WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Privacy service provided by Withheld for Privacy ehf / Alan first, Alan Design

Case No. D2021-2671

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Alan first, Alan Design, France.

2. The Domain Name and Registrar

The disputed domain name <app-carrefour.club> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2021. On August 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2021, 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 August 23, 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 23, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.

The Center appointed Isabelle Leroux as the sole panelist in this matter on September 23, 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 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.

The Complainant owns numerous trademark rights worldwide in the CARREFOUR sign, inter alia the following prior trademarks:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International trademark CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42.

In addition, the Complainant is also the owner of numerous domain names identical to its CARREFOUR trademarks, including in particular, <carrefour.com> registered since 1995.

The disputed domain name is <app-carrefour.club>, registered on July 8, 2021 by the Respondent through a privacy proxy service located in Iceland. According to the information disclosed by the Registrar, the Respondent is located in Paris, France.

The disputed domain name used to resolve to an error page, and is inactive at the time of this decision.

5. Parties’ Contentions

A. Complainant

(i) The Complainant contends that the disputed domain name is highly similar to its earlier well-known trademark CARREFOUR that is entirely incorporated therein and that the addition of the descriptive term “app” cannot diminish the likelihood of confusion but can only reinforce that risk.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since that the Respondent is not known by such name neither does it has any trademark rights in such term.

The Complainant has never grant any license or authorization to the Respondent on the use of the CARREFOUR trademark. Furthermore, there is no indication of a bona fide offering of goods or services as the disputed domain name resolves to an error page.

(iii) The Complainant finally contends that the disputed domain name was registered in bad faith, as the Respondent cannot ignore the Complainant’s earlier rights on the well-known CARREFOUR trademark at the time of the registration.

According to the Complainant, the registration and the use of the disputed domain name are clearly intended to attract Internet users by creating a likelihood of confusion, and moreover, preventing the Complainant from reflecting its trademark in the disputed domain name. In this regard, the Complainant adds that the issue of “being used in bad faith” is not limited to positive actions, inaction being within the concept.

(iv) The Complainant therefore requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.

These elements will be examined in turn below.

A. Identical or Confusingly Similar

The Complainant has provided evidence to establish its earlier trademark rights on the sign CARREFOUR that is incorporated in its entirety in the disputed domain name. Such reproduction is typically considered sufficient to satisfy the requirements of the first element.

The addition of the descriptive term “app”, which refers to mobile applications, combined with the trademark CARREFOUR by the use of a hyphen does not avoid a finding of confusing similarity. Such addition is very likely to lead Internet users into believing that the disputed domain name is related to an application of the Complainant or otherwise associated with the Complainant’s activity.

Furthermore, the generic Top-Level Domain (“gTLD”) “.club” does not affect the similarity test between the disputed domain name and the Complainant’s earlier trademarks.

Consequently, the Panel finds that the disputed domain name to be confusingly similar to the Complainant’s earlier trademarks. The first element of the paragraph 4(a) of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Hence after the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response.

In this case, the Complainant brings forward the following elements:

- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent is not commonly known under the disputed domain name, nor does it have any trademark rights on such name;
- The Complainant has no relationship whatsoever with the Respondent.

In addition, the Complainant has provided evidence on the fact that the website associated with the disputed domain name used to redirect to an error page. According to the Complainant, the disputed domain name used to resolve to an error page, and has been inactive since the time of filing the Complaint.

Therefore, there is no indication of any use of or preparations to use the disputed domain name in relation to a bona fide offering of goods or services.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not proved otherwise. Given these circumstances, the Panel finds that the second element of the paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant’s earlier CARREFOUR trademarks have been recognized as well known by previous UDRP panels. See, in particular, Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895; Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610; Carrefour v. rabie nolife, WIPO Case No. D2019-0673; Carrefour v. Jane Casares, NA, WIPO Case No. D2018-0976; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Carrefour v. Tony Mancini, USDIET Whoisguard, Inc. WIPO Case No. D2015-0962.

Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s CARREFOUR trademarks at the time the disputed domain name was registered.

As to the bad faith use, even though the disputed domain name has been inactive, the Panel agrees with the Complainant that such use may constitute a passive holding that has been constantly regarded as an indication of bad faith use. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.4, “the use of a domain name for purposes other than to host a website may constitute bad faith”.

In addition, other factors of the present case also indicate the bad faith of the Respondent, in particular, the lack of response to the Complaint and the effort to conceal its identity by a privacy proxy service.

In this respect, previous UDRP panels have found that the “the bad faith behavior of the Respondent […] results clearly of [its] lack of response […] to the complaint, and to the inaccuracy and incoherence of [its] addresses”. See Association Robert Mazars v. François Varin, Jerome Adrien, Laurent Bernard, Nicolas Mazars, WIPO Case No. D2014-0498; TTT Moneycorp Limited. v. Diverse Communications, WIPO Case No. D2001-0725.

In the absence of any response to the Complaint, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith, so that the third and final element of the paragraph 4(a) of the Policy is met.

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 <app-carrefour.club> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Date: October 7, 2021