WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Matias Barro Mares

Case No. D2020-3088

1. The Parties

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

The Respondent is Matias Barro Mares, Argentina.

2. The Domain Name and Registrar

The disputed domain name <descuentos-carrefour.com> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 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 November 30, 2020.

The Complaint has been submitted in English. According to the information provided by the Registrar on November 23, 2020 in its verification response, the language of the Registration Agreement for the disputed domain name is Spanish. On November 30, 2020, the Center sent an email communication to the parties, in English and Spanish, regarding the language of the proceeding. On November 30, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on January 25, 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 registered owner of trademarks in several jurisdictions consisting of or containing the term “Carrefour”, e.g. International trademark registration No. 351147 CARREFOUR (word), registered on October 2, 1968 for goods in classes from 1 to 34. This trademark has been duly renewed and is in force. International trademark registration No. 353849 CARREFOUR (word), registered on February 28, 1969 for services in classes from 35 to 42. This trademark has been duly renewed and is in force.

The disputed domain name was registered on October 8, 2020 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that it is a worldwide leader in retail and a pioneer of the concept of hypermarkets back in 1968. The Complainant underlines that it is listed on the index of the Paris Stock Exchange (CAC 40) with a turnaround of EUR 76 billion in 2018 and operates more than 12,000 stores in more than 30 countries worldwide. The Complainant contends to be a major and well-known worldwide leader in retail with more than 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. It additionally offers travel, banking, insurance, or ticketing services.

The Complainant uses the website “www.carrefour.com” – created on October 25, 1995 – in connection with its activity.

The Complainant contends that its trademarks CARREFOUR enjoy a worldwide reputation.

The Complainant further contends that the disputed domain name is identical or highly similar to the Complainant’s earlier trademarks, since it reproduces the earlier trademark CARREFOUR, together with the generic term “descuentos” – the Spanish term for “discounts”. This term only reinforces that risk of confusion and Internet users will likely believe that the disputed domain name is operated, affiliated or endorsed by the Complainant. The use of lower-case letter format and the hyphen on the one hand and the addition of the generic Top-Level Domain (“gTLD”) “.com” on the other hand, are not significant in determining whether the disputed domain name is identical or confusingly similar to the trademarks of the Complainant.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has acquired no trademark in the name “Carrefour”, which could have granted the Respondent rights in the disputed domain name. Furthermore, there is no evidence that the Respondent has been commonly known by the disputed domain name. In addition, the Complainant submits that it has not authorized the use of the term “carrefour” in the disputed domain name in any manner or form.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant submits 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 mark CARREFOUR. It is clear that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. The Respondent’s choice of the disputed domain name cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. The Complainant submits that it is very likely that the Respondent chose the disputed domain name because of its similarity to a trademark in which the Complainant has rights and legitimate interest.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see e.g. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.

The Center notified both parties of the potential language issue, inviting the Complainant to 1) either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; 2) either translate the complaint in Spanish; or 3) submit a supported request for English to be the language of the administrative proceedings (e.g., by reference to pre-Complaint correspondence between the parties, parties’ identity and any other evidence of familiarity with the requested language) and similarly providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.

On November 30, 2020, the Complainant submitted a request that English be the language of the proceedings affirming the following: being a French entity, the Complainant is not able to communicate in Spanish and is not in a position to conduct this proceeding without a great deal of additional expense and delay due to the need for translation of the Complaint; the Respondent is in a position to understand English and undergo the proceeding in the English language, since according to the Respondent’s LinkedIn profile, he is a “Full Stack Engineer – Providing Digital Transformation” (the wording is provided in English language). In addition, the Respondent’s LinkedIn profile states that he has “full professional proficiency” in English. The Respondent did not comment on the language of the proceeding.

In the light of the above, the Center provided the Respondent in both English and Spanish with the Notification of Complaint and Commencement of Administrative Proceeding informing the parties that it would: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Spanish; 3) appoint a Panel familiar with both languages, if available.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see e.g. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).

In the case at issue, this Panel considers that conducting the proceedings in English would not be disadvantageous to the Respondent, since it results from the Complainant’s undisputed allegations that the Respondent has demonstrated an ability to understand and communicate with its professional contacts in English through his LinkedIn profile, (i.e. describing his Experience “Full Stack Engineer – Providing Digital Transformation” in English language and indicating “full professional proficiency” in the English language).

The Panel is therefore prepared to infer that the Respondent is able to understand and communicate in English.

Furthermore, the Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Spanish. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay.

Finally, the Panel notes that the Respondent did neither object to the Complaint being in English nor to the request made that the proceedings be conducted in English. The Respondent was given a fair opportunity to present his case, to raise objections as to the request for English to be the language of proceedings or to inform the Center on his language preference. He has however chosen not to comment on any of these issues, (e.g. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Volkswagen AG v. Song Hai Tao, WIPO Case No. D2015-0006).

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion, according to paragraph 11(a) of the Rules and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark CARREFOUR. Reference is made in particular to International trademark registration No. 351147 CARREFOUR (word), registered on October 2, 1968 for goods in classes from 1 to 34. This trademark has been duly renewed and is in force. International trademark registration No. 353849 CARREFOUR (word), registered on February 28, 1969 for services in classes from 35 to 42. This trademark has been duly renewed and is in force.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

This Panel shares this view and notes that the Complainant’s registered trademark CARREFOUR is fully included in the disputed domain name, preceded by the term “descuentos” (the Spanish term for “discounts”). Furthermore, it is the view of this Panel that the addition of the term “descuentos” in the disputed domain name and the addition of a hyphen in the disputed domain name between the terms “descuentos” and “carrefour” cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademark, since the Complainant’s trademark is clearly recognizable in the disputed domain name.

Finally, the gTLD “.com” of the disputed domain name could be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark CARREFOUR, e.g., by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered and well-known trademark CARREFOUR and that the trademark CARREFOUR is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain (e.g.,Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark CARREFOUR is widely known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed CARREFOUR mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g.,Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).

Moreover, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark CARREFOUR is widely known; (2) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (3) the implausibility of any good faith use to which the disputed domain name may be put.

Finally, the Complainant further contends in its Complaint that the Respondent has used the disputed domain name in connection with an active website depicting the famous logo of the Complainant and offering various products for sale, which could be found in the stores of the Complainant. The Complainant underlines that the Respondent is therefore placing himself in a situation where he has been disrupting the Complainant’s business by taking unfair and undue advantage of the Complainant’s worldwide reputation. On this regard, the Panel considers that the Complainant failed to produce the relevant evidence mentioned as Annex 13, which refers to another domain name.

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 <descuentos-carrefour.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: February 8, 2021