WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Whois Privacy Protection Foundation / ken Ducul

Case No. D2021-4337

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, the Netherlands / ken Ducul, France.

2. The Domain Names and Registrar

The disputed domain names <carrefour-banque-client.com>, and <carrefour-pass-banque.com> are 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 December 22, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 23, 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 December 29, 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 December 30, 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 January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.

The Center appointed Elise Dufour as the sole panelist in this matter on February 22, 2022. 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 French company Carrefour. Carrefour is one of the 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, with more than 321,000 employees worldwide and 1.3 million daily unique visitors in its stores.

The Complainant also offers travel, banking, insurance or ticketing services.

The Complainant owns several trademark registrations in many countries including inter alia the following 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;
- French Trademark BANQUE CARREFOUR No. 3585968, registered on July 2, 2008, duly renewed, and designating services in International Class 36;
- International Trademark CARREFOUR PASS No. 719166, registered on August 18, 1999, duly renewed, and designating services in International Class 36.

The Complainant is also the owner of numerous domain names, including for example the domain name <carrefour.com> registered in 1995.

The disputed domain names are <carrefour-banque-client.com>, and <carrefour-pass-banque.com>.

They were both registered on August 21, 2022 and both resolve to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that (i) the disputed domain names are highly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain names; and (iii) the Respondent registered and is using the disputed domain names in bad faith. The Complainant requests the transfer of the disputed domain names.

(i) The Complainant claims that the disputed domain names are highly confusingly similar to its trademarks, since the disputed domain names reproduce its CARREFOUR trademarks together with the generic terms “banque”, “client” or “pass”. Indeed, the Complainant is active in retail as well as in the banking sector. Consequently, the disputed domain names are not only similar to the earlier CARREFOUR trademarks, but are also similar to the BANQUE CARREFOUR and CARREFOUR PASS trademarks held by the Complainant.

(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names: the Complainant has not licensed or otherwise permitted the Respondent to use its trademark CARREFOUR. The Respondent is not commonly known by the disputed domain names. Finally, the Respondent has made no use or preparation of use of the disputed domain names in relation to a bona fide offering of goods or services.

(iii) Due to the strong reputation and well-known character of the trademark CARREFOUR, the Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademark at the time the disputed domain names were registered. Moreover, the disputed domain names refer to banking activities and are also very similar to the Complainant’s trademarks BANQUE CARREFOUR and CARREFOUR PASS.

The Complainant also claims that the Respondent’s use of the disputed domain names is made in bad faith, as the disputed domain names are not actively used.

B. Respondent

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

6. Discussion and Findings

In the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain names, the Complainant must prove each of the following, namely that:

i) the disputed domain names are 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 names; and

iii) the disputed domain names were registered and are being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademarks CARREFOUR, BANQUE CARREFOUR and CARREFOUR PASS.

The disputed domain names wholly incorporate the Complainant’s trademark CARREFOUR and reproduces the Complainant’s trademarks BANQUE CARREFOUR and CARREFOUR PASS correspondingly, which is sufficient to determine that the disputed domain names are identical or confusingly similar to the Complainant’s trademark.

Furthermore, the Panel finds that the addition of the words “banque”, “client” or “pass” do not prevent a finding of confusing similarity under the first element.

Indeed, as long established, 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 generic Top-Level domain “.com” in the disputed domain names does not prevent a finding of confusing similarity.

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

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain names.

On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names: The Respondent is not commonly known under the disputed domain names, nor owns any registered rights on the disputed domain names or has been authorized by the Complainant to use the prior trademarks in any way.

The Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names or has rights or legitimate interests in any other way in the disputed domain names. On the contrary, the disputed domain names resolve both to an inactive website.

Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not proved otherwise.

Given these circumstances, the Panel finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

With regards to the registration of the disputed domain names, the Panel finds that at the time of the registration, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks and activities. Indeed, given the fact that the Complainant’s CARREFOUR trademarks are well-known worldwide and distinctive, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks.

This finding is emphasized by the fact that the disputed domain names incorporate the Complainant’s trademark CARREFOUR in its entirety to which are added the words “banque”, “service” and “pass” which directly refers to the Complainant’s business. For this Panel, it is a clear indication that the Respondent necessarily had the Complainant’s trademark in mind when he registered the disputed domain names.

Therefore, the Panel is convinced that the disputed domain names were registered in bad faith by the Respondent.

As for use of the disputed domain names in bad faith, it has been long established, that passive holding of the disputed domain name may be considered bad faith use in some cases.

In the present case, each disputed domain name directs to an inactive page.

Factors that are relevant in applying the passive holding doctrine include: (i) the reputation of the Complainant’s mark, (ii) the Respondent’s default (iii) the Respondent’s concealment of its identity (or use of false contact information), and (iv) the implausibility of any bona fide use that might be made of the domain name (see section 3.3 of the WIPO Overview 3.0).

All of these factors are met in this case.

Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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, <carrefour-banque-client.com>, and <carrefour-pass-banque.com>, be transferred to the Complainant.

Elise Dufour
Sole Panelist
Date: March 8, 2022