WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Jurgen Neeme

Case No. DWS2020-0002

1. The Parties

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

The Respondent is Jurgen Neeme, Estonia.

2. The Domain Name and Registrar

The disputed domain name <carrefour.ws> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 5, 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 is an international retailer as well as a provider of travel, banking, insurance and ticketing services. In 2018, the Complainant achieved revenues of EUR 76 billion. The Complainant is listed on the Paris Stock Exchange and operates more than 12,000 stores in more than 30 countries worldwide, employing more than 384,000.

The Complainant owns trademark registrations around the world for the mark CARREFOUR. A representative list is set out below:

International Trademark Registration No. 351147 for CARREFOUR registered on October 2, 1968; International Trademark Registration No. 353849 for CARREFOUR registered on February 28, 1969.

The Complainant also owns several domain name registrations, including <carrefour.com> registered since 1995.

The disputed domain name was registered on January 11, 2020, and it redirects to various websites, including a click-through site. According to the evidence submitted with the Complaint, the disputed domain name was offered for sale for USD 4,930.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s registered trademark. The disputed domain name <carrefour.ws> replicates the Complainant’s registered trademark in its entirety. The addition of the country code Top-Level Domain (“ccTLD”) “.ws” does not serve to distinguish the disputed domain name from the registered CARREFOUR trademark.

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the Carrefour name and has not been authorized or licensed to use the Complainant’s registered trademark. The Respondent has not used the disputed domain name in association with a bona fide offering of goods and/or services. The disputed domain name redirected to a website which features links to third party websites and eventually redirected to the Complainant’s website itself. This conduct is evidence that the Respondent was fully aware of the Complainant’s trademark rights in the CARREFOUR mark. The Respondent is offering the disputed domain name for sale in an amount that is in excess of the Respondent’s expenses for registration.

The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent was aware of the Complainant’s rights in the CARREFOUR trademark when he registered the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademark and those trademark rights predate the registration of the disputed domain name by many years. The Respondent has therefore attempted to trade on the goodwill and reputation established by the Complainant. The Respondent is offering the disputed domain name for sale in the amount of USD 4,930, which is in excess of the cost of registration of the disputed domain name. As a pattern of conduct, the Respondent has registered a large number of domain names and many are identical or similar to the trademarks of third parties. The Respondent has been the subject of other domain name disputes and a number of UDRP panels have ordered the transfer of those disputed domain names. These factors together constitute evidence of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the trademark CARREFOUR by virtue of the registrations listed in paragraph 4 of this Decision.

The Panel finds that the disputed domain name <carrefour.ws> is identical to the Complainant’s trademark as the disputed domain name incorporates the Complainant’s CARREFOUR trademark in its entirety. The addition of the ccTLD “.ws” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:

“While the overall burden of proof in UDRP proceedings is on the complainant, 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”.

Based on the arguments and evidence filed in this proceeding, the Panel finds that the Complainant has made out a primafacie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant clearly owns rights in the well-known CARREFOUR trademark as noted in section 4 of this Decision. The Respondent is not commonly known by the CARREFOUR trademark and was not authorized or licensed to use the Complainant’s trademark. The evidence filed in this proceeding, which was not contested by the Respondent, supports the inference that the Respondent was actually aware of the Complainant’s trademark. According to the Complainant, the Respondent has directed the disputed domain name to a website which features links to other sites and eventually these redirections lead to the Complainant’s website itself. Shortly after registration, the Respondent began offering to sell the disputed domain name in excess of expenses for purposes of monetary gain.

In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.

Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The evidence filed in this proceeding supports the inference that the Respondent must have registered the disputed domain name with the Complainant in mind. The CARREFOUR trademark has been widely used in France and internationally, to the point where it has achieved widespread recognition. The disputed domain name <carrefour.ws> contains the Complainant’s registered trademark in its entirety. According to the Complainant, the Respondent has designed his associated website to actually lead users back to the Complainant’s own website at “www.carrefour.com”. By holding the disputed domain name, and offering if for sale for an amount in excess of associated expenses, the Respondent has interfered with the Complainant’s ability to use and protect its well-known trademark. The Respondent’s conduct in this matter is consistent with the conduct shown in other UDRP domain name disputes in which he has been named as a party. All these factors support a finding of registration and use in bad faith.

The Complainant has therefore satisfied the requirements under 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 <carrefour.ws> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: May 14, 2020