WIPO Domain Name Decision D2025-2739 for atacadaobras-br.com, atacadaobras-brasil.com, atacadaobras-loja.com, atacadaobras-site.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA , Atacadão S.A. v. Fernando Vieira, Daniel Silva Case No. D2025-2739 1. The Parties The Complainants are Carrefour S.A. (the “First Complainant”), France, and Atacadão S.A. (the “Second Complainant”), Brazil, represented by IP Twins, France. The Respondents are Fernando Vieira, Brazil, and Daniel Silva, Brazil. 2. The Domain Names and Registrar The disputed domain names , , , and (collectively, the “Disputed Domain Names”) are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2025. On July 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 14, 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 (“Not Disclosed”) and contact information in the Complaint. The Center sent an email communication to the Complainants on July 16, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, 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 the same date. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 25, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 19, 2025. The Center appointed Nicholas Weston as the sole panelist in this matter on September 2, 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 operates a hypermarket business with over 14,000 stores in 40 countries. The Second Complainant, established in 1960, has been owned by the First Complainant since 2007 and operates more than 300 wholesale and retail warehouse stores in Brazil, with more than 70,000 employees. The First and Second Complainant are hereinafter referred individually and collectively as the “Complainant”. The Complainant holds registrations for the trademarks ATACADAO and ATACADÃO, including Brazil Trademark ATACADÃO No. 006785344, registered on October 10, 1978, designating goods in class 31 and Brazil Trademark ATACADAO No. 006937497, registered on May 25, 1979, designating services in class 35. The Complainant owns numerous domain names that comprise of, or contain, the trademark ATACADAO, including the domain name which has been registered since 1997. The Disputed Domain Name was registered on May 27, 2025, the Disputed Domain Name was registered on May 29, 2025, the Disputed Domain Name was registered on June 2, 2025, and the Disputed Domain Name was registered on June 17, 2025. The Disputed Domain Names resolve to inactive webpages. 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. Notably, the Complainant cites its trademark registrations for the mark ATACADAO and variations of it, in several countries, as prima facie evidence of ownership. The Complainant contends that its rights in that the mark ATACADAO mark predate the Respondents’ registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each is comprised of the ATACADAO trademark, followed by generic terms such as “bras” (short for “Brazil”), “br” (two-letter country code for “Brazil”), “loja” (“store” in Portuguese), and “site” under the generic Top-Level Domain (“gTLD”) “.com”, and that these variables are not sufficient to avoid the confusing similarity. The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names because “it has not authorized the use of its earlier trademarks or terms similar thereto in the [D]isputed [D]omain [N]ames in any manner or form” and that none of the circumstances set out in paragraph 4(c) of the Policy apply. Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and the Rules having regard to the prior use and distinctive
page 3 nature of the Complainant’s trademark, and on the issue of registration states that “the Respondent’s choice of domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks”. On the issue of use the Complainant contends that “non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding” and cites Carrefour SA and Atacadão S.A. v. Roberto Gomes et al., WIPO Case No. D2024-3935, in support of its submission that this amounts to use in bad faith. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue A. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple domain name registrants pursuant to paragraph 10(e) of the Rules. The domain name registrants did not comment on the Complainant’s 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 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 regards common control, the Panel notes the following: — the Disputed Domain Names were registered in a short time frame, through the same Registrar. — the Disputed Domain Names share a similar pattern using the Complainant’s ATACADAO trademark followed by “bras”, a hyphen, and a term such as “br”, “brasil”, “loja”, or “site”. — the Disputed Domian Names resolve to webpages which are inactive. — according to the information provided by the concerned Registrar, both domain name registrants are supposedly resident in Brazil in the same city and street. The evidence submitted points to the fact that all the Disputed Domain Names are subject of common control by the Respondents. The Respondents had the opportunity but did not respond to the Complaint. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different domain name registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
page 4 (i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) that the Disputed Domain Names have been registered and are being used in bad faith. 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 Names. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ATACADAO in several countries. Turning to whether the Disputed Domain Names are identical or confusingly similar to the ATACADAO trademark, the Panel observes that — the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ATACADAO; (b) followed by the term “bras”, a hyphen and the term “brasil”; (c) followed by the gTLD “.com”. — the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ATACADAO; (b) followed by the term “bras”, a hyphen and the letters “br”; (c) followed by the gTLD “.com”. — the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ATACADAO; (b) followed by the term “bras”, a hyphen and the term “loja”; (c) followed by the gTLD “.com”. — the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ATACADAO; (b) followed by the term “bras”, a hyphen and the term “site”; (c) followed by the gTLD “.com”. It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of each of the Disputed Domain Names, specifically: “atacadaobras-brasil”, “atacadaobras-br”, “atacadaobras-loja”, and “atacadaobras-site”, respectively. The Panel finds the mark is recognizable within the Disputed Domain Names. Accordingly, the Disputed Domain Names are confusingly similar to the mark for the purposes of the Policy also. WIPO Overview 3.0, section 1.7. Although, the addition of the terms such as “brasil”, “bras”, “br”, “loja”, and “site”, may bear on assessment of the second and third elements in relation to the Disputed Domain Names, the Panel finds the addition of those 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. The Panel finds the first element of the Policy has been established.
page 5 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 Disputed Domain Names (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 notes the evidence that each of the Disputed Domain Names resolve to an inactive webpage, which supports the Complainant’s evidence, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users. The Panel finds the second element of the Policy has been established for the Disputed Domain Names. 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. 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. In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Names, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark ATACADAO when it registered the Disputed Domain Names. This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Names other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4. Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) may indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Name some 47 years after the Complainant established registered trademark rights in the ATACADAO mark. The Respondent has not come forward to rebut the Complainant’s allegations or offer any alternative explanation.
page 6 On the issue of use, the Disputed Domain Names do not resolve to active websites. 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. 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 implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the Complainant’s well-known ATACADAO trademark, the composition of the Disputed Domain Names, and the Respondent’s failure to provide any evidence of actual or contemplated good-faith use 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. In the circumstances, the Panel so finds. The Panel finds that the Complainant has 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. /Nicholas Weston/ Nicholas Weston Sole Panelist Date: September 12, 2025.


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