WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carrefour SA v. Registration Private, Domains By Proxy, LLC, / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-0752

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <carrefuorsolucoes.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2020. On March 31, 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 disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2020 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 April 7, 2020.

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 April 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2020.

The Center appointed Steven Auvil as the sole panelist in this matter on May 13, 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 Carrefour a company established in France. The Complainant conducts business in the hypermarket space, operating 12,000 stores in more than 30 countries and employing 384,000 people. The Complainant also offers travel, banking, insurance, and ticketing services. In Brazil, the Complainant has been offering banking services under the brand “Carrefour Solucoes”.

The Complainant has used the mark CARREFOUR in connection with its various operations. The Complainant has registered the CARREFOUR mark, including International Trademark No. 351147 registered on October 2, 1968, and International Trademark No. 353849 registered on February 28, 1969. Additionally, the Complainant owns domain names in connection with the CARREFOUR mark, including <carrefoursolucoes.com.br>.

The disputed domain name <carrefuorsolucoes.com> was registered on February 10, 2020. The disputed domain name dynamically redirects to various third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to the mark registered by the Complainant. The Complainant states that the disputed domain name switches two letters of the CARREFOUR mark and adds the term “solucoes” (the Portuguese word for “solutions”).

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent has not acquired trademarks rights in either the CARREFOUR mark or “carrefuor” (as it appears in the disputed domain name). Additionally, the Complainant contends that it has not authorized the Respondent to use the CARREFOUR mark. The Complainant further argues that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.

Additionally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant argues its CARREFOUR mark is so widely known that the Respondent should have been aware that using the disputed domain name would violate the Complainant’s rights. Additionally, the Complainant contends that the Respondent specifically selected the disputed domain name to create a likelihood of confusion with the Complainant’s CARREFOUR mark in order to attract Internet users.

The Complainant requests that the disputed name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed allegations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules, and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate “to accept as true all of the allegations of the Complaint.”).

Based on the foregoing guidance, the Panel makes the following findings and conclusions on the basis of the allegations and evidence contained in the Complaint and reasonable inferences drawn from them.

A. Identical or Confusingly Similar

The Complainant is a multinational corporation. The Complainant is the owner of registered service marks that cover the CARREFOUR mark. Additionally, the Complainant owns the domain name <carrefoursolucoes.com.br>. The Panel therefore finds that the Complainant has rights in the CARREFOUR mark.

The difference between the disputed domain name <carrefuorsolucoes.com> and the CARREFOUR mark in which the Complaint has rights is minimal. The disputed domain name consists of three elements: (i) “carrefuor”, (ii) the suffix “solucoes”, and (iii) the generic Top Level Domain (“gTLD”) “.com.”

As set forth in section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable gTLD “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Therefore, the presence of “.com” in the disputed domain name is irrelevant.

Regarding the “solucoes” suffix, section 1.8 of WIPO Overview 3.0 provides that, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Here, the addition of the “solucoes” suffix does not prevent a finding of confusing similarity.

Turning now to the “carrefuor” element of the disputed domain name, section 1.9 of WIPO Overview 3.0 provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Section 1.9 of WIPO Overview 3.0 provides the following examples of common, obvious, or intentional misspellings of a mark that panels have considered to be confusingly similar: “(i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

In the present case, the disputed domain name is confusingly similar to the Complainant’s CARREFOUR mark by inverting the letters “o” and “u”.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the CARREFOUR mark in which the Complainant has rights. Accordingly, the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

From the allegations and evidence contained in the Complaint and reasonable inferences drawn from them, the CARREFOUR mark is a distinctive and well-known mark registered by the Complainant. The Complainant did not authorize the Respondent to use the CARREFOUR mark. Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Section 2.1 of WIPO Overview 3.0, provides 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

In the present case, the Respondent did not respond to the Complainant’s contentions and, consequently, has failed to provide any evidence demonstrating rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Section 3.1.4 of WIPO Overview 3.0 provides that “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Additionally, section 3.2.1 of WIPO Overview 3.0 provides that “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), […] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”

In the present case, the disputed domain name is a typo of the CARREFOUR mark owned by the Complainant. Additionally, the Respondent has not provided any evidence demonstrating rights or legitimate interests in the disputed domain name, nor has the Respondent provided a credible explanation for the domain name choice. Furthermore, the Complainant has provided evidence that the disputed domain name is being offered for sale through a domain auction company for a price likely in excess of the out-of-pocket costs directly related to the dispute domain name, which also supports a finding of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the third element of paragraph 4(a) of the Policy is satisfied.

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 <carrefuorsolucoes.com> be transferred to the Complainant.

Steven Auvil
Sole Panelist
Date: May 27, 2020