ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v. antonio bueno Case No. D2025-1595 1. The Parties The Complainants are Carrefour SA, France, and Atacadão - Distribuição, Comércio E Indústria LTDA., Brazil, represented by IP Twins, France. The Respondent is antonio bueno, Brazil. 2. The Domain Name and Registrar The disputed domain name
is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2025. On April 22, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2025, 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 (“Undiclosed”) and contact information in the Complaint. The Center sent an email to the Complainants on April 25, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 1, 2025. 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 May 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2025.
page 2 The Center appointed Erica Aoki as the sole panelist in this matter on June 6, 2025. 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 Complainants are Carrefour SA (Carrefour) and Atacadão - Distribuição, Comércio E Indústria LTDA (Atacadão), a leading Brazilian wholesale and retail chain and a subsidiary of Carrefour since 2007. Atacadão operates over 300 stores across Brazil. The Panel will hereinafter refer to the Complainants as “the Complainant”. The Complainant holds registered rights in the ATACADAO and ATACADÃO trademarks, including: - Brazilian Trademark No. 006785344 (registered October 10, 1978); - Brazilian Trademark No. 006937497 (registered May 25, 1979); - European Union Trademark No. 012020194 (registered May 24, 2015); - French Trademark No. 4981135 (registered November 10, 2023); - African Intellectual Property Organization (OAPI) Trademark No. OA/3/2012/002570 (registered February 28, 2013). The Complainant enjoys a significant online presence across multiple social media platforms, followed by millions of users worldwide which further strengthens the recognition of its trademark. The vast number of Complainant’s social media followers demonstrates the extensive reach of its trademark, strengthening the Complainant’s position in these proceedings. The Complainant provides the following data as a limited example of Atacadão’s substantial online presence, with millions of followers across social media platforms. The disputed domain name was registered on April 1, 2025. It does not resolve to any active website and leads to an error page. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. The Complainant contends that it owns registered trademark rights in ATACADAO and ATACADÃO, which are distinctive and widely known in connection with wholesale retail services, particularly in Brazil. These trademarks have been used extensively and are closely associated with the Complainant’s commercial identity and the ATACADÃO trademark has been repeatedly acknowledged as well-known in numerous UDRP decisions, highlighting its extensive reputation and strong linkage to the Complainant’s retail and wholesale activities. The Complainant contends that the disputed domain name is confusingly similar to its well-known ATACADAO and ATACADÃO trademarks. The addition of the geographic abbreviation “br” does not prevent a finding of confusing similarity. On the contrary, it reinforces the association with the Complainant, whose operations are strongly linked to Brazil. The generic Top-Level Domain (“gTLD”) “.online” is irrelevant in the assessment of confusing similarity under the first element of the Policy, as established by prior UDRP decisions. Panels have consistently held that the incorporation of a complainant’s trademark in its entirety is sufficient to establish confusing similarity, especially where the additional elements are descriptive or do not dispel confusion. Accordingly, the
page 3 disputed domain name is confusingly similar to the Complainant’s trademarks ATACADAO and ATACADÃO, within the meaning of paragraph 4(a)(i) of the Policy. The Complainant contends that the Respondent has no rights or legitimate interest in the domain name and that the domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that: (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 domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the ATACADAO and ATACADÃO trademarks. The disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the term “br” (referring to Brazil) does not prevent a finding of confusing similarity. The gTLD “.online” is disregarded for purposes of comparison. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of paragraph 4(a)(i) of the Policy. The first element of the Policy has been satisfied. B. Rights or Legitimate Interests The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has not authorized or licensed the Respondent to use its trademark. The Respondent is not commonly known by the disputed domain name and has not made any bona fide use of it. The disputed domain name does not resolve to an active website and there is no evidence of legitimate noncommercial or fair use. The Respondent has not rebutted the Complainant’s prima facie case. Accordingly, the Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Complainant’s trademarks were registered long before the disputed domain name was created. Given the fame of the ATACADAO and ATACADÃO marks, particularly in Brazil, the Respondent must have been aware of the Complainant at the time of registration. The composition of the disputed domain name suggests a deliberate attempt to target the Complainant. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed domain name, and the unlikeliness of any good faith use, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
page 4 The third element of the Policy has been 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 be transferred to the Complainant. /Erica Aoki/ Erica Aoki Sole Panelist Date: June 16, 2025
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