Carrefour S.A, Atacadão - Distribuição, Comércio E Indústria LTDA v Fatura

WIPO Case No. D2025-3136

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour S.A, Atacadão - Distribuição, Comércio E Indústria LTDA v. Fatura
Atacadao

Case No. D2025-3136

1. The Parties

The Complainants are Carrefour S.A., France, and Atacadão - Distribuição, Comércio E Indústria LTDA,

Brazil, represented by IP Twins, France.

The Respondent is Fatura Atacadao, Brazil.

2. The Domain Name and Registrar

The disputed domain name <cartaoatacadao.shop> 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 August 6, 2025.
On August 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 8, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on August 8, 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 August 11, 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 August 18, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 7, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 9, 2025.

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The Center appointed Estela Mariel de Luca as the sole panelist in this matter on September 15, 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 S.A., a French public limited company founded in 1959 and a global leader in retail, and Atacadão – Distribuição, Comércio e Indústria Ltda., a Brazilian wholesale and retail chain established in 1960. Since 2007, Atacadão has been a wholly-owned subsidiary of Carrefour S.A.

The Complainant Carrefour S.A. is the owner of the ATACADAO and ATACADÃO trademarks, including the following registrations:

- European Union trademark ATACADAO N° 012020194, registered on May 24, 2015, int. class 35.

- French trademark ATACADÃO N° 4981135, registered on November 10, 2023, int. class 35.

- African Intellectual Property Organization (OAPI) trademark ATACADAO N° 1/072524, registered on February 28, 2013, in int. class 35.

The Complainants have an online presence across multiple social media platforms, including Facebook in
Brazil and LinkedIn globally.

The disputed domain name was registered on May 22, 2025, and currently resolves to a Registrar parking page with no substantive content.

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 name.

Notably, the Complainants argue that the disputed domain name is confusingly similar to the Complainants’ registered trademarks ATACADAO and ATACADÃO.

The Complainants contend that the disputed domain name wholly incorporates its trademark, and that the addition of the prefix “cartao” (meaning “card” in Portuguese) together with the generic top-level Domain (“gTLD”) “.shop”, —does not avoid confusion but rather reinforces an association with the Complainants as these terms are directly related to the Complainants’ commercial activities and product offering, including credit card and loyalty card services.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name and has not authorized the Respondent to use their ATACADAO or ATACADÃO trademarks in any manner, including in a domain name. Moreover, to the best of the Complainants’ knowledge, there is no evidence that the Respondent has been commonly known by the name “cartaoatacadao”, nor is there any indication of a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.

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The Complainants further assert that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants allege that the disputed domain name resolves to a default registrar page, which indicates that the domain is active and hosted by the registrar but contains no substantive content.

The Complainants further argue that given the strong public recognition of the Complainants’ marks and their long-standing use, the Respondent could not have registered the disputed domain name without knowledge of the Complainants’ trademarks.

According to the Complainants, this type of passive holding, particularly in the context of a domain name that incorporates a well-known trademark, supports a finding of bad faith under UDRP precedent.

The Complainants contend that all three elements of the Policy have been satisfied.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights;

(ii)         that the Respondent has no rights or legitimate interests in respect of the disputed domain name;

(iii)        that the disputed domain name has been registered and is being used in bad faith.

The Respondent’s default in the case at hand does not automatically result in a decision in favor of the
Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a
response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the

Complaint.

Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from the

Respondent’s failure to submit a response as it considers appropriate.

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant Carrefour S.A. has 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.

The Panel considers that the addition of the term “cartao” does not prevent a finding of confusing similarity, as the Complainant’s mark remains clearly recognizable within the disputed domain name. WIPO Overview 3.0, section 1.8. The generic Top-Level Domain (“gTLD”) “.shop” may be disregarded for the purposes of the

assessment under the first element, as the gTLD is viewed as a standard registration requirement (see
WIPO Overview 3.0, section 1.11.1).

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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 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 Complainant’s 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.

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 evidence demonstrates that the Complainant Carrefour S.A. holds prior rights in the ATACADAO and ATACADÃO trademarks, which predates the Respondent’s registration of the disputed domain name. The mere registration of a domain name that is confusingly similar to a well-known trademark by an unaffiliated party can, in itself, create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In addition, 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. WIPO Overview 3.0, section 3.3. In the present case, such a finding is reinforced by the following factors: (i) the Complainant’s ATACADAO and ATACADÃO trademarks are distinctive and well established; (ii) the Respondent has failed to submit a Response or provide any evidence of good-faith use; (iii) the Respondent has sought to conceal its identity through the use of a privacy service; and (iv) there is no conceivable good-faith use to which the disputed domain name could be put.

The Panel finds that the Complainants have established the third element of the Policy.

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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 <cartaoatacadao.shop> be transferred to the Complainants.

/Estela Mariel de Luca/
Estela Mariel de Luca
Sole Panelist
Date: September 26, 2025