Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v; Mauro Levi Dancona, HMF
WIPO Case No. DAI2024-0076
•06-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v.
Mauro Levi Dancona, HMF
Case No. DAI2024-0076
1. The Parties
The Complainants are Carrefour SA (the “First Complainant”), France, and Atacadão - Distribuição, Comércio E Indústria LTDA. (the “Second Complainant”), Brazil, represented by IP Twins, France.
The Respondent is Mauro Levi Dancona, HMF, Brazil.
2. The Domain Name and Registrar
The disputed domain name <atacadao.ai> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2024. On December 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2024, 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 December 6, 2024, 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 December 9, 2024.
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 December 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2024. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on January 3, 2025. The late supplemental filing in response to the late Response.
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The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on January 23, 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 is a worldwide leader in the hypermarket segment since 1968. It operates more than
12,000 stores with more than 384,000 employees worldwide and there are 1.3 million daily visitors at its
stores.
The Second Complainant is a Brazilian chain of wholesale stores established in 1960 and acquired by the than 70,000 employees, the Second Complainant is one of the largest wholesale networks in Brazil.
The Second Complainant began an internationalization program, expanding its activities to other countries beyond Brazil. Since the Second Complainant is part of the Carrefour Group, the Complainants have opted to join in the present Complaint.
Both Complainants are hereinafter referred to as “the Complainant.”
The Complainant is the owner of several ATACADAO and ATACADÃO trademarks registered well before the registration of the disputed domain name, such as:
1. European Union trademark ATACADAO No. 012020194, registered on May 24, 2015, designating
services in international class 35;
2. Brazilian trademark ATACADÃO No. 006785344, registered on October 10, 1978, covering goods in
class 31; and
3. Brazilian trademark ATACADAO No. 006937497, registered on May 25, 1979, covering services in
class 35.
The Complainant also owns numerous domain names comprising the mark ATACADAO, including the domain name <atacadao.com.br>, registered on October 9, 1997.
The Respondent is Mauro Levi Dancona, HMF, from Brazil. containing various advertisements.
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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.
The Complainant argues that the disputed domain name is identical to the Complainant’s trademark.
According to the evidence presented by the Complainant, the disputed domain name resolves to a pay-per- click webpage containing various advertisements and misleading Internet users and generating revenue through click-through advertisements.
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There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant finds that the disputed domain name is used to take unfair advantage of the Complainant’s rights for commercial gain, since Internet users and the Complainant’s customers would inevitably associate the content related to the disputed domain name with the Complainant’s prior trademarks.
The Complainant stresses that the Respondent is not commonly known by the term “atacadao.”
According to the Complainant, it has prior rights over its trademarks and has not authorized the registration and use of the disputed domain name, nor the use of its trade name and trademarks by the Respondent.
The Respondent is not affiliated to or authorized by the Complainant to use or register the disputed domain name.
The Complainant’s trademark rights predate the registration of the disputed domain name.
The Complainant argues that the Respondent was aware of the Complainant’s rights and has clearly registered the disputed domain name to target the Complainant’s trademark, and that the registration of the disputed domain name was conducted in bad faith.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent failed to comply with the deadline indicated in the Notification of Complaint and
Commencement of Administrative Proceeding for the submission of the Response in the present case.
In its late response of January 11, 2025, the Respondent sent an email stating that he acquired the disputed domain name with the bona fide intention of utilizing it for HMF (his company)’s online operations in Brazil and denied any intent to capitalize on any existing trademark or engage in cybersquatting. The Respondent furthermore stated that his company’s focus lies in the development and implementation of cutting-edge artificial intelligence (“AI”) solutions and that it is currently developing a sophisticated AI model designed to revolutionize the retail sector. Lastly, the Respondent argued that “Atacadão” is a widely recognized term in Portuguese, denoting a large-scale wholesale or retail operation.
He also offered the disputed domain name for sale to the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to the trademarks or service marks in
which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
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6.1 Preliminary Issues
Late Response and the Complainant’s Supplemental Filing
Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint. On the other hand, paragraph 10(b) of the Rules requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case.
The Response was received after the due date. Considering the overall circumstances of the case, and also noting the fact that the Response was filed before the appointment of the Panel – and that the Complainant filed a supplemental filing itself, and that the delay has not delayed the resolution of this proceeding, the Panel accepts the late filing of the Response.
The Panel notes that the Center received an unsolicited supplemental filing from the Complainant on January 20, 2025. The Panel notes that the supplemental filing by the Complainant was filed as a response to the Respondent’s late Response, and, hence, contains nothing that the Complainant could have brought forward with its Complaint already. Therefore, the Panel decided to take the Complainant’s supplemental filing into account when rendering his decision.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
The Complainant’s marks are recognizable within the disputed domain name. Accordingly, the disputed domain name is identical to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the addition of the country code Top-Level Domain “.ai” does not prevent a finding of confusing similarity for the purposes of the Policy. WIPO Overview 3.0, section 1.11.1.
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 Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, in his late Response, argued that it registered the disputed domain name to develop a sophisticated AI model designed to revolutionize the retail sector by optimizing operational efficiency and enhancing customer
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experiences and that the word “atacadao” in Portuguese means retail. However, the Respondent failed to
provide any evidence to show that it made demonstrable preparations to use the disputed domain name
within this project. Claimed examples of demonstrable preparations to use a domain name in connection
with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible
and supported by relevant pre-complaint evidence. WIPO Overview 3.0, section 2.2. The Panel
acknowledges that the disputed domain name would be descriptive for an AI project in the retail sector,
however noting that the Respondent is located in Brazil, where the Complainant’s trademarks have a strong
reputation, and that it has provided no evidence to support its business project claims, the Panel finds that
the Respondent has not rebutted 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 notes that the Respondent in its late Response stated that it is open to considering a monetary
offer for its acquisition, which noting the circumstances of the case, does not support a claim to fair use.
Furthermore, the disputed domain name resolves to a parking website offering pay-per-click links. UDRP
panels agree that such use where PPC links compete with or capitalize on the reputation and goodwill of the
complainant’s trademark or otherwise mislead Internet users, does not represent a bona fide offering.
WIPO Overview 3.0, section 2.9.
The Panel finds the second element of the Policy has been established.
C. Registered and Used 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 Respondent more likely than not was aware of the Complainant’s business, its trademark registrations, and domain name predate the registration date of the disputed domain name. Moreover, the Complainant is well known in Brazil, where the Respondent is reportedly located.
Moreover, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its trademarks pursuant to paragraph 4(b)(iv) of the Policy.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.
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 <atacadao.ai> be transferred to the Complainant.
/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: February 6, 2025
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