November 15, 2024, the Center informed the parties in Russian and English, that the language of the registration agreement for the disputed domain name was Russian. On November 15, 2024, the Complainant confirmed its request that English be the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2024. The Center appointed Assen Alexiev as the sole panelist in this matter on December 16, 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 was founded in 1959 in France. It operates more than twelve thousand stores in more than 30 countries, and has more than 384,000 employees and 1.3 million daily unique visitors in its webstores. The Complainant is the owner of a number of trademark registrations for the sign “CARREFOUR” (the “CARREFOUR trademark”), including the following: − the International trademark CARREFOUR with registration No. 351147, registered on October 2, 1968 for goods and services in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34; and − the International trademark CARREFOUR with registration No. 353849, registered on February 28, 1969 for services in International Classes 35, 36, 37, 38, 39, 40, 41 and 42. The Complainant is also the owner of a number of trademark registrations for the sign “CARREFOUR EXPRESS”, including the European Union trademark with registration No. 005405832, registered on October 18, 2007, for goods and services in International Classes 29, 30, 31, 32, 33 and 35 (the “CARREFOUR EXPRESS trademark”). The Complainant is also the owner of the domain names , registered on October 25, 1995, , registered on June 23, 2005, and , registered on March 10, 2006, all of which resolve to its official website. The disputed domain name was registered on October 22, 2024. It is inactive. 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. The Complainant states that the disputed domain name is confusingly similar to its CARREFOUR and CARREFOUR EXPRESS trademarks, because the dominant element in the disputed domain name is the term “carrefour”, which mirrors the Complainant’s primary brand name and trademark. The Complainant notes that the addition of “express” further enhances this association, as it aligns precisely with the Complainant’s CARREFOUR EXPRESS trademark. According to the Complainant, the inclusion of these trademarks in the disputed domain name suggests a direct connection to the Complainant and creates a high risk of consumer confusion, as Internet users may reasonably assume that the disputed domain name is associated with the Complainant. The Complainant adds that the combination of “Carrefour”, “Express”, and
page 3 “SA” (referring to “Société Anonyme”, a French company designation) reinforces the impression that the disputed domain name is directly related to the Complainant. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not authorized it to use its CARREFOUR or CARREFOUR EXPRESS trademarks, and the Respondent is not commonly known by it. The Complainant maintains that the Respondent is not using the disputed domain name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name, as it resolves to a blank webpage and shows no active website or content. In the Complainant’s view, given the strong reputation of the CARREFOUR and CARREFOUR EXPRESS trademarks, any use of a confusingly similar domain name by a third party is likely to create a misleading impression of association or endorsement by the Complainant. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It asserts that it is improbable that the Respondent selected the specific combination of terms “carrefour”, “express”, and “sa” by chance. According to the Complainant, the combination of its CARREFOUR trademark with “express”, a term used in one of the Complainant’s branded services, and “SA”, a corporate designation that references the Complainant’s French roots, strongly suggests that the Respondent was aware of the Complainant’s rights and deliberately chose the disputed domain name to target the Complainant’s brand. According to the Complainant, such a deliberate selection indicates that the Respondent aimed to create a misleading association with the Complainant, capitalizing on the well-known nature of the CARREFOUR and CARREFOUR EXPRESS trademarks. In the Complainant’s view, the Respondent’s decision to conceal their identity through privacy protection services when registering the disputed domain name further supports a finding of bad faith. According to the Complainant, the Respondent’s actions reflect an attempt to exploit the Complainant’s brand and prevent the Complainant from using its trademarks in the corresponding domain space. The Complainant submits that its CARREFOUR and CARREFOUR EXPRESS trademarks are well-known internationally, so it is implausible that the Respondent could have registered the disputed domain name without knowledge of these trademarks. According to it, the Respondent’s use of a privacy service, combined with the passive holding of the disputed domain name that directly incorporates the Complainant’s trademarks, suggests that the Respondent’s primary intent is to prevent the Complainant from using its own trademarks in the disputed domain name. The Complainant concludes that the Respondent’s passive holding of the disputed domain name, combined with its deliberate selection of terms associated with the Complainant’s brand and its use of privacy services to obscure its identity, constitutes clear evidence of bad faith use. According to the Complainant, the Respondent’s actions serve no legitimate purpose and are intended to exploit the Complainant’s trademarks to its detriment. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue - Language of the proceeding The language of the Registration Agreement for the disputed domain name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
page 4 The Complaint was filed in English. The Complainant requests that the language of the proceeding be English with the arguments that this language is broadly understood and widely used in international legal proceedings and is preferred to ensure equitable treatment and facilitate mutual comprehension among all parties, and that using English in the proceeding would enhance the efficiency, minimize unnecessary delays and avoid the need for expensive and time-intensive translation of legal documents. The Complainant adds that the disputed domain name is a blend of English and French elements, where the word “carrefour” is a French dictionary word, “express” and “tech” are English words commonly associated with international commerce and technology, and “SA” is an abbreviation of the French legal term “Société Anonyme”, which underscores an international context where English is frequently used. The Respondent did not make any specific submissions with respect to the language of the proceeding, and did not object to the Complainant’s request for English to be the language of the proceeding. The Center has sent all its communications to the Parties in both English and Russian. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 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 the CARREFOUR and CARREFOUR EXPRESS trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the CARREFOUR and CARREFOUR EXPRESS trademarks are recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the CARREFOUR and CARREFOUR EXPRESS trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “express” and “sa”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the CARREFOUR and CARREFOUR EXPRESS trademarks 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 5 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. It has not submitted a Response and has not denied the Complainant’s statements or disputed the evidence attached to the Complaint. The disputed domain name incorporates the Complainant’s distinctive and popular CARREFOUR and CARREFOUR EXPRESS trademarks. As noted by the Complainant, it appears improbable that the Respondent may have independently created the disputed domain name without targeting to the Complainant. Considering the above, the Panel finds that the Complainant’s prima facie showing has not been rebutted. 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 Complainants' registered trademarks CARREFOUR and CARREFOUR EXPRESS predate the registration date of the disputed domain name by several decades and have been extensively used in many countries. The Respondent has not submitted a Response and has not brought forward any arguments why the registration of the disputed domain name should be considered as having been made in good faith. The Panel is therefore of the view that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark rights and, on balance, with the intention of taking advantage of their goodwill. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith. 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. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s CARREFOUR and CARREFOUR EXPRESS trademarks, the composition of the disputed domain name, which appears to have been created to target the Complainant and its trademarks, and the failure of the Respondent to submit a Response or to provide any evidence of actual or contemplated good-faith use of the disputed domain name. These circumstances strongly suggest that the Respondent’s passive holding of the disputed domain name is in bad faith. The Panel therefore finds that the Complainant has established the third element of the Policy.
page 6 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. /Assen Alexiev/ Assen Alexiev Sole Panelist Date: December 20, 2024
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