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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Georgy Simonov

Case No. D2021-2914

1. The Parties

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

The Respondent is Georgy Simonov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <mycarrefour.net> (the “Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 7, 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 September 7, 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 September 8, 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 September 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on October 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 Carrefour S.A, a French company that operates hypermarket retail stores since 1968. Today the Complainant operates more than 12,000 Carrefour retail stores in 30 countries. The Complainant also offers travel, banking, insurance and ticketing services under the trademark CARREFOUR.

The Complainant is the owner of the CARREFOUR trademarks, including:

- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods and services 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, both within generic and national Top-Level Domains.

The Complainant is the owner of <carrefour.com>, which resolves to its official website “www.carrefour.com” that has been registered since 1995.

According to the information provided by the Registrar and in the WhoIs database the Disputed Domain Name was registered on April 29, 2021.

At the time of filing and of this Decision, the Disputed Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions may be summarized as follows:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant argues that the Disputed Domain Name is confusingly similar to its CARREFOUR trademark. The Disputed Domain Name incorporates the CARREFOUR trademark in its entirety. The addition of the word “my” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. Also, the generic Top-Level Domain (“gTLD”) “.net” does not have any impact on the overall impression of the Disputed Domain Name and therefore is irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Also, the Complainant argues that there is no evidence that the Respondent (as individual, business or organization) has been commonly known by the Disputed Domain Name. The Respondent has no connection or affiliation with the Complainant. The Complainant has not licensed or consented to the Respondent’s use of the CARREFOUR trademark.

The Complainant submits that the Respondent has not, before the original filling of the Complaint, use or made preparations to use the Disputed Domain Name in relation to a bona fide offering of goods or services. On the contrary, the Disputed Domain Name does not resolve to an active website.

Also, the Complainant submits that the burden of production shifts to the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant argues that their CARREFOUR trademark is well known.

The Complainant established 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 trademark.

The Respondent registered the Disputed Domain Name long after the Complainant registered the CARREFOUR trademarks and their own domain name.

Also, the Disputed Domain Name does not reflect any website and is not in use. The lack of use of the Disputed Domain Name is also prove by itself of a bad faith use by the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant established that it is the owner of registered CARREFOUR trademarks. The Disputed Domain Name includes the Complainant’s CARREFOUR trademark in its entirety, with the addition of the word “my” and the gTLD “.net”. The addition of the word “my” does not prevent a finding of confusing similarity, as the Complainant’s CARREFOUR trademark is clearly recognizable in the Disputed Domain Name.

Other panelists have considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s trademark. See similarly for example Carrefour v. Contact Privacy Inc. Customer 0152812191 / Milen Radumilo, Milen Radumilo, WIPO Case No. D2019-0670 in which the Panel said: “The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for CARREFOUR. Further, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. The slight misspelling does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.”

Additionally, other Panels have established that the addition of the term “my” to a trademark in a disputed domain name does not prevent a finding of confusing similarity. For example, in the Yamaha Motor Corporation v. Diana Buckner, WIPO Case No. D2020-0901, the panel considered that the addition of the “dictionary word ‘my’, which is not distinguishing” to the disputed domain, did not prevent a finding of confusing similarity under the first UDRP element.

Also, this Panel considers that gTLDs are generally disregarded when evaluating the identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark. In the current case, the inclusion of the gTLD “.net” does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s CARREFOUR trademark.

For the reasons above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence, demonstrating rights or legitimate interests in the disputed domain name. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

In the present case, the Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant also argued that it has not authorized or given any license to the Respondent in order to register, use or include the Complainant’s trademarks in a domain name. Furthermore, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name or has a CARREFOUR trademark.

The Complainant stated that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks.

In these proceedings the Respondent is in default. Therefore, the Respondent did not present any evidence, which suggests that it is making a legitimate noncommercial or fair use of the Disputed Domain Name or commonly known by the Disputed Domain Name or the name “mycarrefour”.

At the time of this Decision, the Disputed Domain Name resolves to an inactive website. The lack of use of the confusingly similar Disputed Domain Name, does not prove by itself that the Respondent has been using or made preparations to use the Disputed Domain Name in relation to a bona fide offering of goods or services.

Furthermore, the Panel finds that the nature of the Disputed Domain Name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In conclusion, the Panel finds that the Disputed Domain Name does not reflect a website that could be consider a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.

For all the above-mentioned reasons and based on the available records and evidences, the Panel finds that the Complainant has fulfilled the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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:

The Complainant’s trademarks are distinctive and have been registered before the registration of the Disputed Domain Name. The Complainant’s CARREFOUR trademark has been recognized as well-known in prior decisions, for example see Carrefour v. rabie nolife, WIPO Case No. D2019-0673 where the panel finds the following: “The disputed domain name consists of Complainant’s well-known trademarks CARREFOUR and CARREFOUR PASS, and the Spanish word “financieros” which in the Spanish language indicates one of the businesses in which Complainant is engaged (financial), with hyphens separating the words. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known trademarks.” In the present case, this Panel also finds that the Respondent must have known about the relevance of the trademark CARREFOUR and therefore had the Complainant in mind to when it registered the Disputed Domain Name with the incorporation of the trademark. For that reason, in this case the Panel finds that the Disputed Domain Name has been registered in bad faith.

In the present case the Disputed Domain Name does not resolve to an active website. This Panel finds that the fact the Respondent is holding a not active domain name which includes a well-known trademark is prove of its use in bad faith. As noted in Section 4 of this Panel’s decision, the Disputed Domain Name is not currently linked to an active website. It is nevertheless well established that having a passive holding of the Disputed Domain Name does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3, which notes that the “non-use of a domain name” does not prevent a finding of bad faith.

Therefore, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith for purposes of 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 <mycarrefour.net> be transferred to the Complainant.

Ada L. Redondo Aguilera
Sole Panelist
Date: November 8, 2021

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