ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA, Atacadão S.A. v. Claudia Sueli Kelly de Lourdes, Josefina Medeiros Case No. D2025-1815 1. The Parties The Complainants are Carrefour SA and Atacadão S.A., France, represented by IP Twins, France. The Respondents are Claudia Sueli Kelly de Lourdes, Uruguay, and Josefina Medeiros, Brazil 2. The Domain Names and Registrars The disputed domain name
is registered with NameCheap, Inc. The disputed domain name is registered with GoDaddy.com, LLC. The two disputed domain names are together referred to as the “Domain Names” and the two registrars as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2025. On May 7, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 7, 2025, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (Domains By Proxy, LLC and Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainants on May 8, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants 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 the Domain Names are under common control. The Complainants filed an amended Complaint on May 9, 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
page 2 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 12, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2025. The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 5, 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 to ensure compliance with the Rules, paragraph 7. 4. Factual Background The first Complainant, Carrefour, is a global chain of retail/hypermarkets with a revenue of 83 billion euros in 2022. The Complainant operates more than 12.000 stores in more than 30 countries worldwide. It has 384,000 employees worldwide and 1.3 million daily unique visitors in its stores. The second Complainant, Atacadão, is a Brazilian chain of wholesale and retail stores. It was established in 1960 and acquired by Carrefour in 2007. It has today 361 locations and over 65,000 employees. The two complainants are hereinafter referred to as the “Complainant”. The Complainant owns several trademark registrations in ATACADAO, for example Brazilian trademark no. 006785344, registered on October 10, 1978, and European Union trademark No. 012020194, registered on May 24, 2015. The Complainant has domain name registrations consisting of the ATACADAO trademark, for example, registered since 1997. The Complainant is present on social media platforms. The Respondents registered the Domain Names on March 11, 2025, and April 10, 2025. At the time of the Complaint, the Domain Names either resolved to an error page or a registrar-parked webpage. 5. Parties’ Contentions A. Complainant The Complainant argues that the Domain Names are under common control. The Domains Names were registered only one month apart. Both Domains Names begin with “Atacadao” and are followed by a Portuguese word that relates to payment. Both Domains Names are registered under new generic Top-Level Domains and they have not been used for an active website. Finally, the Complainant points to that behind both Domain Names the registrant details are fanciful and/or inaccurate, which indicates common control. The Complainant provides evidence of trademark registrations and argues with reference to UDRP case law that the Complainant’s trademark is well-known. The Domain Names are confusingly similar to the Complainant’s earlier well-known ATACADAO trademark, as the Domain Names reproduce the trademark together with the words “cartao” and “pagamento”, meaning “(credit) card” and “payment” in Portuguese. Therefore, the Complainant contends that the Domain Names are confusingly similar to the Complainant’s trademark. The Complainant argues that the Respondents have no rights or legitimate interests in respect of the Domain Names. The Respondents reproduce the Complainant’s trademark in the Domain Names without authorization. The Respondents have not provided any evidence of bona fide use of, or demonstratable
page 3 preparations to use, the Domain Names in connection with any legitimate offering of goods or services. The Domian Names have not resolved to active webpages. The Complainant argues that it is inconceivable that the Respondents ignored the Complainant and its earlier rights. The Respondents are apparently located in Brazil where the Complainant Atacadão S.A. is headquartered and famous. The Respondents’ choice of the Domain Names must have been influenced by the fame of the Complainant and its earlier trademark and done to attract Internet users searching for the Complainant’s services and products. The current non-use of the Domain Names is preventing the Complainant from reflecting its name and trademark in corresponding domain names. Due to the long-lasting international relationship of the Complainant and its trademarks, the Complainant cannot think of any future use of the Domain Names that may be done by the Respondents in good faith. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural matter - consolidation The Complaint was filed in relation to nominally different domain name registrants. The Complainant argues that the domain name registrants are the same entity or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. 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 Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As to common control, the Panel notes that the Domain Names are registered within a short time period, and both the Domain Names target the Complainant’s trademark and have a similar structure. The Domain Names does not resolve to an active webpage. There are also similarities in the way the registrants have listed inaccurate (or likely fake) contact details. For example, the registrant for the Domain Name provided an address located in Sao Paulo (the Panel also notes the other registrant seems to be located also in Sao Paulo), with a Brazilian phone number, while indicating Uruguay as the country. Similarly, the registrant’s name for the Domain Name does not correspond to the name that appears as part of the registrant’s email address for such Domain Name. Under the circumstances of the case, the Panel considers that all these factors when considered together indicate that there is likely 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. The registrants have been granted the right to comment but opted not to. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to as “the Respondent”) in a single proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the Domain Names. See WIPO Overview 3.0, section 1.7.
page 4 The Complainant has established that it has rights in the trademark ATACADAO. The Domain Names incorporate the Complainant’s trademark with the words “cartao” and “pagamento”, meaning “card” and “payment” in Portuguese. The additions do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 and 1.9. For the purpose of assessing the confusing similarity under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD. See WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 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. See WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names. The Respondent is not affiliated or related to the Complainant. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired trademark rights. There is no evidence of the Respondent’s use of the Domain Names or a name corresponding to the Domain Names in connection with bona fide offering of goods or services. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The incorporation of the entirety of the Complainant’s trademark in the Domain Names, and the fame of the trademark, make it probable that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the Domain Names. The Panel finds it likely that the Respondent chose the Domain Names because of its similarity with the Complainant’s trademarks, particularly noting the structure of the Domain Names. The non-use of the Domain Names does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Moreover, the mere registration of a domain name that is confusingly similar to a famous or widely known trademark by an unaffiliated entity may by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established.
page 5 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. /Mathias Lilleengen/ Mathias Lilleengen Sole Panelist Date: June 6, 2025
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