ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA , Atacadão - Distribuição, Comércio E Indústria LTDA. v. Sophia Pinheiro, Fernando Dantas Case No. D2025-2059 1. The Parties The Complainants are Carrefour SA, France (the “First Complainant”), and Atacadão - Distribuição, Comércio E Indústria LTDA., Brazil (the “Second Complainant”), represented by IP Twins, France. The Respondents are Sophia Pinheiro, Brazil, and Fernando Dantas, Brazil. 2. The Domain Names and Registrar The disputed domain names
(the “first disputed domain name”) and (the “second disputed domain name”) are registered with Hostinger Operations, UAB (the “First Registrar”). The disputed domain name (the “third disputed domain name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Second Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2025. On May 26, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 27 and May 29, 2025, the First Registrar and Second Registrar respectively transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named respondents (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org); Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainants on May 30, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants to either file separate complaint(s) for the disputed 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 Complainants filed an amended Complaint on May 6, 2025.
page 2 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 Respondents of the Complaint, and the proceedings commenced on June 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 2, 2025. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 7, 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 First Complainant has operated in the retail business since 1968, with more than 12,000 stores in over 30 countries, having had a turnaround of EUR 76 billion in 2018. The First Complainant additionally offers travel, banking, insurance, and ticketing services. The Second Complainant was established as a chain of warehouses in 1960, having been bought by the First Complainant in 2007, presently counting over 250 stores and distribution centers in all Brazilian states. The Second Complainant is the owner of, inter alia, the following trademark registrations (collectively hereinafter referred to as the “ATACADAO trademark”): - Brazilian trademark registration No. 006785344 for the word mark ATACADÃO, filed on July 15, 1977, registered on October 10, 1978, successively renewed, in local class 31.10; - Brazilian trademark registration No. 006937497 for the word mark ATACADAO, filed on March 21, 1978, registered on May 25, 1979, successively renewed, in local classes 35.10/20/30. The first disputed domain name was registered on March 19, 2025, and presently resolves to a parked webpage displaying an ordinary template of a website not filled out completely. The second disputed domain name was registered on March 19, 2025, and presently does not resolve to an active webpage. The third disputed domain name was registered on March 21, 2025, and presently resolves to a parked webpage stating that “this store is currently unavailable”. 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 disputed domain names. Notably, the Complainants contend that their ATACADAO trademark enjoys a wide-spread continuous reputation, having already been found to be well-known in Brazil by past UDRP panels (Carrefour SA and
page 3 Atacadão S.A. v. atacado varejo, WIPO Case No. D2023-3011; Atacadão - Distribuição, Comércio E Indústria LTDA. v. seong-chea park, WIPO Case No. D2022-4615; and Carrefour S.A., Atacadão S.A. v. Gabriel Silva, WIPO Case No. D2023-4424). The disputed domain names, according to the Complainants, reproduce entirely the Complainants’ ATACADAO trademark with the addition of generic terms and hyphens, what is not sufficient to avoid a finding of confusing similarity under the Policy. Moreover, the added terms directly relate to the Complainants’ commercial activities: “pagsecuro” meaning “security payment”, “bras” being the shortened version of “Brasil”, and “meu” meaning “my”, which is also associated with “card”. As to the Respondents’ lack of rights or legitimate interests in the disputed domain names, the Complainants argue that: i. the Respondents have never been authorized by the Complainants to use the ATACADAO trademark in any manner, nor have the Complainants ever given consent for the registration of the disputed domain names, neither in an explicit nor an implicit way. The Respondents are also not partners, distributors or licensees of the Complainants, nor is there an existing contractual or commercial relationship between the Complainants and the Respondents which could eventually legitimate the registration and use of the disputed domain names by the Respondents; ii. the Respondents do not hold trademark rights in the term “atacadao”; iii. the Respondents have not been commonly known by the disputed domain names as individuals, businesses, or other organizations; and iv. the Respondents have not, before the original filing of the Complaint, used or prepared to use the disputed domain names in relation to a bona fide offering of goods or services, rather having used them in connection with default Registrar or Website hosting provider parking pages, or an error page, indicating the absence of any good faith offering of goods or services. The Complainants further contend that the Respondents have registered and are using the disputed domain names in bad faith, with it being inconceivable that the Respondents were unaware of the Complainants or their earlier rights in the ATACADAO trademark, necessarily having the Second Complainant’s name and trademark in mind when registering the disputed domain names so as to attract Internet users by creating a likelihood of confusion with the Complainants’ earlier marks. In addition, the Complainants further contend that the passive holding of the disputed domain names may not be considered good faith use since the Respondents are likely using the disputed domain names to disturb the Complainants’ activities or to resell them. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural Matter – 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 that the disputed domain names are under common control. The Complainants request the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
page 4 The Complainants sustain that the disputed domain names are under common control and request that they be dealt with in a single proceeding given that the disputed domain names: (i) were registered within a very short time frame, between March 19 and 21, 2025; (ii) share a similar naming pattern (generic term + ATACADAO separated by hyphens, as well as (iii) are inactive: either being default Registrar or website hosting provider parking pages, or an error page; (iv) all indicate the registrant country as Brazil, another indicia of common control; and (v) apparently all indicate false addresses in their registrant information. The disputed domain name registrants did not comment on the Complainants’ request. 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 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. The Complainants request that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated above. All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the three disputed domain names dealt with at the same proceeding, given that the disputed domain names share a number of characteristics: a) they relate to the same well-known trademark that belongs to the Complainants, b) they were all registered within a relatively short period of time, c) they were all registered with two Registrars, d) they share the same naming pattern (with the inclusion of generic terms as well as hyphens) and e) do not appear to be in active use. This Panel is satisfied, in view of the arguments and evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties. It follows that the Respondents will hereinafter be referred to as “the Respondent”. 6.2. Substantive Matter Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainants: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names. A. 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 name. WIPO Overview 3.0, section 1.7.
page 5 The Complainants have shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the ATACADAO trademark 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 (“meu”, “card”, “pagseguro”, “site” and “bras”) and hyphens 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 name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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. 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 record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names. The Panel considers that the record of this case reflects that: - the Respondent has never been authorized by the Complainants to use the ATACADAO trademark in any manner now that the Complainants have never given consent for the registration of the disputed domain names, neither in an explicit nor an implicit way. Further, the Respondent is not a partner, distributor or licensee of the Complainants, nor is there an existing contractual or commercial relationship between the Complainants and the Respondent which could eventually legitimate the registration and use of the disputed domain names by the Respondent; - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; - the Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain names. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3; - the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4;
page 6 - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain names; and - the disputed domain names reproduce the Second Complainant’s well-known mark in its entirety, and thus, there is a risk of implied affiliation with it. 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 Panel considers that the evidence of this case reflects that: the Complainants hold a well-known trademark in the Brazilian territory, where the Respondent is located, and that the disputed domain names chosen by the Respondent indicate a risk of association with the Complainants and their activities, and the disputed domain names have not been used in connection with a bona fide offer of goods or services. In addition to that, Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain names do not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the Respondent failed to participate in this proceeding, thereby failing to provide any good faith explanation as to its registrations and intended use of the disputed domain names, and the Respondent seemingly engaged the use of a privacy service to conceal its contact details on the publicly-available WhoIs, which supports an inference of bad faith. Additionally, given the reputation of the Complainants’ ATACADAO trademark and the composition of the disputed domain names, the Panel 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. Two other factors corroborate the finding of the Respondent’s bad faith conduct in this case: the Respondent’s lack of reply to the Complaint and the use of false contact details, leading the Center not being able to deliver the Written Notice to the addresses indicated by the Respondents. Based on the available record, the Panel finds that the Complainants have established the third element of the Policy. 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. /Wilson Pinheiro Jabur/ Wilson Pinheiro Jabur Sole Panelist Date: July 21, 2025
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