ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA, Atacadão S.A. v. JOAO BATISTA DA SILVA; Elssa Santos; Digital Negocios; Angelo Silva; Leandro Pereira; Isaac Mateus Ryan Mendes; Stefany Beatriz; Agela Lima; MP LOPES; Israel Ribeiro, campo; Juceli Castanhari, Minha loja; mauricio peixoto, Minha loja; Miguel Souza, Minha loja; Elem Silveira, Minha loja; LATAM CARMO, My Store; Fernanda Stuart, My Store; Leticia Oliveira, Minha loja; Gilvana Picini, Central Atacado; Marcos Souza freitas; Marcos Souza; Ze Pereira, My Store; Gabriela Lorenzetti, My Store; Fernando Pacheco, My Store; Antonio Nunes de Araujo; Liz e Agatha Marketing ME; Bener Santos; Tyex Group / Livia de Miranda Barbosa Ltda; Karine Antunes / Karine Antunes Netto; keila maria; Bertha Carr; Dirceu Dos Santos; Anabel Marshall; Lenisia Felix; Pedro Henrique Oliver Construcoes ME; Amanda Stay; Jose Pereira / My Store; Joaquim Pereira / My Store; Guilherme Soares, Minha loja; juggrr david; Rodrigo Da Silva Teruel; gui pax / megapromo; and Deecon Suarez Case No. D2024-3271 1. The Parties The Complainants are Carrefour SA, France (the “Complainant 1”), and Atacadão S.A., Brazil (the “Complainant 2”), represented by IP Twins, France. The Respondents are JOAO BATISTA DA SILVA; Elssa Santos; Digital Negocios; Angelo Silva; Leandro Pereira; Isaac Mateus Ryan Mendes; Stefany Beatriz; Agela Lima; MP LOPES; Israel Ribeiro, campo; Juceli Castanhari, Minha loja; mauricio peixoto, Minha loja; Miguel Souza, Minha loja; Elem Silveira, Minha loja; LATAM CARMO, My Store; Fernanda Stuart, My Store; Leticia Oliveira, Minha loja; Gilvana Picini, Central Atacado; Marcos Souza freitas; Marcos Souza; Ze Pereira, My Store; Gabriela Lorenzetti, My Store; Fernando Pacheco, My Store; Antonio Nunes de Araujo; Liz e Agatha Marketing ME; Bener Santos; Tyex Group / Livia de Miranda Barbosa Ltda; Karine Antunes / Karine Antunes Netto; keila maria; Bertha Carr; Dirceu Dos Santos; Anabel Marshall; Lenisia Felix; Pedro Henrique Oliver Construcoes ME; Amanda Stay; Jose Pereira / My Store; Joaquim Pereira / My Store; Guilherme Soares, Minha loja; juggrr david; Rodrigo Da Silva Teruel; gui pax / megapromo; and Deecon Suarez, all located in Brazil.
page 2 2. The Domain Name and Registrar The disputed domain names
, , , , , , , , , and are registered with Cloudflare, Inc. The disputed domain names , , , , and are registered with GoDaddy.com, LLC. The disputed domain names , , , , , , , , , , , , , , , , , and are registered with HOSTINGER operations, UAB. The disputed domain names and are registered with NameCheap, Inc. The disputed domain names , , and are registered with Realtime Register B.V. The disputed domain names , , , , , , , , , , , , , , , and are registered with Tucows Inc. (Collectively, the “Domain Names”, and CloudFlare, Inc., Hostinger Operations, UAB, Tucows Inc., GoDaddy.com, LLC, Realtime Register B.V., and NameCheap, Inc. are hereinafter referred to as the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2024. The Complainant requested the addition of further domain names listed above to the Complaint on August 14 and 20, 2024. On August 9, 19, 20, and 27, 2024, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On August 10, 12, 13, 20, 21, 27, and 28, 2024, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21 and August 29, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the Domain Names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on September 3, 2024. 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
page 3 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 Respondents of the Complaint, and the proceedings commenced on September 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 3, 2024. On October 16, 2024, the Center informed the Respondents that due to an administrative oversight, the Center’s Notification emails were not copied to the one of the Respondents’ email addresses. Thus, the Center granted the Respondents a five-day period (e.g., through October 21, 2024) in which to indicate whether they wished to participate to this proceeding. The Respondents did not respond. The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 24, 2024. 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 1 is a retail company. Currently, it operates over 12,000 stores in more than 30 countries worldwide. The Complainant 1 has over 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. The Complainant 2 is Brazilian chain of wholesale and retail stores established in 1960. It was acquired by the Complainant 1 in 2007. Currently, the Complainant 2 has over 300 stores and distribution centers in Brazil and more than 70,000 employees. The Complainant 1 is the owner of the European Union Trade Mark Registration for ATACADAO (word), No. 012020194, registered on May 24, 2015. Moreover, the Complainant 2 is the owner of the ATACADAO trademark registrations, including: - the Brazilian Trademark Registration for ATACADAO (word), No. 006785360, registered on October 10, 1978; and - the Brazilian Trademark Registration for ATACADAO (word), No. 006785344, registered on October 10, 1978. Furthermore, the Complainants use the domain names which include their ATACADAO trademark, such as (the Complainants’ Official Website). The disputed domain name was registered on July 31, 2024. The disputed domain name was registered on August 5, 2024. The disputed domain name was registered on August 19, 2024. The disputed domain name was registered on July 31, 2024. The disputed domain name was registered on August 5, 2024. The disputed domain name was registered on August 9, 2024. The disputed domain name was registered on August 14, 2024. The disputed domain name was registered on July 27, 2024. The disputed domain name was registered on July 26, 2024. The disputed domain name was registered on August 14, 2024. The disputed domain name was registered on August 6, 2024. The disputed domain name was registered on August 2, 2024. The disputed domain name was registered on August 13, 2024.
page 4 The disputed domain name was registered on August 17, 2024. The disputed domain name was registered on July 30, 2024. The disputed domain name was registered on July 30, 2024. The disputed domain name was registered on August 9, 2024. The disputed domain name was registered on July 29, 2024. The disputed domain name was registered on August 13, 2024. The disputed domain name was registered on August 8, 2024. The disputed domain name was registered on August 1, 2024. The disputed domain name was registered on August 6, 2024. The disputed domain name was registered on July 24, 2024. The disputed domain name was registered on August 7, 2024. The disputed domain name was registered on August 15, 2024. The disputed domain name was registered on August 4, 2024. The disputed domain name was registered on July 31, 2024. The disputed domain name was registered on August 10, 2024. The disputed domain name was registered on August 2, 2024. The disputed domain name was registered on July 31, 2024. The disputed domain name was registered on August 16, 2024. The disputed domain name was registered on August 8, 2024. The disputed domain name was registered on August 9, 2024. The disputed domain name was registered on August 10, 2024. The disputed domain name was registered on August 10, 2024. The disputed domain name was registered on August 7, 2024. The disputed domain name was registered on August 5, 2024. The disputed domain name was registered on August 11, 2024. The disputed domain name was registered on July 23, 2024. The disputed domain name was registered on July 31, 2024. The disputed domain name was registered on August 4, 2024. The disputed domain name was registered on July 23, 2024. The disputed domain name was registered on July 24, 2024. The disputed domain name was registered on August 5, 2024. The disputed domain name was registered on July 28, 2024. The disputed domain name was registered on July 24, 2024. The disputed domain name was registered on July 24, 2024. The disputed domain name was registered on July 23, 2024. The disputed domain name was registered on July 29, 2024. The disputed domain name was registered on August 13, 2024. The disputed domain name was registered on July 22, 2024. The disputed domain name was registered on August 16, 2024. The disputed domain name was registered on July 25, 2024. The disputed domain name was registered on July 24, 2024. The Complainants presented evidence that some of the Domain Names were used to attract Internet users to the websites imitating the Complainants’ Official Website. Moreover, the Complainants claim that some of the Domain Names resolved to various e-commerce websites which one day were active and the other day were deactivated. Finally, the Complainants submitted evidence that some of the Domain Names did not resolve to any active websites. As of the date of this decision, the Domain Names do not resolve to any active websites.
page 5 5. Parties’ Contentions A. Complainants The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the Domain Names. First, the Complainants submit that the Domain Names are confusingly similar to the ATACADAO trademark in which the Complainants have rights. Second, the Complainants argue that the Respondents have neither rights nor legitimate interests in the Domain Names. Third, the Complainants contend that the Domain Names were registered and are being used in bad faith. Finally, the Complainants allege the Domain Names are under common control and request consolidation of the Domain Names in the present case. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Preliminary Issue - Consolidation of Multiple Respondents The amended Complaint was filed in relation to nominally different Domain Name registrants. The Complainants allege that the Domain Name registrants are the same entity or mere alter egos of each other, or under common control. The Domain Name registrants did not comment on the Complainants’ request for consolidation. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainants’ request, the Panel will consider 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. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As regards common control, the Panel notes the following: First, the Domain Names were registered in close proximity in time, i.e., between July 22, 2024, and August 19, 2024. Second, all the Domain Names follow similar naming patterns. They either consist of the Complainants’ ATACADAO trademark together with an additional term and the Top-Level Domain (“TLD”) such as “.com”, “.shop”, “.online”, “.pro”, and “.site”, or they consist of a misspelling of the ATACADAO trademark and one of the TLDs mentioned above. Third, all the Domain Name registrants have an address in Brazil. Fourth, some of the Domain Name registrants share the same or similar contact details.
page 6 Fifth, the Domain Names have been used in a similar manner. As indicated above, the Complainants presented evidence that some of the Domain Names were used to attract Internet users to the websites impersonating the Complainant 2. Moreover, the Complainants claim that some of the Domain Names resolved to various e-commerce websites which one day were active and the other day were deactivated. Finally, the Complainants submitted evidence that some of the Domain Names did not resolve to any active websites. Lastly, the Respondents have not denied that the Domain Names are under a common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different Domain Name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Substantive Issue - Three Elements Paragraph 4(a) of the Policy places a burden on the Complainants to prove the presence of three separate elements, which can be summarized as follows: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview 3.0. A. Identical or Confusingly Similar Under the first element, the Complainants must establish that the Domain Names are identical or confusingly similar to the trademark in which the Complainants have rights. The Complainants hold valid ATACADAO trademark registrations. The Domain Names incorporate this trademark in its entirety (albeit, nine of them consist of misspellings as addressed below). As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The addition of other terms such as “achou”, “site”, “brasill”, “brmix”, “bronline”, “checkout”, “dasoofertas”, “descontos”, “dobrasil”, “expressbr”, “-express”, “ferta”, “fertasvip”, “-loja”, “mixbrasil”, “mixbr”, “mix”, “mixofertas”, “nlinebrasil”, “nlinebr”, “ofertabrasil”, “ofertasbr”, “-ofertas”, “oficialbr”, “onlinebr”, “pay”, “promo”, “-promo”, “promos”, “site”, “central-“, “central”, “centro”, “brasil”, “lojas”, “centrodo”, “exclusivo-“, “loja-“, “lojado”, “lojasdo”, “mercado”, “mix”, “oferta”, “ofertas-“, “saldao-“, “saldao”, “desconto”, “email”, “ lojasbr”, “onlineloja”, “onlineshop”, “promoc”, and “express” in the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainants’ ATACADAO trademark. Panels have consistently held that where 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. See section 1.8 of the WIPO Overview 3.0. Moreover, some of the Domain Names, including , , , , , , , , and consists of a misspelling
page 7 of the ATACADAO trademark. It is well established 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. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. See section 1.9 of the WIPO Overview 3.0. The TLDs “.com”, “.shop”, “.online”, “.pro”, and “.site” in the Domain Names are viewed as a standard registration requirement and as such are typically disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Given the above, the Panel finds that the Domain Names are confusingly similar to the Complainants’ ATACADAO trademark. Thus, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Under the second requirement, the Complainants must prove that the Respondent has no rights or legitimate interests in the Domain Names. The respondent may establish a right or legitimate interest in the domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: (i) that it has used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or (ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or (iii) that it is making a legitimate, noncommercial, or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. Based on the records, the Panel finds that the Complainants have established a prima facie case that the Respondent does not have any rights or legitimated interests in the Domain Names. The burden of production of evidence shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case. On the contrary, it results from the evidence on record that the Complainants’ ATACADAO trademark predates the Respondent’s registration of the Domain Names. There is no evidence in the case record that the Complainants have licensed or otherwise permitted the Respondent to use their trademark or to register the Domain Names incorporating the trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Names. Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Names in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Names. On the contrary, the Complainants presented evidence that some of the Domain Names resolved to the websites imitating general look and feel of the Complainants’ Official Website, featuring the Complainants’ ATACADAO trademark and thus, impersonating the Complainant 2. Moreover, the Complainants submit that some of the Domain Names resolved to various e-commerce websites or inactive websites. Similarly, as of the date of this decision, the Domain Names do not resolve to any active websites. Such use of the Domain Names in this case does not confer rights or legitimate interests on the Respondent. In sum, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Names. Thus, there is no evidence in the case file that refutes the Complainants’ prima facie case. The Panel concludes that the second element of the Policy has been established.
page 8 C. Registered and Used in Bad Faith Under the third element, the Complainant must prove that the Domain Names have been registered and are being used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0. Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation: (i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location. As indicated above, the Complainants’ rights in the ATACADAO trademark predate the registration of the Domain Names. The Panel finds that the Respondent was or should have been aware of the Complainants’ trademark at the time of registration. This finding is supported by the content of the most of the corresponding websites on the Domain Names which impersonate the Complainant 2. Moreover, it has been proven to the Panel’s satisfaction that the Complainants ATACADAO trademark is well known and unique to the Complainants. Thus, the Respondent could not ignore the reputation of products and services under this trademark. In sum, the Respondent in all likelihood registered the Domain Names with the expectation of taking advantage of the reputation of the Complainants’ ATACADAO trademark. Next, the Domain Names have been used by the Respondent in bad faith. As noted above, the Complainants presented evidence that some of the Domain Names resolved to the websites imitating the Complainants’ Official Website with no disclaimer clarifying the lack of association with the Complainant 2. Moreover, the Complainants submit that some of the Domain Names resolved to various e-commerce websites or inactive websites. By reproducing the ATACADAO trademark in the Domain Names, as well as on some of the corresponding websites, with no disclaimer as to the Respondent’s lack of relationship with the Complainants, the Respondent suggests at least the association with the Complainants. There is thus little doubt that the Respondent intended to earn profit from the confusion created with Internet users. In consequence, the Panel finds that the Respondent registered and used the Domain Names deliberately in order to take advantage of the Complainants’ reputation and to give credibility to its operations. Moreover, as of the date of this Decision, as well as at the time of submitting the Complaint, some of the Domain Names have not resolved to any active websites. Considering the overall circumstances of this case, the Panel finds that the Respondent’s passive holding of these Domain Names does not prevent a finding of bad faith. As numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, would not prevent a finding of bad faith under the Policy. See section 3.3 of the WIPO Overview 3.0. Here, given the well-known nature of the Complainant’s ATACADAO trademark, the failure of the Respondent to submit a response, and the use to which the remaining Domain Names have (or had) been put (namely, to impersonate or otherwise capitalize on the Complainants’ trademark), the Panel agrees with the above.
page 9 Finally, the Respondent’s use of privacy services that concealed registrant information for a number of the Domain Names further supports a finding of bad faith. For the reasons discussed above, the Panel finds that the third element of the Policy has been established. 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 Domain Names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Piotr Nowaczyk/ Piotr Nowaczyk Sole Panelist Date: November 7, 2024
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