Carrefour SA and Atacadão S.A. v Sandro Amorim, Jsjsj Jdnd, Ruan Bruno

WIPO Case No. D2024-4835

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA and Atacadão S.A. v. Sandro Amorim, Jsjsj Jdnd, Ruan Bruno,
jederson railson, Francisco Kaique da Rocha, Esquina do Desconto BR,
Sandro Amorim Ferreira, Atacadao BRAS, Jose Andrade, Minha loja, Joao
Camargo, Minha loja, Mario Rodrigues, Minha loja, Luiz Antonio, Minha loja,
Carlos Almeida, Minha loja, Marcos Assis, Minha loja, EDISON COSTA, Loja
Online, Gisele Lima, My Store, rosana lima, Minha loja, fernanda lima, Minha
loja, Marcos Henrique, Loja Online, Maycon Gomes, Loja Online, Maria
Braga, Minha loja, NELSON LEANDRO DA SILVA, Sergio Moro, Juliano
Batista, talita rosa da silva, TLT PAG

Case No. D2024-4835

1. The Parties

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

The Respondents are Sandro Amorim, Brazil, Jsjsj Jdnd, Brazil, Ruan Bruno, Brazil, jederson railson, Brazil, lima, Minha loja, Brazil, Marcos Henrique, Loja Online, Brazil, Maycon Gomes, Loja Online, Brazil, Maria Braga, Minha loja, Brazil, NELSON LEANDRO DA SILVA, Brazil, Sergio Moro, Brazil, Juliano Batista, Brazil, and talita rosa da silva, TLT PAG, Brazil.
Francisco Kaique da Rocha, Esquina do Desconto BR, Brazil, Sandro Amorim Ferreira, Atacadao BRAS,
Brazil, Jose Andrade, Minha loja, Brazil, Joao Camargo, Minha loja, Brazil, Mario Rodrigues, Minha loja,

Brazil, Luiz Antonio, Minha loja, Brazil, Carlos Almeida, Minha loja, Brazil, Marcos Assis, Minha loja, Brazil,

2. The Domain Names and Registrars

The disputed domain name <atacadao-bras.com> is registered with Gransy, s.r.o. d/b/a subreg.cz

(hereinafter, “Registrar A”);

the disputed domain name <atacadaobras.shop> is registered with GoDaddy.com, LLC (hereinafter,

“Registrar B”);

the disputed domain names <atacadaobrass.shop>, <atacadao-do-bras.shop>, <atacadaoobras.shop>,
<atacadobras.site>, <lojaatacadao.site>, <mercadoatacadaobrasil.com>, <mercadosatacadao.com>, and
<supermercadoatacadao.site> are registered with Hostinger Operations, UAB (hereinafter, “Registrar C”);

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and the disputed domain names <atacadaobras.com>, <atacadao-bras.store>, <atacadaobroficial.com>,
<atacadaoficialbr.com>, <atacadaomercadobrasil.com>, <atacadaoofcbrasil.com>,
<atacadaosupermercado.com>, <atacadobrasiloferta.com>, <atacadocomofertas.com>,
<atacadofertasdodia.com>, <atacadofertaspromocional.com>, <atacadofertaspromo.com>,
<atacadoofertasbrasil.com>, <atacadoutletbrasil.com>, and <mercadoatacadaobr.com> are registered with

Tucows Domains Inc. (hereinafter, “Registrar D”) (collectively the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22,
2024. On November 25, 2024, the Center transmitted by email to the Registrars a request for registrar
verification in connection with the disputed domain names. On November 25 and 26, 2024, the Registrars
transmitted by email to the Center the verification responses disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Contact Privacy Inc., Not Disclosed
Not Disclosed, Privacy Protect, LLC (PrivacyProtect.org), Registration Private/Domains By Proxy, LLC,
Repossessed by Go Daddy, and Unknown) and contact information in the Complaint.

The Center sent an email communication to the Complainant on November 27, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar(s), requesting the Complainant 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 submitted a first amended Complaint. On January 27, 2025, the Complainant submitted a second amended Complaint.

and/or that all domain names are under common control. On the same day, the Center sent an email
regarding the possible settlement. On November 28, 2024, the Complainant submitted a request to suspend
the proceeding. On November 29, 2024, the Center informed the Parties that the proceeding was
suspended until December 28, 2024, for purposes of settlement discussions. On December 13, 2024, the
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the
Complaint, and the proceedings commenced on January 29, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 18, 2025. On February 4, 2025, the Center received an email
from a Respondent. On the same day, the Center sent an email regarding the possible settlement. On
February 10, 2025, the Complainant submitted a request to suspend the proceeding. On February 10, 2025,
the Center informed the Parties that the proceeding was suspended until March 12, 2025. On February 17,
2025, the Complainant confirmed that the settlement has been implemented and requested reinstitution of
the proceeding. On February 17, 2025, the Center confirmed that proceeding was reinstituted, and the
Response due date is February 25, 2025. The Respondents did not submit any formal response.
Accordingly, the Center notified the commencement of panel appointment process on February 26, 2025.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 5, 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

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4. Factual Background

The first Complainant, Carrefour SA, is a company specializing in retail/hypermarkets, with reported revenues of EUR 84.9 billion in 2023. The Complainant is listed on the Paris Stock Exchange (CAC 40) and operates more than 14,000 stores in over 40 countries globally, with a complement of over 500,000 employees and millions of daily visitors to its stores. The second Complainant, Atacadão S.A., is a Brazilian chain of wholesale and retail stores established in 1960 and acquired by the First Complainant in 2007. It is the largest wholesale network in Brazil and has over 300 stores and distribution centers in all the Brazilian states and a complement of more than 70,000 employees.

The first and second Complainants own various ATACADAO and ATACADÃO trademarks, dating from well before the date of registration of the disputed domain names.

For example, the first Complainant is the owner of European Union Registered Trademark Number
12020194 for the word mark ATACADAO, registered on May 24, 2015, in Class 35. The second
Complainant is the owner of Brazilian Registered Trademark Number 6785360 for the word mark
ATACADÃO, registered on October 10, 1978, in (national) Classes 2910, 2930, 2940.

The second Complainant is also the owner of the domain name <atacadao.com.br>, registered since October 9, 1997, which it uses in connection with its official website. Furthermore, the Atacadão S.A. Facebook page has more than three million followers and ‘likes’ respectively. The ATACADÃO mark features in official rankings, among which are the “biggest Brazil brands”, and the “best Latin America brands” (evidence provided).

The 25 disputed domain names that are the subject of this proceeding are passively held, although a variety
have been hosted on the “Shopify” hosting service and display an error message generated by that host.
Full details relating to each disputed domain name’s activity are listed in section 6.3 below. Eight of the
disputed domain names were previously observed by the Complainant to point to websites impersonating the
Complainant (evidence provided). Full details of these domain names are listed in section 6.3, paragraph
(11) below.

For ease of reference, the disputed domain names have each been allocated an ID number and will be referred to hereinafter as “ID1”, “ID2”, etc. These ID numbers are assigned by date of registration and are different from those in the list provided by the Complainant. The Panel has not used the Complainant’s ID numbers because these contained additional domain names that are no longer the subject of this proceeding. It should be noted that all of the disputed domain names were registered within a four-month window in 2024.

ID	Domain Name	Registrar	Registration Date	Website observed by
Number	the Complainant
1	atacadaobras.com	D	August 9, 2024	Error Shopify
2	atacadaobras.shop	B	September 7, 2024	Shopify unavailable
3	atacadaomercadobrasil.com	D	September 24, 2024	Error Shopify
4	atacadaosupermercado.com	D	September 27, 2024	Error page
5	atacadaobroficial.com	D	October 2, 2024	Error page
6	mercadosatacadao.com	C	October 2, 2024	Error Shopify
7	atacadaoofcbrasil.com	D	October 5, 2024	Error page
8	atacadaoficialbr.com	D	October 7, 2024	Error page
9	mercadoatacadaobrasil.com	C	October 10, 2024	Error page
10	atacadoofertasbrasil.com	D	October 11, 2024	Error page
11	mercadoatacadaobr.com	D	October 11, 2024	Error page
12	atacadobrasiloferta.com	D	October 21, 2024	Error page

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13	atacadofertasdodia.com	D	October 22, 2024	Error page
14	atacadofertaspromo.com	D	October 23, 2024	Error page
15	atacadofertaspromocional.co	D	October 23, 2024	Error page
m
16	atacadoutletbrasil.com	D	October 24, 2024	Error page
17	atacadocomofertas.com	D	November 1, 2024	Error page
18	atacadobras.site	C	November 9, 2024	Error page
19	lojaatacadao.site	C	November 9, 2024	Error page
20	supermercadoatacadao.site	C	November 9, 2024	Landing page
21	atacadaoobras.shop	C	November 13, 2024	Landing page
22	atacadao-bras.com	A	November 14, 2024	Error Shopify
23	atacadao-bras.store	D	November 14, 2024	Error Shopify
24	atacadaobrass.shop	C	November 14, 2024	Error Shopify
25	atacadao-do-bras.shop	C	November 15, 2024	Landing page

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 each confusingly similar to the coupled with other terms that do not diminish the likelihood of confusion, some of which share a vowel with said mark to create a blended term, which the Complainant describes as “crasis” (see section 6.3, paragraph 10 below).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names on the basis that the Respondent does not appear to possess a corresponding trademark, there is no evidence that the Respondent has been commonly known as any of the disputed domain names, the Complainant has given no permission or license to the Respondent to register or use its mark in the disputed domain names, the Respondent has made no preparations to use the disputed domain names in relation to a bona fide offering of goods or services, certain of the disputed domain names have been used previously to impersonate the Complainant in connection with e-commerce websites (see section 6.3, paragraph 11 below), although such use has ceased only a few weeks after the disputed domain names concerned were registered, and there are publicly available complaints listed in relation to activities carried out under the “Atacadao Bras” name (evidence provided), while there has been no other use with regard to the other disputed domain names, being neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. The Complainant concludes that the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain names.

The Complainant contends that the disputed domain names have been registered and are being used in bad names, and also to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the associated websites. The Complainant adds that the Respondent has in some cases intentionally attempted to benefit from the Complainant’s renown by using

faith, adding that there can be no doubt that the Respondent has registered these with the Complainant’s
name and trademarks in mind, due to the fame and longstanding nature of said marks, and the inclusion of
said marks in the disputed domain names falsely suggests an affiliation with the Complainant. The
Complainant asserts that the disputed domain names were selected in the hope and expectation that

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rogue websites or fraudulent e-commerce sites, diverting Internet users from the Complainant’s official site
by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the Respondent’s websites, noting that the fact that the disputed domain names point to
error pages does not prevent a finding of bad faith given the distinctiveness and reputation of the
Complainant’s mark, the composition of the disputed domain names, the lack of any response from the
Respondent, and the fact that the disputed domain names appear to be under the common control of a
single person or entity which is using the disputed domain names for nefarious purposes. The Complainant
submits that the disputed domain names cannot support a claim to fair use as they effectively impersonate or

suggest sponsorship or endorsement by the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Erroneous Registrar Transfer

On December 17, 2025, the registrar of the disputed domain name ID2, Registrar B, informed the Center that
the said disputed domain name had been moved inadvertently to an account of the Complainant during the
implementation of a settlement regarding two other domain names which had formed part of the original
Complaint. The said disputed domain name was then transferred to the Complainant’s chosen registrar and
appears to have been locked with status “serverTransferProhibited”. The gaining registrar informed the
Center that the disputed domain name was locked for 60 days following the inter-registrar transfer, until
February 12, 2025. The Center informed both of the registrars involved that the transfer took place during a
pending UDRP proceeding and that the 60-day lock post inter-registrar transfer should not have been
applied as such. The gaining registrar informed the Center on January 2, 2025 that it had contacted the
applicable registry operator in respect of the disputed domain name as it was unable to remove the lock
concerned, and further advised the Center on January 15, 2025 that it had yet to receive a response from the
registry operator.

On March 12, 2024, the Panel observed that the registrar of record of the disputed domain name appears to have been restored to Registrar B. Consequently, the Panel proceeds to a decision in respect of this particular disputed domain name in the usual way.

6.2 Consolidation: Multiple Complainants

WIPO Overview 3.0”), section 4.11.1.

The present Complaint is brought by two related entities, the first Complainant, Carrefour SA, having the complainants have a specific common grievance against the respondent(s), or the respondent(s) have engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“
acquired the second Complainant, Atacadão S.A. The Complainants did not make a specific submission
regarding consolidating their respective complaints against the Respondents, beyond stating that they have
opted to join in the Complaint, although it is clear from the thrust of their submissions as a whole that they
wish such consolidation to be permitted by the Panel.

The Panel finds that consolidation is equitable and procedurally efficient in the present case, and that the same corporate group, and their respective ownership of various trademarks cited in the Complaint. The Respondents appear to have engaged in common conduct that has affected the Complainants in a similar fashion. The Panel therefore orders consolidation of the Complainants’ respective Complaints.

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6.3 Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the disputed domain names’ 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 will consider 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 3.0, section 4.11.2.

As regards common control, the Panel finds that the following features, taken together, are sufficient to establish common control for present purposes:

(1) All the disputed domain names include the Complainant’s ATACADAO trademark (i.e., disputed domain
names ID1, ID2, ID3, ID4, ID5, ID6, ID7, ID8, ID9, ID11, ID19, ID20, ID21, ID22, ID23, ID24, and ID25), or
contain the close misspelling “atacado” (i.e., disputed domain names ID10, ID12, ID13, ID14, ID15, ID16,
ID17, and ID18);

(2) All of the disputed domain names feature a similar naming pattern, combining the Complainant’s said trademark or close misspelling and recurring terms, e.g., “bras” (disputed domain names ID1, ID2, ID18, ID21, ID22, ID23, ID24, and ID25), “brasil” (disputed domain names ID3, ID7, ID9, ID10, ID12, and ID16),

“br” (disputed domain names ID5, ID8, and ID11), “loja” (disputed domain name ID19, but see also Complainant’s business activities. Alternatively, said trademark is combined with misspellings of such words and/or other words or phrases in Brazilian Portuguese, e.g., the word for “official” and its Brazilian abbreviation “ofc” (disputed domain names ID7, and ID8), “outlet”, (disputed domain name ID16) “promo” or the word for ”promotional” (disputed domain names ID14 and ID15), and “do dia” (in translation, “of the day”) (disputed domain name ID13);
paragraph (8) below regarding registrant names containing this term), “mercado” (disputed domain names

ID3, ID4, ID6, ID9, ID11, and ID20), “oferta(s)” (disputed domain names ID10, ID12, ID13, ID14, ID15, and

(3) All of the disputed domain names were registered within a very short time frame, between August 9 and
November 15, 2024, while some share the same registration date (ID5/ID6, ID10/ID11, ID14/ID15,

ID18/ID19/ID20, and ID22/ID23/ID24);

(4) 15 of the 25 disputed domain names which were registered via Registrar C and Registrar D, namely,
disputed domain names ID4, ID5, ID7, ID8, ID9, ID10, ID11, ID12, ID13, ID14, ID15, ID16, ID17, ID18, and
ID19 were observed by the Complainant to resolve to error pages (this status is presently unchanged);

(5) 7 of the 25 disputed domain names registered via Registrars A, B, C, and D, namely disputed domain names ID1, ID2, ID3, ID6, ID22, ID23, and ID24 were originally observed by the Complainant to resolve to Shopify-hosted error pages (now all but one resolve to such pages, while the other no longer resolves,

namely, ID2, presumably having been deactivated following the erroneous transfer to the Complainant (see

section 6.1 above));

(6) 3 of the disputed domain names registered via Registrar C, namely disputed domain names ID20, ID21,
and ID25 were observed to resolve to landing pages (now resolving to error pages);

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(7) All of the disputed domain names feature registrants which are apparently based in Brazil, according to
the registrant address, which is where the Complainant is headquartered and well-known;

(8) 13 of the disputed domain names, all registered with Registrar D, feature registrants that appear to share the same or a similar organization name including the terms “My Store”, “Minha loja” (“My Store” in Brazilian Portuguese), and “Loja Online” (“Online Store” in Brazilian Portuguese), namely disputed domain names ID3,

ID4, ID5, ID7, ID8, ID10, ID11, ID12, ID13, ID14, ID15, ID16, and ID17. All of these disputed domain names are in the “.com” space;

(9) Disputed domain names ID6 and ID9 were registered by a single registrant and organization (registrant:
talita rosa da silva/TLT PAG). Disputed domain names ID19 and ID20 were also registered by a single
registrant (registrant: Juliano Batista). All of these particular disputed domain names were registered with

Registrar C between October and November, 2024;

(10) Disputed domain names ID8, ID13, ID14, and ID15 share a particular feature whereby the end of the
word representing the Complainant’s trademark (or a spelling variant) has its closing vowel blended with the
following word. Each of these disputed domain names were registered with Registrar D, all in October
2024);

(11) Of those disputed domain names which pointed to a website previously identified by the Complainant, disputed domain names ID3, ID4, ID6, ID7, ID9, and ID11 all previously impersonated the Complainant via websites of a similar appearance, despite such disputed domain names being registered by nominally

different registrants (with the exception of ID6 and ID9, which share a single registrant, talita rosa da
silva/TLT PAG) but are registered via Registrar C and Registrar D respectively. The same applies to ID5
and ID8, each registered via Registrar D, albeit that the related websites have been incompletely captured;

(12) The disputed domain names ID3 and ID4 were registered via Registrar D to registrants with the same street address and almost identical telephone numbers, within a period of three days in September 2024, despite being nominally different registrants with different email addresses. The disputed domain names ID22 and ID23 were registered via Registrar A and Registrar D respectively, on the same day, to registrants

with the same street and email address and the same first part of the registrant name, despite being
nominally different registrants with different telephone numbers. Two pairs of disputed domain names ID14
and ID15; and ID7 and ID11, were registered via Registrar D in October 2024 to registrants with the same
street address, within the pair concerned, despite being nominally different registrants with different
telephone numbers and email addresses. The registrants of disputed domain names ID13, ID14, and ID15,
all registered via Registrar D in a two-day period, share the same surname;

(13) The street addresses of multiple different registrants for domain names registered via Registrar B, domain names ID3, ID4, ID5, ID7, ID8, ID11, ID13, ID14, ID15, ID16, ID17, ID22, and ID23). The majority of contact email addresses associated with the disputed domain names share a similar naming pattern using a name which differs from the applicable registrant name, and a number of “surnames” in these email addresses are repeated across nominally different registrants, namely “peixo” (disputed domain names ID7, and ID11, “brito” (disputed domain names ID13, and ID14), and “abra” (disputed domain names ID4, ID11, and ID12); and

(14) Many of the characteristics described above are shared with domain names which were the subject of
previous complaints filed by the Complainant under the Policy, namely:

(a) Carrefour SA, Atacadão S.A. v. JOAO BATISTA DA SILVA; Elssa Santos; Digital Negocios; Angelo Silva; Leandro Pereira; Isaac Mateus Ryan Mendes; Stefany Beatriz; Agela Lima; MP LOPES; Israel Ribeiro, campo; Juceli Castanhari, Minha loja; mauricio peixoto, Minha loja; Miguel Souza, Minha loja; Elem Silveira, Minha loja; LATAM CARMO, My Store; Fernanda Stuart, My Store; Leticia Oliveira, Minha

loja; Gilvana Picini, Central Atacado; Marcos Souza freitas; Marcos Souza; Ze Pereira, My Store;
Gabriela Lorenzetti, My Store; Fernando Pacheco, My Store; Antonio Nunes de Araujo; Liz e Agatha

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Marketing ME; Bener Santos; Tyex Group / Livia de Miranda Barbosa Ltda; Karine Antunes / Karine Antunes Netto; keila maria; Bertha Carr; Dirceu Dos Santos; Anabel Marshall; Lenisia Felix; Pedro Henrique Oliver Construcoes ME; Amanda Stay; Jose Pereira / My Store; Joaquim Pereira / My Store;

Guilherme Soares, Minha loja; juggrr david; Rodrigo Da Silva Teruel; gui pax / megapromo; and Deecon

Suarez, WIPO Case No. D2024-3271;

(b) Carrefour SA and Atacadão S.A. v. Roberto Gomes, ATACADO 01; Marcelo Pereira, ATACADO 03;
Carlos Austin, My Store; Carlos Jose, My Store; Carlos Jose, Atacadao Brasil; Paulo Barbosa, ATACADO
07; Carlos Peixoto, My Store; Bruno Messias, My Store; Murilo Souza, My Store; Maria Souza, My Store;
Gabriela Lorenzetti, Atacado; Paulo Junior, Minha loja; Jose Carlos, Atacado 01; Murilo Gomes, My Store;
Bruno Soares, Atacado Mercado; Angelo Rossi, Minha loja; Pedro Peixoto, My Store; Paulo Wakanda, My
Store; Lucas Pereira, Minha loja; Paulo Borges, Minha loja; mistie mistieolivermoss; Renato Albani;
Anabel Marshall; Leandro Aparecido; Rodrigo sousa; Bento Ferreira; suport atacadao; Rosana Bueno;
talita rosa da silva, TLT PAG; Joao Vinicius, My Store; Paulo Borges, Minha loja., WIPO Case No.

D2024-3935; and

(c) Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v. ruslan cafeta, Sandro Amorim,
ELCIO ALVES, Raphael Sabatel, WebSolucoes LTDA, zed cabum, Drutt dd, DARLING SHOP CENTER
NEGOCIOS DIGITAIS LTDA, and Cristian Lindo, WIPO Case No. D2024-5060.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party, and none of the Respondents have entered appearance to oppose this.

Accordingly, the Panel decides to consolidate the disputes regarding all of the nominally different disputed domain name registrants in a single proceeding. For convenience, unless the context otherwise requires, the Panel will refer to the Respondents as “the Respondent”.

6.4 Substantive Issues

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 mark is recognizable within each of the disputed domain names. Accordingly, the
disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

As noted above, disputed domain names ID1, ID2, ID3, ID4, ID5, ID6, ID7, ID8, ID9, ID11, ID19, ID20, ID21, ID22, ID23, ID24, and ID25 include the Complainant’s ATACADAO trademark in its entirety. The disputed domain names ID10, ID12, ID13, ID14, ID15, ID16, ID17, and ID18 contain a close misspelling of the Complainant’s trademark, namely “atacado” as their first element. The Panel determines that this is a common, obvious, or intentional misspelling of a trademark and is therefore confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9.

The addition of such other terms as “br”, “bras”, “brasil”, “com”, “dodia”, “loja”, “mercado(s)”, “ofc”, “oferta(s)”, “oficial”, “outlet”, “promo”, “promocional”, and “supermercado” in the disputed domain names (whether or not sharing a vowel with the Complainant’s mark) does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.

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The Top-Level Domain suffix in respect of each of the disputed domain names is typically disregarded under the first element test. 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 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 Panel notes that the Complainant’s ATACADAO trademark predates the registration of the disputed domain names by the Respondent, and that the Complainant has made an uncontradicted assertion that it has neither licensed nor authorized the Respondent to use such mark in any domain name. The respective registrant names do not match the disputed domain names, and there is no evidence before the Panel that the Respondent has been commonly known by any of them. The evidence shows that the Respondent is not making any use of the disputed domain names, and that they are passively held, whereby the Respondent could not and does not argue that the disputed domain names are being used in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use thereof.

Disputed domain names ID3, ID4, ID5, ID7, ID8, ID10, ID11, ID12, ID13, ID14, ID15, ID16, and ID17 all reference “my store” by way of the registrant’s name, in English or in Brazilian Portuguese. Given the fame of the Complainant’s mark in connection with retail activities, notably in Brazil where the Respondent is based, the Panel cannot see any proposed or intended use of these disputed domain names for an online store (as the registrant’s name suggests) as conferring any rights or legitimate interests upon the Respondent. The same applies to disputed domain names ID1, ID2, ID3, ID6, ID22, ID23, and ID24, in the context that they were observed to resolve to Shopify-hosted error pages, suggesting the Respondent’s use or planned use in connection with online retail. Furthermore, there is specific evidence in this case that disputed domain names ID3, ID4, ID6, ID7, ID9, and ID11 all previously impersonated the Complainant via websites of a similar appearance. Such use cannot confer rights or legitimate interests upon the Respondent. The remaining disputed domain names ID18, ID19, ID20, ID21, and ID25 may have been passively held since their registration but the composition of such domain names suggests to the Panel in the absence of evidence to the contrary that they were intended for use in impersonating the Complainant and would presumably have been deployed for such purpose had the Complainant not filed the present Complaint within a very short period after their registration, and the Respondent could not claim corresponding rights or legitimate interests in those circumstances. Finally, the composition of all of the disputed domain names taken together suggests to the Panel that the Respondent intended to use these (as in some cases it did use them) to align itself misleadingly and confusingly with the Complainant’s business, given that all of them consist of the Complainant’s well-known mark, or a spelling variant, and the said mark

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has been combined with terms likely to be associated by the public with the Complainant’s business, namely
“br”, country code for Brazil, “bras” and “brasil”, referencing the local language name for Brazil and an
abbreviation, “loja” meaning “store”, “mercado(s)” meaning “market(s)”, “oferta(s)”, meaning “offers”, “ofc”
and “oficial”, meaning “official” and its abbreviation, “outlet”, “promo” and “promocional”, meaning “promotion”
and its abbreviation, and “supermercado”, meaning “supermarket”, all in Brazilian Portuguese.

The Respondent has remained silent in the face of the Complainant’s contentions and has not engaged with the present proceeding. There are no submissions or evidence available which might have supported any claim of rights or legitimate interests by the Respondent in respect of the disputed domain names, and the totality of the evidence suggests that no such claim would have been available to it. The Panel has been unable to determine any likely rights or legitimate interests which the Respondent might have claimed had it participated in the administrative proceeding.

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 Complainant has a substantial reputation by way of the ATACADAO trademark in Brazil, where the Respondent appears to be based, whereby it would be extremely implausible that the Respondent could have been unaware of the Complainant or its rights when it registered the disputed domain names. Furthermore, as discussed in the previous section, the coupling of such trademark or a spelling variant thereof in the disputed domain names with multiple terms that relate to the Complainant’s business, from “offers” to “official” to “supermarket” indicates to the Panel that the disputed domain names were registered with the Complainant firmly in the Respondent’s mind. Consequently, the Respondent pattern in the disputed domain names obviates any claim it might have had not to have been aware of the Complainant’s mark. WIPO Overview 3.0, section 3.2.2.

Furthermore, it cannot be overlooked that the Panel has found an absence of rights or legitimate interests in respect of all of the 25 disputed domain names as discussed in the preceding section. This is also suggestive of registration in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel finds that the disputed domain names have been used in bad faith. Disputed domain names ID3, ID4, ID6, ID7, ID9, and ID11 were all used to impersonate the Complainant before reverting to being passively held. There is every reason to believe that the remainder of the disputed domain names were intended for this purpose given their similarity in composition and registration date. It should also be noted that all of the disputed domain names are currently not used or “passively held”.

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.

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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 names <atacadao-bras.com>, <atacadaobras.com>, <atacadaobras.shop>,
<atacadaobrass.shop>, <atacadao-bras.store>, <atacadaobroficial.com>, <atacadao-do-bras.shop>,
<atacadaoficialbr.com>, <atacadaomercadobrasil.com>, <atacadaoobras.shop>, <atacadaoofcbrasil.com>,
<atacadaosupermercado.com>, <atacadobrasiloferta.com>, <atacadobras.site>, <atacadocomofertas.com>,
<atacadofertasdodia.com>, <atacadofertaspromocional.com>, <atacadofertaspromo.com>,
<atacadoofertasbrasil.com>, <atacadoutletbrasil.com>, <lojaatacadao.site>, <mercadoatacadaobrasil.com>,
<mercadoatacadaobr.com>, <mercadosatacadao.com>, and <supermercadoatacadao.site> be transferred

to the Complainant.

/Andrew D. S. Lothian/
Andrew D. S. Lothian
Sole Panelist
Date: March 19, 2025