Carrefour SA and Atacadão S.A. v Name Redacted

WIPO Case No. D2025-0825

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA and Atacadão S.A. v. Name Redacted

Case No. D2025-0825

1. The Parties

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

The Respondent is Name Redacted,[1] France.

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <b2b-atacadao.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2025. On February 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 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 Registrant) and contact information in the Complaint. The Center sent an email communication to the Complainants on March 4, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 7, 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 March 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2025. On March 18, 2025, a third party contacted the Center noting that the disputed domain name had been fraudulently registered using their name and mailing address. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2025.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on April 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

The Complainant Carrefour SA, a company registered in France and listed on the Paris Stock Exchange, is a world leader in retail goods sales, which pioneered in 1968 the creation of the first hypermarkets. In 2023, it operated more than 14,000 stores in 40 countries on several continents, with global net sales of EUR 84.9

billion.

The Complainant Atacadão S.A. a company founded in Brazil in 1960, operates more than 300 hypermarkets and stores in Brazil with over 70,000 employees, and is a subsidiary of Carrefour SA since 2007. It is the largest retail distributor in Brazil and started an internationalization program in 2010, opening stores in countries outside Brazil, including in France in 2024.

The Complainant Carrefour SA owns the European Union trademark No. 012020194 for ATACADAO, registered on May 24, 2015, and the Complainant Atacadão S.A. owns a large portfolio of trademarks containing the element ATACADAO, including the Brazilian trademarks No. 006785344 and No. 006785360,

both registered on October 10, 1978 (all together hereinafter referred to as: “the Mark”).

The Complainant Atacadão S.A. also owns the <atacadao.com.br> domain name, registered on October 9,

1997, and many other domain names related to its activities, incorporating the element “atacadao”.

The Complainants provided evidence that one of their French competitors was a victim of identity theft.

The disputed domain name was registered on January 27, 2025.

The disputed domain name resolved to a “domain suspension” page, and at the time of the Decision, does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

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 contend that the disputed domain name reproduces the Mark, in which they have rights, and is confusingly similar to the Mark insofar as the disputed domain name contains the Mark and that the generic element “b2b-” before the Mark is not capable to prevent a finding of confusing similarity, as the

Mark remains recognizable in the disputed domain name.
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The Complainants also contend that the Respondent has no rights or legitimate interests in respect of the
disputed domain name and never had any affiliation with the Complainants (which never authorized the
Respondent to use the Mark in any manner).

Furthermore, the Complainants contend that the Respondent had knowledge of the Mark and registered the disputed domain name in bad faith, and is also using it in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Procedural Aspects

A. Consolidation – Multiple Complainants

The Complaint contains an implied request for consolidation as it was submitted by two Complainants.

The Panel notes that the Complainants are companies within the same corporate group. Atacadão S.A. is a subsidiary of Carrefour SA and each of these companies holds one or more trademarks which correspond with the disputed domain name in this proceeding.

Furthermore, the Panel finds that the Respondent engaged in a common conduct which has affected the
Complainants in a similar fashion and that the Complainants have a specific common grievance against the

Respondent.

After giving due consideration to paragraph 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected granting the requested consolidation would be detrimental to the interests of the Respondent.

Accordingly, in the interest of procedural efficiency, the Panel accepts this complaint filed by multiple
complainants against a single respondent, The Panel will henceforth refer to the Complainants as: “the

Complainant”.

B. Respondent’s Failure to Respond

As aforementioned, no Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

The Panel does not find any exceptional circumstance in this case which would cause the Panel to proceed differently.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the
Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types

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of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that
the Respondent has any rights or legitimate interests in the disputed domain name, such as making
legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of Paragraph 4(a) of the Policy

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.

Based on the available record, the Panel finds 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 that the Mark is recognizable 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.

While the addition of another term here, such as “b2b” (followed by a hyphen), may bear on the assessment
of the second and third elements, the Panel finds the addition of such term 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.

Regarding the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name, it is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1.

Based on the available record, 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.

While 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 often impossible 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. 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 record, the Panel finds the Complainant has established a prima facie case that the 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.

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Based on the available record, 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.

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. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While 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, (iii) the respondent’s concealing its
identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) 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 record, the Panel notes the composition of the disputed domain name, which is confusingly similar to the Mark and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Furthermore, regarding the degree of distinctiveness or reputation of the Mark, many prior UDRP panels confirmed that the Mark is distinctive and well-known (see for instance Atacadão - Distribuição, Comércio E Indústria LTDA. v. seong-chea park, WIPO Case No. D2022-4615; Carrefour SA and Atacadão S.A. v. atacado varejo, WIPO Case No. D2023-3011; Carrefour S.A., Atacadão S.A. v. Gabriel Silva, WIPO Case No. D2023-4424; Carrefour SA and Atacadão S.A. v. Jaay Shop, privada, WIPO Case No. D2023-5152 and Carrefour SA, Atacadão S.A. v. ELIANE COSTA, WIPO Case No. D2024-1077). The Panel thus finds it impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark.

Moreover, as noted above, the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use.

In addition, the Panel finds it impossible to imagine any good faith use to which the disputed domain name could be put by the Respondent.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <b2b-atacadao.com> be transferred to the Complainant.

/Louis-Bernard Buchman/
Louis-Bernard Buchman
Sole Panelist
Date: April 17, 2025

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.