WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Contact Privacy Inc. / Gimaini Amador / Regina Duarte Nazario / Manoel Valeriano da Silva / Jeferson Neuhaus / Name Redacted

Case No. D2020-1800

1. The Parties

The Complainant is Carrefour SA, France, represented by IP Twins S.A.S., France.

The Respondents are Contact Privacy Inc., Canada / Gimaini Amador, Brazil / Regina Duarte Nazario, Brazil / Manoel Valeriano da Silva, Brazil / Jeferson Neuhaus, Brazil / Name Redacted¹ .

2. The Domain Names and Registrar

The disputed domain names <carrefourbebidas.org>, <carrefourparavoce.com>, <carrefoursempreonline.com>, <carrefoursiteonlinee.com>, <carrefoursiteonlines.com>, <carrefoursites.com> and <lojaonline-carrefour.com> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint, and confirming that the language of the registration agreement for the disputed domain names <carrefourparavoce.com>, <carrefoursempreonline.com>, <carrefoursiteonlinee.com>, <carrefoursiteonlines.com>, <carrefoursites.com> and <lojaonline-carrefour.com> was Portuguese and that the language of the registration agreement for the disputed domain name <carrefourbebidas.org> was English. The Center sent an email communication to the Complainant on July 15, 2020 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 July 16, 2020. On July 15, 2020, the Center sent an email communication to the Parties in Portuguese and English regarding the language of the proceeding. The Complainant confirmed that the Complaint was being filed in English.

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 Respondents of the Complaint in both English and Portuguese, and the proceedings commenced on July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. On August 4, 2020, the Center received an email communication from a third party claiming identity theft. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 9, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 18, 2020. 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 is a leader in the retail business.

The Complainant is the owner of several trademark registrations for CARREFOUR, amongst which (Annexes 4 and 5 to the Complaint):

- International Trademark Registration No. 351147, in classes 1 to 34, registered on October 2, 1968 and successively renewed; and

- International Trademark Registration No. 353849, in classes 35 to 42, registered on February 29, 1969 and successively renewed.

The disputed domain names were registered on and are presently used in connection with:

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a worldwide leader in retail and a pioneer in the concept of hypermarkets, presently employing more than 384,000 people and operating over 12,000 stores in more than 30 countries.

Furthermore, the Complainant asserts that its CARREFOUR trademark enjoys a worldwide reputation, as past UDRP panels have already considered it to be well known.

The Complainant sustains that the disputed domain names are under common control and requests that they be dealt with at a single proceeding given that: (i) the disputed domain names were registered within a few days, sharing (ii) the same Registrar and (iii) partially the same domain name servers, as well as (iv) a similar naming pattern.

The disputed domain names, according to the Complainant, reproduce entirely the Complainant’s CARREFOUR trademark with the addition of generic terms, what is not sufficient to avoid a finding of confusing similarity under the Policy.

Regarding the absence of the Respondents’ rights or legitimate interests, the Complainant argues that:

i. the Respondents have no prior rights or legitimate interests in the CARREFOUR trademark;

ii. the Respondents are not commonly known by the disputed domain names;

iii. the Respondents were not authorized by the Complainant to use or register its trademarks as domain names; and

iv. the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services given that some of the disputed domain names are being passively held and some are being used in connection with webpages that are restricted in view of potential risk in data theft (Annex 13 to the Complaint).

Furthermore, the Complainant submits that its trademark is so widely well known that it is inconceivable that the Respondents could have ignored the Complainant and its trademark rights. Quite to the contrary, the Complainant sustains that in view of the importance of its trademark the Respondents have registered the disputed domain names seeking to unfairly capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of their websites, making Internet users believe that the websites are associated, endorsed or recommended by the Complainant, which is not true.

As to the use of the disputed domain names in bad faith, considering that the Respondents are passively holding part of the disputed domain names and two of the disputed domain names are being used in connection with webpages that are restricted in view of potential risk in data theft such use cannot be considered a bona fide offering of goods or services. To make matters worse, by registering and holding the disputed domain names the Respondents are preventing the Complainant from reflecting its well-known trademark in them.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and,

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.

Before turning to these questions, however, the Panel needs to address the issues of the language of the proceeding and the consolidation of multiple Respondents.

A. Language of Proceedings

The language of the registration agreement for the disputed domain names <carrefourparavoce.com>, <carrefoursempreonline.com>, <carrefoursiteonlinee.com>, <carrefoursiteonlines.com>, <carrefoursites.com> and <lojaonline-carrefour.com> is Portuguese and the language of the registration agreement for <carrefoubebidas.org> is English. The Complainant confirmed that the Complaint was being filed in English.

In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Considering the circumstances of this case and the fact that the Respondents did not reply to any of the communications sent by the Center, both in English and in Portuguese, this Panel does not consider it prejudicial to the Respondents if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint had to be translated into Portuguese. Accordingly, the Panel accepts the Complainant’s request for English to be the language of this proceeding.

B. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at section 5.A. above.

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the seven disputed domain names dealt with at the same proceeding, given that the disputed domain names share a number of characteristics: a) they relate to the same trademark that belongs to the Complainant, b) they were all registered within one week, c) they were all registered with the same Registrar, d) <carrefoursites.com> and <lojaonline-carrefour.com> have in common the same registered owner but also <carrefoursites.com> shares the same name servers with <carrefoursiteonlines.com>, <carrefourbebidas.org>, <carrefoursiteonlinee.com>, and <carrefoursempreonline.com>, moreover <lojaonline-carrefour.com> shares the same name servers and registration date with <carrefourparavoce.com>, e) <carrefoursiteonlines.com> and <carrefoursiteonlinee.com> have in common the same registered owner but also <carrefoursiteonlines.com> shares the same name servers with <carrefoursites.com>, <carrefoursiteonlines.com>, <carrefourbebidas.org> and <carrefoursempreonline.com>, and the same registration date with <carrefoursiteonlines.com>, f) <lojaonline-carrefour.com> and <carrefourparavoce.com>, and <carrefoursiteonlines[.]com> and <carrefoursiteonlinee.com>, respectively share registration dates and name servers, g) the disputed domain names share the same or similar naming pattern including dictionary word(s) in Portuguese and/or English.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

C. Identical or Confusingly Similar

The Complainant has established its rights in the CARREFOUR trademark, duly registered in several jurisdictions around the world (Annexes 3, 4 and 5 to the Complaint).

The Panel finds that the disputed domain names reproduce the Complainant’s well-known trademark in its entirety. The addition of the generic terms “bebidas” (“beverages” in Portuguese), “paravoce” (“for you” in Portuguese), “sempreonline” (“always online”), “siteonlinee”, “siteonlines”, “sites” and “lojaonline”, does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, sections 1.7 and 1.8).

The first element of the Policy has therefore been established.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non exclusive list of circumstances that may indicate the Respondents’ rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondents’ use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondents under the second UDRP element.

In that sense, and according to the evidence submitted, there is no evidence that the Respondents have been commonly known by the disputed domain names, and furthermore, the Complainant indeed states that the Respondents were not authorized to use or register its trademarks as domain names.

In addition to that, the absence of any indication that the Respondents have been commonly known by the disputed domain names, or that they have acquired any registered trademarks or trade names corresponding to the disputed domain names, corroborate with the indication of the Respondents’ lack of rights or legitimate interests in the disputed domain names.

Moreover, at the time the Panel visited two of the disputed domain names they were pointing to potentially harmful webpages which were blocked due to potential phishing scams. This use clearly does not grant the Respondents’ rights or legitimate interests, nor does the passive holding of the remaining disputed domain names which appear to not be linked to an active use.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.

E. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:

(i) circumstances indicating that the Respondents have registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondents have registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondents have engaged in a pattern of such conduct; or

(iii) the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites or location or of a product or service on the Respondents’ websites or location.

Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom the inception of the UDRP, panelists 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. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

In the present case, the passive holding of the disputed domain names by the Respondents amounts to the Respondents acting in bad faith, given the use of two of the disputed domain names in connection with potentially fraudulent schemes and the fact that the Respondents have provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names – which (if such existed) it could very easily have done. Two other factors corroborate the finding of the Respondents’ bad faith conduct in this case: the Respondents lack of reply to the Complaint and the use of a false contact details with respect to at least one of the disputed domain names.

For the reasons as those stated above, the Panel finds that the disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(iv) 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 names, <carrefourbebidas.org>, <carrefourparavoce.com>, <carrefoursempreonline.com>, <carrefoursiteonlinee.com>, <carrefoursiteonlines.com>, <carrefoursites.com> and <lojaonline-carrefour.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: October 2, 2020

¹ The Respondent of the disputed domain name <<carrefoursempreonline.com> appears to have used the name and contact details of a third party when registering this domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name <carrefoursempreonline.com>, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.