WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA. v. Contact Privacy Inc. Customer 12411110056, 12411024408, 12411022085, 12411041565, 12411058529 / Solere and Alzrt

Case No. D2021-3716

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 12411110056, 12411024408, 12411022085, 12411041565, 12411058529, Canada / Solere and Alzrt, France.

2. The Domain Names and Registrar

The disputed domain names <anniversairecarrefour40ansclientexclusif.com>, <carrefour-client-anniversaire-carte-pass-client-exclusif.com>, <carrefour-client-exclusif-40ans.com>, <carrefour-exclusif-anniversaire-40ans-40euros.com>, <carrefour-exclusif-40ans-anniversaire.com> are registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 10, 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 November 12, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint and consolidation arguments. In addition, the Center sent an email communication in both French and English regarding the language of the proceeding on November 11, 2021. The Complainant filed an amended Complaint on November 12, 2021 requesting English to be the language of the proceeding and the Respondent did not submit any comments.

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 in French and in English, and the proceedings commenced on November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.

The Center appointed William Lobelson as the sole panelist in this matter on December 14, 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, a French and worldwide retail group, devoted to the operation of hypermarkets.

The Complainant is the owner of numerous trademarks for or incorporating CARREFOUR, including:

- International trademark for CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, and designating goods in international classes 01 to 34;
- International trademark for CARREFOUR No. 353849, registered on February 28, 1969, duly renewed and designating services in international classes 35 to 42.
- French trademark for BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed, and designating services in international class 36;
- French trademark for CARREFOUR BANQUE & ASSURANCE No. 3585950, registered on July 2, 2008, duly renewed, and designated services in international class 36;
- International trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly renewed, and designating services in international classes 36.

The Complainant is also the owner of the domain name <carrefour.com> registered since 1995.

The disputed domain names are <anniversairecarrefour40ansclientexclusif.com>, <carrefour-client-anniversaire-carte-pass-client-exclusif.com>, <carrefour-client-exclusif-40ans.com>, <carrefour-exclusif-anniversaire-40ans-40euros.com>, <carrefour-exclusif-40ans-anniversaire.com>, registered on September 2021. All resolve to inactive webpages.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain names are confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith. The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6.1. Language of proceedings

In the absence of an agreement between the parties, the language of the registration agreement shall be the language of the proceedings. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case, as long as the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties.

The Complainant drafted the initial Complaint in English based on the assumption that the language of the Registration Agreement was English, the Registrar being based in the United States, and having no information about the Respondent, as the latter had concealed its identity and chosen to remain anonymous, using a Privacy service.

After disclosure of the details of the Respondents, it turned out that both have declared a domicile in France. It was also found that the Registration Agreement for the disputed domain names was in French.

The Complainant has claimed that a translation the Complaint into French would impose a great deal of additional expense and delay.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition.

The Panel observes that the Respondents were duly notified of the Complaint by the Center on November 17, 2021 in both English and French, whereby they were invited to file observations in the language of their choice (either English of French). The Notice sent by the Center to the Respondents, in both English and French is self-explanatory and describes in detail the procedure to be followed in case the Respondents would like to present arguments in defense.

The Respondents, even if not familiar with English language, had therefore the opportunity to communicate with the Center in French and claim that they were not able to understand the content of the Complaint. In such a case, the Center would have informed the Complainant, who would have translated its Complaint into French.

But the Respondents did not file any response or observations.

The Panel finds therefore that the Respondents have been given a fair opportunity to be heard, in the language of their choice, and have not done so.

That imposing now on the Complainant an obligation to translate its Complaint and pursue to the procedure in French would cause unjustified costs, and delay.

For the foregoing reasons, the Panel authorizes that the proceedings be held in the English language.

6.2. Consolidation of Respondents

The Panel has considered the possible consolidation of the Complaint for the disputed domain names. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “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 disputed domain names have the same structure and include the similar words, all separated with a hyphen, and the addition of various terms such as “anniversaire”, “40 ans”, “client”, “exclusif”;
- the disputed domain names were all registered on September 2021;
- the disputed domain names are registered with the same registrar;
- all the disputed domain names resolve to inactive websites.

All the above, along with the fact that the named Respondents did not submit any arguments to rebut this inference is taken into account by the Panel.

The Panel finds that on the balance of probabilities, the disputed domain names are subject to common control and that the consolidation would be fair and equitable to all the Parties. Therefore, the Panel grants the consolidation for the disputed domain names (and will refer to these Respondents as the “Respondent”).

6.3. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii)); and

(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

The Complainant is the owner of numerous CARREFOUR formative and word trademarks, including trademark registrations for CARREFOUR PASS, as well as domain names formed with CARREFOUR, all registered and used in relation with retail services.

The disputed domain names reproduce the Complainant’s trademark CARREFOUR in its entirety, and imitates the Complainant’s trademarks CARREFOUR PASS and domain name <carrefour.com>.

Are added to the Complainant’s trademark in the disputed domain names a variety of French terms such as “anniversaire”, “40 ans”, “client”, “exclusif” that are descriptive in French language, and belong to a commonly used vocabulary in the field of retail services, in particular in relation with supermarket promotion campaigns or customer loyalty programs.

The addition of those descriptive terms does not conceal the reproduction and imitation of the Complainant’s trademarks., Internet users will likely believe that all domain names are either associated with or sponsored by the Complainant, in the frame of a promotional operation dedicated to the Complainant’s 40th anniversary, or 40th anniversary of its CARREFOUR PASS customers loyalty card.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP, paragraph 4(c) include the following:

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

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, 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 name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain names.

The Complainant further contends that the Respondent is not known under the disputed domain names, does not own any proprietary rights in the names “Carrefour” and “Carrefour Pass” and does not make any bona fide use - neither commercial nor noncommercial, of the same.

The Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has substantiated the fact that its trademark CARREFOUR, which has been registered and used for years, now benefits from a high level of public’s awareness, particularly – but not only in France. Earlier UDRP decisions have acknowledged the Complainant’s trademark reputation:

Carrefour v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2019-2610;

Carrefour v. Contact Privacy Inc. Customer 0155401638 / Binya Rteam, WIPO Case No. D2019-2895: where the panel found that “CARREFOUR is a well-known trademark in France and elsewhere”.

When the identities of the Respondents were disclosed by the Registrar, it was found that that both Respondents have declared places of residence in France. Due to the longstanding and use of the Complainant’s mark in France, the Respondents could not reasonably be unaware of the Complainant’s rights when they registered the disputed domain names.

The Panel observes besides that the Respondents made the choice of associating the trademark CARREFOUR with dictionary French words, which directly refers to the Complainant and its business of supermarket retail. For this Panel it is a clear indication that they necessarily had the Complainant’s trademark in mind when they registered the disputed domain names.

The Panel infers from the above that the Respondents acted in bad faith when they registered the disputed domain names.

It is further noted by the Panel that the disputed domain names are not being actively used by the Respondents, and do not resolve to any active web page with substantive content.

It is a consensus view among UDRP panels that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

The Panel must examine all the circumstances of the case to determine whether the Respondents are acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark and no response to the Complaint having been filed. UDRP panels may draw inferences about whether a domain name is used in bad faith given the circumstances surrounding registration.

As stated in WIPO Overview 3.0, section 3.3, there is a consensus view about “passive holding”:

“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Such passive holding is to be regarded as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

See also, Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572:

“Respondent knew or should have known that the Domain Name included Complainant’s CREDIT MUTUEL well-known trademark. […] However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Name which incorporates Complainant’s trademark in its entirety indicates that the Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy.”

The Panel further finds that passive holding of the disputed domain names in this case constitutes 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 disputed domain names, <anniversairecarrefour40ansclientexclusif.com>, <carrefour-client-anniversaire-carte-pass-client-exclusif.com>, <carrefour-client-exclusif-40ans.com>, <carrefour-exclusif-anniversaire-40ans-40euros.com>, <carrefour-exclusif-40ans-anniversaire.com> be transferred to the Complainant.

William Lobelson
Sole Panelist
Date: December 16, 2021