Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v; Gian Luca Grillo Marques

WIPO Case No. D2025-1594

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v.
GIAN LUCA GRILLO MARQUES

Case No. D2025-1594

1. The Parties

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

Brazil, represented by IP Twins, France.

The Respondent is GIAN LUCA GRILLO MARQUES, Brazil.

2. The Domain Name and Registrar

The disputed domain name <realatacadaocombr.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2025. On April 22, 2025, the Center sent an email to the Registrar requesting information in connection with the disputed domain name. On April 23, 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 provided in the Complaint. On April 25, 2025, the amended Complaint on May 1, 2025.

Center sent an email to the Complainant providing the registrant and contact information disclosed by the
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 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2025.

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The Center appointed Simone Lahorgue Nunes as the sole panelist in this matter on June 10, 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

Carrefour SA is a worldwide leader in retail and operates more than 12,000 stores in more than 30 countries. established in 1960 and acquired by Carrefour group in 2007.

Both companies are hereinafter jointly referred to as “the Complainant”.

The Complainant has provided evidence of being the right holder of the trademark ATACADAO and
ATACADÃO in several jurisdictions, hereinafter referred both together as “ATACADAO”. For instance:
European Union Trademark Registration No. 012020194, registered on May 24, 2015; Brazilian Trademark
Registrations No. 006785344 and No.006937497, registered on October 10, 1978, and May 25, 1979;
French Trademark Registration No. 4981135, registered on November 10, 2023; and African Intellectual

Property Organization Trademark Registration No. OA/3/2012/002570, registered on February 28, 2013.

The disputed domain name <realatacadaocombr.com> was registered on April 1, 2025, by the Respondent.

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

The website of the disputed domain name is out of service.

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 name.

First of all, regarding the language of the proceeding, the Complainant contends that, although the publicly available WhoIs information for the disputed domain name <realatacadaocombr.com> does not indicate the language of the Registration Agreement, the Registrar, PDR Ltd. d/b/a PublicDomainRegistry.com, operates exclusively in English - through its website, customer interface, support services, and contractual

documentation -creating a strong presumption that the Registration Agreement is in English and that the proceeding should therefore be conducted in English. Alternatively, should the Agreement be in another language, the Complainant requests that the Panel exercise its discretion to proceed in English, noting that
the disputed domain name is inactive, contains no content that would reflect the Respondent’s language

preferences, and that requiring translation would result in unnecessary cost and delay.

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s
trademark: ATACADAO. The Complainant is the owner of multiple trademark registrations for ATACADAO
in various jurisdictions, including Brazil, with rights dating back to October 10, 1978. The Complainant
contends that the disputed domain name reproduces the Complainant’s trademark, which panels in earlier
UDRP cases have considered to be well-known (see e.g., Carrefour SA, Atacadão S.A. v. Bento Ferreira,
Amelio Herl, WIPO Case No. D2024-3706; Carrefour S.A and 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).

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The Complainant contends that the disputed domain name <realatacadaocombr.com> reproduces the trademark “atacadao” in its entirety. The addition of the terms “real” and “combr” does not prevent a finding of confusing similarity.

The Complainant argues that the Respondent has no rights or legitimate interests in respect to the disputed the disputed domain name or any corresponding name”.
domain name and that the disputed domain name was registered and is being used by him in bad faith.
According to the Complainant, it “has never authorized, licensed, or otherwise permitted the Respondent to
use its trademarks ATACADAO or ATACADÃO in any manner, including in a domain name. The Respondent
is not affiliated with the Complainant and has no business or contractual relationship with the Complainant”.

Moreover, the Complainant claims that the disputed domain name is not being actively used and resolves to an error page, indicating that it has never been used in connection with a bona fide offering of goods or services. According to the Complainant, “the choice of these terms gives the impression of an official or localized version of the Complainant’s services in Brazil. This kind of construction is commonly associated with cybersquatting, not with legitimate commercial or non-commercial use”. The Complainant further submits that “there is also no indication that the Respondent is making any fair or noncommercial use of the disputed domain name without intent for commercial gain. On the contrary, the domain appears to have been registered solely to take advantage of the reputation of the Complainant’s trademark”.

The Complainant asserts that, at the time of registration of the disputed domain name, the Respondent could not plausibly have been unaware of the Complainant’s well-known rights in the ATACADAO and ATACADÃO marks, particularly given the Complainant’s extensive operations in Brazil.

Finally, according to the Complainant, “even though the domain currently leads to an error page, it could be activated at any time for phishing, impersonation, or fraudulent schemes targeting consumers familiar with the Complainant’s ATACADAO trademark”.

Therefore, the Complainant requests the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

The analysis of the Complainant’s arguments and of the presented evidence leads to the conclusion that the

Complaint should be upheld, based on the following grounds:

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 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.

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The entirety of the ATACADAO 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 “real” and “combr” 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.

In light of these factors, the Panelist finds the first element of the Policy has been met.

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.

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 name.

Additionally, the composition of the disputed domain name falsely suggests affiliation with the Complainant and points to an intention to confuse Internet users by leading them to think that the disputed domain name belongs to the Complainant or to one of the Complainant’s group of companies. The Respondent did not

provide any explanation whatsoever for the registration of the disputed domain name, and likewise, no
evidence has been adduced that the Respondent has been commonly known by the disputed domain name

or by the name “Real Atacadao”.

In light of these factors, the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel notes that, for the purpose of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the same Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and is being 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 notes the Respondent’s bad faith registration and use of the disputed domain name for the following reasons:

The use of the trademark in the disputed domain name with the inclusion of the terms “real” and “combr” suggests that the Respondent has registered the disputed domain name with the actual knowledge of the Complainant and its trademarks, and has done so in an attempt to create a likelihood of confusion with the

Complainant.

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 or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case of passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

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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 name <realatacadaocombr.com> be transferred to the Complainant.

/Simone Lahorgue Nunes/
Simone Lahorgue Nunes
Sole Panelist
Date: June 24, 2025