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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2 / Daniel Husgg, H.D., Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2 / Oui Jesais, Remytel, Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2 / Ben Luis

Case No. D2021-3325

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2, Iceland / Daniel Husgg, H.D. France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2, Iceland / Oui Jesais, Remytel, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Kalkofnsvegur 2, Iceland / Ben Luis, France.

2. The Domain Names and Registrar

The disputed domain name <carrefour-cartespass.com>, is registered with NameCheap, Inc. (the “Registrar”).
The disputed domain name <carrefour-pass-carte.com>, is registered with NameCheap, Inc. (the “Registrar”).
The disputed domain name <carrefourpasscarte.com>, is registered with NameCheap, Inc. (the “Registrar”).
The disputed domain name <carrefourpassclient.com>, is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 7, 2021, 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. The Center sent an email communication to the Complainant on October 12, 2021 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 October 15, 2021.

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 October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2021.

The Center appointed Alexandre Nappey as the sole panelist in this matter on December 10, 2021. 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 the French company Carrefour SA, a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968.

The Complainant operates more than 12.000 stores in more than 30 countries worldwide.

With more than 384.000 employees worldwide and 1.3 million daily unique visitors in its stores, the Complainant is without a doubt a major and well-known worldwide leader in retail.

The Complainant additionally offers travel, banking, insurance, or ticketing services.

The Complainant owns numerous CARREFOUR trademark registrations around the world, among which:

- International trademark CARREFOUR, No. 351147, registered on October 2, 1968, duly renewed, covering services in classes 01 and 34;
- International trademark CARREFOUR, No. 353849, registered on February 28, 1969, duly renewed, covering services in classes 35 and 42;
- Icelandic trademark CARREFOUR, No. V0076027, registered on April 16, 2009, duly renewed, covering services in class 35.

The four disputed domain names were registered by the Respondent:

- <carrefour-cartespass.com> on July 24, 2021;
- <carrefour-pass-carte.com> on July 14, 2021;
- <carrefourpassclient.com> on August 2, 2021;
- <carrefourpasscarte.com> on August 4, 2021.

At the time of the drafting of the decision:

- <carrefour-cartespass.com> is not active;
- <carrefour-pass-carte.com> resolves to a “Whois verification is pending” page from the registrar Namecheap;
- <carrefourpassclient.com> is not active;
- <carrefourpasscarte.com> resolves to a web page that warns Internet users that they may be tricked into doing something dangerous like installing software or revealing [their] personal information as passwords, credit cards number.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are similar to its earlier trademarks CARREFOUR, to the point of creating confusion.

The Complainant submits that the disputed domain names are identical or quasi-identical to the earlier well-known trademarks CARREFOUR.

Indeed, the disputed domain names reproduce the earlier trademark CARREFOUR in its entirety, together with the generic terms “pass”, “carte”, and “client”.

These are French generic terms related to banking and finance, in which the Complainant is active.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

- The Complainant performed searches and found no CARREFOUR trademark owned by the Respondent.
The Complainant asserts that the Respondent has acquired no trademark in the name CARREFOUR which could have granted the Respondent rights in the disputed domain names.
Furthermore, the Complainant has found no evidence whatsoever that the Respondent is known by the disputed domain names.
- The Respondent reproduces the Complainant’s earlier registered trademarks CARREFOUR in the disputed domain names without any license or authorization from the Complainant, which is strong evidence of the lack of legitimate interests.
- The Complainant submits that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain names in relation to a bona fide offering of goods or services.
On the contrary, the disputed domain names are not put to any use.
- Since the adoption and extensive use of the trademark CARREFOUR by the Complainant predates the first entry of <carrefour-cartespass.com>, <carrefour-pass-carte.com>, <carrefourpassclient.com>, and <carrefourpasscarte.com> as domain names, the burden is on the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or had in the disputed domain names.

None of the circumstances which set out how a respondent can prove rights or legitimate interests in the disputed domain names are present in the case at issue.

The Complainant claims that the disputed domain names were registered and are being used in bad faith.

Firstly, the Complainant alleges that the Complainant and its trademarks were so widely well-known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights on the term CARREFOUR. According to the Complainant, it is clear that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain names.

The Respondent’s choice of domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks.

Secondly, the Complainant alleges that is very likely that the Respondent chose the disputed domain names because of their similarity or identity with a trademark in which the Complainant has rights and legitimate interests.

This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s sites.

The Complainant thus states that the Respondent acquired and is using the disputed domain names to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier marks.

Thirdly, the Complainant’s CARREFOUR trademark registrations significantly predate the registration dates of the disputed domain names.

In this regard, previous panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain names, proves bad faith registration.

Fourthly, the current use of the disputed domain names may not be considered a good faith use.

By maintaining the disputed domain names, the Respondent is preventing the Complainant from reflecting its trademark in the corresponding domain name.

In light of all the elements above, the Complainant contends that the disputed domain names were registered and are being used in bad faith by the Respondent.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(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 Respondent has 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.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules, and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following:

A. Consolidation

The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4.11.2 Complaint consolidated against multiple respondents states that “Where 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”.

The Panel is satisfied that the four disputed domain names are subject to common control.

Indeed:
- the two domain names <carrefour-cartespass.com> and <carrefour-pass-carte.com> have the same Registrant,
- the four domain names have the same registrar Namecheap.com,
- the four domain names have the same construction: carrefour trademark + pass + carte/client,
- the four domain names have the number “95” in the email address which is the zip code of the Registrant of the two domain names <carrefour-cartespass.com> and <carrefour-pass-carte.com>,
- the four domain names have been registered by Registrants based in France.

The Panel considers that, in the circumstances, consolidation is fair and equitable to all Parties, and procedurally efficient. Unless specified otherwise, the Respondents will be referred to as “the Respondent” hereinafter.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in CARREFOUR which predate the registration of the four disputed domain names.

The Panel finds that the disputed domain names are confusingly similar to the registered CARREFOUR trademarks owned by the Complainant.

Indeed, the disputed domain names incorporate the entirety of the Complainant’s CARREFOUR trademark with the mere addition of a hyphen (for two of them), the word “pass” for all four, the word “carte” (“card” in English) for three of them and the word “client (“customer” in English) for one of them.

The dominant part of each disputed domain name is the Complainant’s trademark CARREFOUR, and the addition of the descriptive words “pass” and “carte/client” does not avoid a finding of confusing similarity. See, in similar circumstances: Carrefour v. Contact Privacy Inc. Customer 0151662948 / Lucas Montanaro, WIPO Case No. D2018-2462

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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 Respondent has been commonly known by the disputed domain names, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.

Considering the difficulty to demonstrate a negative, UDRP panels consistently find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, the burden of production on this element shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name.

See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465. Here, the Complainant has stated that it has not authorized, licensed, or consented to the Respondent any use of its CARREFOUR trademark.

It results from these circumstances that the Respondent does not own any right in the trademarks CARREFOUR or is commonly known by the disputed domain names.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.

Since CARREFOUR is a well known trademark and there is no evidenced relationship between the Parties, it may be inferred that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names.

See, for example, Carrefour v. Milen Radumilo / Privacy Inc. Customer 0151725578, WIPO Case No. D2018-2203 and Carrefour v. Contact Privacy Inc. Customer 0151662948 / Lucas Montanaro, WIPO Case No. D2018-2462

In addition, it appears that the Respondent acquired not only one but four disputed domain names incorporating the Complainant’s trademarks.

Thus, the Panel cannot conceive any use that the Respondent could make of the disputed domain names that would not interfere with the Complainant’s trademark rights.

Accordingly, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.

In these circumstances the Panel holds that the four disputed domain names were registered and are being used in bad faith.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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, <carrefour-cartespass.com>, <carrefour-pass-carte.com>, <carrefourpasscarte.com> and <carrefourpassclient.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: December 24, 2021

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