Carrefour SA and Atacadão S.A. v beatriz alves and Murilo Oliveira

WIPO Case No. D2025-3120

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA and Atacadão S.A. v. beatriz alves and Murilo Oliveira

Case No. D2025-3120

1. The Parties

The Complainants are Carrefour SA, France, and Atacadão S.A., Brazil, represented by IP Twins, France.

The Respondents are beatriz alves, Brazil and Murilo Oliveira, Brazil.

2. The Domain Names and Registrar

The disputed domain names <atacadaocard.space>, <atacadaopay.site>, and <atacadaopay.store> are 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 5, 2025. On August 6, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 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 (Domain Admin, Privacy Protect, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainants on August 12, 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 August 13, 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 15, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 4, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 5, 2025.

The Center appointed WiIliam A. Van Caenegem 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

Carrefour SA is a worldwide retail chain, having pioneered the concept of hypermarkets from 1968. It had revenues of 83 billion Euros in 2022 and is listed on the Paris Stock Exchange (CAC 40) and operates more than 12,000 stores in more than 30 countries. Atacadão S.A. is a Brazilian chain of wholesale and retail stores established in 1960 and acquired by Carrefour SA in 2007. In March 2025 Atacadão S.A. was ranked as the No 1 chain in Brazil with 379 locations and 76,728 employees. The Panel will refer to the Complainants as the “Complainant” hereinafter.

The Complainant is owner of several ATACADAO and ATACADÃO registered trademarks including
European Union Intellectual Property Office (“EUIPO”) trademark ATACADAO No. 012020194, registered on
May 24, 2015, and designating services in international class 35; Brazil Instituto Nacional da Propriedade
Industrial (“INPI”) trademark ATACADÃO No. 006785360, registered on 10 October 1978, duly renewed and
designating goods in international class 29; Brazil - INPI trademark ATACADÃO No. 006785344, registered
on October 10, 1978, duly renewed and designating goods in class 31; and Brazil - INPI trademark
ATACADAO No. 006937497, registered on May 25, 1979, duly renewed and designating services in class
35.

In addition, the Complainant is also the owner of numerous domain names identical to, or comprising, its trademarks, both within generic and country code Top-Level Domains. For instance, <atacadao.com.br> has been registered since 1997.

The disputed domain names were all registered on the same date: June 17, 2025. None of the disputed domain names resolve to an active website.

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 contends that the disputed domain names are confusingly similar to its earlier well-
known ATACADAO trademarks since they reproduce those marks together with the words PAY and CARD
on either of the disputed domain names. According to the Complainant, it is established that the addition of
a generic term to a well-known trademark in a domain name does nothing to diminish the likelihood of
confusion arising from that domain name. The Complainant adds that both the terms are very closely
connected to the Complainant’s credit card business, so that average Internet users will likely believe that
the disputed domain name is affiliated with or endorsed by the Complainant, which it is not.

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Further, the Complainant says it performed searches and found no ATACADAO (or similar term) trademark owned by the Respondents, so that it is apparent that the Respondents have no rights in the disputed domain name. Further, the Respondents reproduce the Complainant’s earlier registered trademarks in the disputed domain names without its license or authorization. The disputed domain names do not resolve to active websites, but rather parked domain pages provided by the Registrar, and error pages and landing pages do not constitute a bona fide offering of goods or services under the Policy, the Complainant contends. The latter further submits that it has made out a prima facie case concerning the Respondents’ lack of right or legitimate interest in the disputed domain names, in line with the Policy. None of the circumstances which set out how a Respondent can prove rights or legitimate interests in the disputed domain names are present in this case, the Complainant says.

disputed domain names with the Complainant’s name and trademarks in mind. The marks appear within the disputed domain names in their entirety, deliberately misleading Internet users and falsely suggesting an affiliation with the Complainant, the latter maintains. The Respondents’ choice of domain names must have been influenced by the fame of the Complainant and its earlier trademarks, and the Complainant points out that UDRP Panels have consistently found that the mere registration of a domain name that is confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Complainant adds that it is highly likely that the Respondents chose the domain names because of their similarity to a trademark in which the Complainant has rights and a legitimate interest. The	The Complainant further submits that there can be no doubt that the Respondents have registered the the Complainant’s services and products would instead come across the disputed domain names and to create confusion with the Complainant’s mark. A quick trademark search would have revealed to the Respondent the existence of the Complainant and its registered trademarks. Thus, the Complainant contends that the Respondents’ failure to do so is a contributory factor to its bad faith.
In addition, the disputed domain names do not resolve to active websites, but rather standard registrar landing pages, and the Complainant points out that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed 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 considers 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 that the disputed domain names were registered within the course of one hour; that all the disputed domain names have a

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common Registrar, that being HOSTINGER operations, UAB; all the disputed domain names are delegated to standard Hostinger nameservers; all of the disputed domain names have a similar pattern, beginning with “atacadao” and are followed by another English word related to payment: “Pay” in the case of two domain

names and “card” in the other; at the time of filing, all the disputed domain names resolved to either a blank undoubtedly famous; and finally both Registrant email addresses are from Gmail, with no clear relationship to the registrant names.

page or an error message; according to the information provided by the concerned Registrar, both the

Considering all these similarities, the disputed domain names are likely to be under common control. As regards fairness and equity, the Panel sees no reason why consolidation would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

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 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.

The Panel finds the ATACADAO mark is recognizable within each of the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the registered ATACADAO mark of the

Complainant for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 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 Complainant has not authorized the use of its ATACADAO mark in any form by the Respondent, and the latter has not put in evidence any prior trademark rights. The Respondent has not made any active use of the disputed domain names that could otherwise give rise to rights or legitimate interests.

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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 registered multiple domain names incorporating the ATACADAO trademark of the Complainant, with a similar pattern of addition of a generic term. It is highly unlikely that this came about coincidentally, given also the distinctive nature and well-established reputation of the ATACADAO mark, in particular in Brazil where the Respondent purports to reside. In any case, a simple search of the Internet or trademark register would have immediately revealed the rights of the Complainant in the ATACADAO marks.

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. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain names, 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.

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 <atacadaocard.space>, <atacadaopay.site>, and

<atacadaopay.store> be transferred to the Complainant.

/WiIliam A. Van Caenegem/
WiIliam A. Van Caenegem
Sole Panelist
Date: September 28, 2025.