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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Marie Poirier

Case No. D2021-2509

1. The Parties

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

The Respondent is Marie Poirier, France.

2. The Domain Name and Registrar

The disputed domain name <crfp8-carrefour.com> (the “Domain Name”) is registered with Register SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 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 August 12, 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2021.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on October 12, 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.

In the present case, the Registration Agreement is in English as confirmed by the Registrar and the Complaint was submitted in English so noting paragraph 11(a) of the Rules the language of the proceeding is English.

4. Factual Background

Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a multinational retail company headquartered in France.

The Complainant is the owner of several trade marks for CARREFOUR including in France where the Respondent appears to be based. The Complainant’s CARREFOUR trade marks include the following:

- International trade mark registration No. 351147 for CARREFOUR, registered on October 2, 1968.

The Complainant is also the owner of several domain names reflecting its CARREFOUR trade mark, including <carrefour.com>, registered on October 25, 1995.

The Domain Name was registered on October 15, 2020, and the Domain Name resolved to an error page before being suspended by the Registrar.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the CARREFOUR trade mark in which the Complainant has rights, as the Domain Name incorporates the entire CARREFOUR trade mark with the mere addition of the term “crfp8” and a hyphen “-”, and that such addition does not prevent the confusing similarity between the Domain Name and the Complainant’s trade mark. The Complainant also contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the Domain Name being connected to the Complainant’s CARREFOUR trade mark.

The Complainant asserts that the Respondent has no rights in “carrefour” or “crfp8” and that the Respondent is not commonly known by the Domain Name. The Complainant contends that the Respondent is not authorised by the Complainant to use its CARREFOUR trade mark. Furthermore, the Complainant contends that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the Domain Name in relation to a bona fide offering of goods or services as the Domain Name resolved to an error page before being suspended by the Registrar. The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant contends that the Respondent has registered and used the Domain Name with full knowledge of the Complainant’s CARREFOUR trade mark and the Complainant refers to prior UDRP panels finding that the Complainant’s CARREFOUR trade mark is well-known. The Complainant adds that the association of the name and trade mark of the Complainant CARREFOUR and the name of the Complainant’s subsidiary CRFP8, which is used for projects but not widely-known to the general public, suggests an in-depth knowledge of the Complainant and its group. The Complainant also submits that the Respondent acquired and is using the Domain Name to attract Internet users by creating a likelihood of confusion with the Complainant’s earlier registered trade mark. The Complainant further contends that the Complainant’s CARREFOUR trade mark significantly predates the registration of the Domain Name and that a quick trade mark search would have revealed to the Respondent the existence of the Complainant and its trade mark and that the Respondent’s failure to do so is an additional circumstance suggesting the Respondent’s bad faith. The Complainant concludes that the Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds registered trade mark rights in the CARREFOUR trade mark, which is reproduced in its entirety in the Domain Name.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the CARREFOUR trade mark in which the Complainant has rights.

At the second level, the Domain Name incorporates the Complainant’s CARREFOUR trade mark in its entirety with the addition of the term “crfp8” and a hyphen “-”. The Panel finds that the Complainant’s CARREFOUR trade mark is immediately recognizable as part of the Domain Name and that the addition of the term “crfp8” and a hyphen “-” does not prevent the finding of confusing similarity arising from the incorporation of the Complainant’s exact CARREFOUR trade mark in the Domain Name.

Then there is the addition of the gTLD “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.

Thus, the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name.

The Complainant has stated that the Respondent has no rights in the Domain Name and that it has not licensed or otherwise authorised the Respondent to make any use of its CARREFOUR trade mark. There is no indication that the Respondent is commonly known by the Domain Name.

The absence of use of the Domain Name and the absence of response from the Respondent do not give any indication that the Domain Name could be considered as being used in connection with a bona fide offering of goods or services or that the Respondent has made any preparations to use the Domain Name in that manner. In light of the overall circumstances of this case, the passive retention of the Domain Name cannot be considered to be a legitimate noncommercial or fair use of the Domain Name.

Furthermore, the nature of the Domain Name, incorporating the Complainant’s well-known mark and an additional term related to a company that is part of the Complainant’s group of companies, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

“(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name reproduces the exact CARREFOUR trade mark of the Complainant and this cannot be a coincidence. The Complainant has provided ample evidence of the substantial renown of the CARREFOUR trade mark, so the fact that the Respondent decided to register the Domain Name reproducing this term strongly suggests that the Respondent had the Complainant’s CARREFOUR trade mark in mind and targeted it specifically.

This is even more likely given (i) the fact that the Respondent appears to be based in France where the Complainant is headquartered and where its renown is probably higher than anywhere else, (ii) the fact that the Domain Name was registered relatively recently and many years after the registration of the Complainant’s CARREFOUR trade mark, and (iii) the fact that the term added to the Complainant’s CARREFOUR trade mark is according to the Complainant a company which is part of the Complainant’s group of companies.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is used in bad faith.

The passive use of the Domain Name does not prevent a finding of the Respondent’s bad faith given the overall circumstances here, especially noting the significant renown of the Complainant’s CARREFOUR trade mark, especially in the country where the Respondent appears to be based. Indeed, given the fame of the Complainant's CARREFOUR trade mark, it is difficult to conceive that there could be any actual or contemplated good faith use of the Domain Name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is used in bad faith.

Thus, the Panel finds that the Domain Name is being used in bad faith.

Accordingly, the Complainant has met its burden of showing that the Domain Name was registered and is being used in bad faith.

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 Name <crfp8-carrefour.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: October 26, 2021

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