ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA, Atacadão S.A. v. Everton Luiz Medeiros Rocha dos Santos Case No. D2025-1821 1. The Parties The Complainants are Carrefour SA, France and Atacadão S.A., Brazil, both represented by IP Twins, France. The Respondent is Everton Luiz Medeiros Rocha dos Santos, Brazil. 2. The Domain Names and Registrar The disputed domain names
are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2025. On May 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 7, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 12, 2025, 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 May 13, 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 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2025.
page 2 The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 23, 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 (the “first Complainant”) and Atacadão S.A. (the “second Complainant ”). The first Complainant is a French company mainly active in the retail sector. It was founded in 1959 and has more than 14,000 retail locations in more than 40 countries worldwide. The second Complainant is a Brazilian chain of wholesale and retail stores established in 1960 and acquired by the first Complainant in 2007. The first Complainant and the second Complainant will hereinafter collectively be referred to as the “Complainant”. The first Complainant is the owner of registered trademarks in ATACADAO, amongst which: - European Union Trade Mark No. 012020194 for ATACADAO, registered on May 24, 2015, in International Class 35. The second Complainant is the owner of registered trademarks in ATACADÃO, amongst which: - Brazilian Trademark No. 006785360 for ATACADÃO, registered on October 10, 1978, in National Classes 2910, 2930, and 2940; and - Brazilian Trademark No. 006785344 for ATACADÃO, registered on October 10, 1978, in National Class 3110. In addition, the second Complainant also owns domain names containing the ATACADAO trademark, amongst which . The disputed domain names were registered on May 1, 2025. As demonstrated by screen captures dated May 7, 2025 submitted by the Complainant, neither of the disputed domain names currently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. With respect to the first element, the Complainant contends that it has rights in the mark ATACADAO and that the disputed domain name is confusingly similar to this mark. According to the Complainant, the disputed domain name wholly incorporates the well-known trademark ATACADAO together with the generic term “shopping”, which does not diminish the likelihood of confusion. Finally, the Complainant points out that neither the use of the lower-case letter format nor the addition of the Top-Level Domains “.online” or “.space” respectively is significant in determining whether the disputed domain names are confusingly similar to the trademarks of the Complainant. Regarding the second element, the Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain names. First, the Complainant claims to have performed searches and found no ATACADAO trademark owned by the Respondent or any evidence that the Respondent is commonly known by the disputed domain names. Second, the Complainant submits that it has not authorized the Respondent to use its ATACADAO and ATACADÃO trademarks or any similar terms in the
page 3 disputed domain names. Third, the Complainant puts forth that the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. In fact, the Complainant notes, the disputed domain names do not currently resolve to an active website. However, as the Complainant points out, the disputed domain names alone are already inherently likely to mislead Internet users and their specific nature carries a high risk of implied affiliation with the Complainant which cannot constitute fair use as they effectively impersonate or suggest sponsorship or endorsement by the Complainant. Finally, the Complainant notes that its adoption and extensive use of the ATACADAO and ATACADÃO trademarks far predates the registration of the disputed domain names and therefore the burden is on the Respondent to establish the Respondent’s rights or legitimate interests relating to the disputed domain names. As to bad faith registration, the Complainant claims that there can be no doubt that the Respondent has registered the disputed domain names with the Complainant’s name and trademarks in mind. The Respondent is a resident of Brazil, a country where the second Complainant is headquartered and undoubtedly famous. In that regard, the Complainant also notes that UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Furthermore, as the Complainant points out, it is highly likely that the Respondent chose the disputed domain names because of their similarity to a trademark in which the Complainant has rights and legitimate interests. This was most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the disputed domain names and to create a likelihood of confusion with the Complainant’s mark. Finally, the Complainant notes that its trademark registrations significantly predate the registration date of the disputed domain names and that a quick trademark search would have revealed them. With respect to bad faith use, the Complainant contends that by simply maintaining the disputed domain name, the Respondent is preventing the Complainant from reflecting its name and trademarks in the corresponding disputed domain names. In addition, the Complainant relies on the doctrine of passive holding and points out that the non-use of the disputed domain names does not prevent a finding of bad faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation of Multiple Complainants The Panel notes that the Complaint was filed by two Complainants. The Panel is therefore required to decide whether it will permit this Complaint filed by the multiple Complainants (paragraph 10(e) of the Rules). The Panel finds that the first Complainant and the second Complaint have a common grievance against the Respondent since it appears from the evidence on record that the first Complainant owns the second Complainant. Moreover, the evidence indicates that both Complainants own trademarks in the mark ATACADAO and ATACADÃO, which this Complaint relies on. Considering these facts and the Respondent’s failure to submit any response to the Complaint, the Panel believes that it would be equitable and procedurally efficient to permit the consolidation. Accordingly, the Panel permits the Complaint filed by the first Complainant and the second Complainant.
page 4 B. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of the ATACADAO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “shopping”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Finally, as for the applicable generic Top-Level Domains (“gTLD”), i.e. “.online” and “.space”, the Panel holds that these can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established. C. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed 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 disputed domain names such as those enumerated in the Policy or otherwise. The Panel finds that the Respondent does not use, nor has the Respondent made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services and the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names. As demonstrated by evidence on file, the disputed domain names do not currently resolve to active websites. In addition, the Complainant confirms that the Respondent is not affiliated with the Complainant in any way nor has the Complainant licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks. The Panel has taken note of the Complainant’s confirmation in this regard and has not seen any evidence that would suggest the contrary. In the absence of any license or permission from the Complainant to use its trademarks, no actual or contemplated bona fide or legitimate
page 5 use of the disputed domain names could reasonably be claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; and LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). The Panel finds the second element of the Policy has been established. D. 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The following other circumstances do support a finding of bad faith. The Panel believes that the Respondent knew or, at least, should have known at the time of registration that the disputed domain names included the Complainant’s ATACADAO trademark. As demonstrated by the Complainant, prior panels have previously recognized that the ATACADAO and ATACADÃO trademarks are well-known in Brazil (see, for example: Carrefour SA and Atacadão S.A. / atacado varejo, WIPO Case No. D2023-3011; Atacadão - Distribuição, Comércio E Indústria LTDA. / seong-chea park, WIPO Case No. D2022-4615; Carrefour S.A., Atacadão S.A. / Gabriel Silva, WIPO Case No. D2023-4424; Carrefour SA and Atacadão S.A. / Jaay Shop, privada, WIPO Case No. D2023-5152; and Carrefour SA, Atacadão S.A. / ELIANE COSTA, WIPO Case No. D2024-1077). Other prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, Section 3.1.4). Moreover, the evidence on file shows that the Complainant’s ATACADAO and ATACADÃO trademarks were registered many years before the registration of the disputed domain names in several jurisdictions and used widely, in particular in the country of residence of the Respondent, Brazil. In addition, the disputed domain names incorporate the ATACADAO mark in its entirety and include the descriptive term “shopping”. This descriptive term does not prevent the confusing similarity but in fact reinforce it since it refers to the retail activities that the Complainant conducts under the ATACADAO trademark and therefore implies that the disputed domain names link to an online shop belonging to the Complainant. The fact that the Respondent had knowledge of the Complainant and the ATACADAO and ATACADÃO trademarks and therefore its registration in bad faith of the disputed domain names may accordingly be inferred from these circumstances. WIPO Overview 3.0, section 3.2.2. The fact that the disputed domain names are not used does 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 and reputation of the Complainant’s ATACADAO and ATACADÃO trademarks, and the composition of the disputed domain names, and finds that in the circumstances of this case, the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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 names and be transferred to the Complainant. /Benoit Van Asbroeck/ Benoit Van Asbroeck Sole Panelist Date: July 2, 2025
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