ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA v. Edson Oliver dos Santos Case No. D2025-2607 1. The Parties The Complainants are Carrefour SA (“Carrefour”), France and Atacadão - Distribuição, Comércio E Indústria LTDA (“Atacadão”), Brazil, represented by IP Twins, France. The Respondent is Edson Oliver dos Santos, 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 July 3, 2025. On July 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 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 (Undisclosed) and contact information in the Complaint. The Center sent an email communication to the Complainants on July 4, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 7, 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 July 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2025.
page 2 The Center appointed Michelle Brownlee as the sole panelist in this matter on August 12, 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 Complainant Atacadão is a Brazilian wholesale and retail chain, established in 1960, with a network of over 300 stores and distribution centers throughout Brazil. The Complainant Carrefour is a public limited company, established in France. The Complainant Carrefour acquired the Complainant Atacadão in 2007 and integrated it into its worldwide operations. The Complainants are owners of a number of registrations for the marks ATACADÃO and ATACADAO (the “Marks”), including the following: - European Union Trade Mark Registration Number 12020194, registered on May 24, 2015; - Brazilian Trademark Registration Number 6785344, registered on October 10, 1978; and - Brazilian Trademark Registration Number 6937497, registered on May 25, 1979. The disputed domain name was registered on March 29, 2025 and resolves to an error page that displays the following message: “This domain points to Shopify but isn't configured properly If you are the owner of this store, please check the domain settings in your dashboard and follow the troubleshooting documentation.” 5. Parties’ Contentions A. Complainant The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainants contend that the disputed domain name is confusingly similar to their Marks, that the Respondent has no legitimate rights or interests in the disputed domain name and that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants note that even though the disputed domain name is held passively, there would appear to be no plausible explanation for the Respondent to register the disputed domain name that incorporates the Complainants’ Marks other than to create a misleading association with the Complainants and their Marks and that the Respondent is likely holding the disputed domain name for future misuse, disruption of the Complainants’ business or resale. The Complainants note that use of the words “oficial” and “brasil” in the disputed domain name are further designed to create an association with the Complainants and argue that the Respondent’s concealment of identity through a proxy service is further evidence of the Respondent’s bad faith. The Complainants contend that the Respondent’s use of the disputed domain name to display an error page on Shopify, a platform that hosts online commerce, suggests that the Respondent is likely preparing to use the disputed domain name on such a platform. B. Respondent The Respondent did not reply to the Complainants’ contentions.
page 3 6. Discussion and Findings 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 Complainants’ trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 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 mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is 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, “oficial” and “Brasil”, 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 available record, the Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 name such as those enumerated in the Policy or otherwise. 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. In the present case, the Panel notes that the Respondent has registered the disputed domain name, which incorporates the Complainants’ distinctive Marks that are well-known in Brazil and appears to be using Shopify, an ecommerce hosting platform, to host the disputed domain name, although no content other than an error message generated by Shopify is displayed.
page 4 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. 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s Marks, and the composition of the disputed domain name, 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. Under the circumstances, it is difficult to imagine why someone other than the Complainants would register the disputed domain name other than a bad faith purpose, such as fraud or phishing. The fact that the disputed domain name resolves to a platform that hosts ecommerce lends further support to this conclusion. 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 name be transferred to the Complainants. /Michelle Brownlee/ Michelle Brownlee Sole Panelist Date: August 26, 2025
Full & Egal Universal Law Academy