WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Vladimir Volf

Case No. D2020-1665

1. The Parties

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

The Respondent is Vladimir Volf, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <carrefour.site> is registered with Registrar of Domain Names REG.RU, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 June 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a communication to the Parties in English and Russian regarding the language of the proceeding, and invited the Complainant to respond by July 3, 2020, and the Respondent to comment on the Complainant’s submission by July 5, 2020. The Complainant filed an amended Complaint on June 30, 2020, by which it requested the language of the proceeding to be English. The Respondent did not submit comments on the Complainant’s language request.

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 July 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 2, 2020. 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 operates more than 12,000 retail stores in more than 30 countries. It has more than 384,000 employees worldwide and 1.3 million daily unique visitors, and its turnover in 2018 was EUR 76 billion.

The Complainant owns the following trademark registrations for the sign CARREFOUR (the “CARREFOUR trademark”):

- the International trademark CARREFOUR with registration No. 351147, registered on October 2, 1968 for goods in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34; and

- the International trademark CARREFOUR with registration No. 353849, registered on February 28, 1969 for services in International Classes 35, 36, 37, 38, 39, 40, 41 and 42.

The Complainant’s official website is located at the domain name <carrefour.com>, registered on October 25, 1995.

The disputed domain name was registered on April 18, 2020, and at the time of filing the Complaint, it resolved to a webpage with the title “Le nom de domaine Carrefour.site est à vendre” (in English -“The domain name Carrefour.site is for sale”), and containing the text “Achat immediat pour $200 ou faites un offre” (in English “Direct purchase for USD200 or make an offer”).

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to its CARREFOUR trademark, as it incorporates the trademark in its entirety.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not commonly known by it and has no trademark rights in the sign CARREFOUR, but imitates the CARREFOUR trademark in the disputed domain name without authorization. According to the Complainant, the Respondent has not used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services, as it resolves to a webpage offering the disputed domain name for sale.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The CARREFOUR trademark was well-known by the time of the registration of the disputed domain name, and the Complainant’s Facebook page is “liked” by more than 11 million Internet users. According to the Complainant, it therefore inconceivable that the Respondent ignored the CARREFOUR trademark. Rather, the Respondent’s choice of domain name was influenced by the fame of the Complainant and of the CARREFOUR trademark, and the Respondent acquired and is using the disputed domain name to attract Internet users by creating a likelihood of confusion with this trademark, and attempts to benefit from the worldwide fame of the Complainant’s trademark for commercial gain by offering the disputed domain name for sale.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Language of the proceeding

According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant requests that the language of the proceedings be English. It submits that it is not able to conduct this proceeding in Russian without significant additional expense and delay due to the need for translation of the Complaint, and states that the Respondent understands English because the disputed domain name is offered for sale on the platform Dan.com, which is not available in Russian.

The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainant’s request that the proceedings be held in English.

The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent however did not submit a formal Response in this proceeding addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the CARREFOUR trademark, so the Panel accepts that the Complainant has rights in this trademark for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level-Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.site” gTLD section of the disputed domain name.

The relevant part of the disputed domain name for purposes of the first element is therefore the element “carrefour”, which is identical to the CARREFOUR trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the CARREFOUR trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by it and is not using it in connection with a bona fide offering of goods and services, but is offering it for sale. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the Complainant’s allegations and the evidence in the case file, and has not put forward any reasons why it has registered the disputed domain name or why it should be regarded as having rights or legitimate interests in it.

The disputed domain name is identical to the CARREFOUR trademark, which has accumulated extensive goodwill in the course of the Complainant’s activities for more than fifty years in many countries. The evidence in the case file shows that the disputed domain name was associated to a website that contained an offer for the sale of the disputed domain name.

In view of the above, and in the lack of any contrary arguments or evidence, the Panel accepts that the evidence in the case file supports the prima facie case made by the Complainant, and finds as more likely than not that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name is identical to the CARREFOUR trademark, and was linked to a website that offered the disputed domain name for sale for USD200, which is an amount in excess of the normal out of pocket expenses for the registration of a domain name. The Respondent has not submitted a Response and has not brought forward any arguments why its actions should be considered as having been carried out in good faith.

In view of the above, the Panel accepts that the Respondent is more likely than not to have registered the disputed domain name with knowledge of the Complainant and targeting its CARREFOUR trademark primarily for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

Therefore, the Panel finds that the disputed domain name has been registered and 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 disputed domain name <carrefour.site> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: September 21, 2020