Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA v; Fernando Dantas

WIPO Case No. D2025-1397

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA v.
Fernando Dantas

Case No. D2025-1397

1. The Parties

The Complainants are Carrefour SA, France (the “First Complainant”), and Atacadão - Distribuição,

Comércio E Indústria LTDA, Brazil (the “Second Complainant”), both represented by IP Twins, France.

The Respondent is Fernando Dantas, Brazil.

2. The Domain Name and Registrar

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

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2025. On
April 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 8, 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 in the Complaint. The
Center sent an email communication to the Complainants on April 9, 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 April 10, 2025.

The Center verified that 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 April 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2025.

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The Center appointed Assen Alexiev as the sole panelist in this matter on May 9, 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 French public limited company founded in 1959. It operates more than twelve thousand stores in more than 30 countries with more than 384,000 employees, and has millions of daily unique visitors in its stores.

The Second Complainant is a Brazilian chain of wholesale and retail stores established in 1960 and acquired by the First Complainant in 2007. The Second Complainant has over 300 stores and distribution centers in all Brazilian states.

The First Complainant is the owner of the European Union trademark ATACADAO with registration No.

012020194, registered on May 24, 2015, for services in International Class 35.

The Second Complainant is the owner of the following trademark registrations for the signs ATACADAO or

ATACADÃO:

− the Brazilian trademark ATACADÃO with registration No. 006785360, registered on October 10, 1978, for

meat, eggs, fish, fruits, cereals, vegetables, etc.;

− the Brazilian trademark ATACADÃO with registration No. 006785344, registered on October 10, 1978, for

dairy products, etc.; and

− the Brazilian trademark ATACADAO with registration No. 006937497, registered on May 25, 1979, for

alcoholic and non-alcoholic beverages, etc.

The above trademark registrations of the First and Second Complainant are jointly referred to as the

“ATACADAO trademark”.

There is no information about the Respondent.

The disputed domain name was registered on March 15, 2025. It resolves to a webpage that displays the
text “Houve um erro. O que aconteceu? This store is unavailable. O que posso fazer?” (partly in Portuguese,

“There has been a mistake. What happened? This store is unavailable. What can I do?”).

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainants state that the disputed domain name is confusingly similar to their ATACADAO trademark,
because it reproduces this trademark in its entirety as its only distinctive element, in combination with the
element “do-bras” (likely evoking “do Brasil”), whose inclusion does not eliminate the likelihood of confusion
with the Complainants’ trademark, as it suggests a regional or localized version of the Complainants’
services. The Complainants add that the addition of two hyphens in the disputed domain name also does
not prevent a finding of confusing similarity.

According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it has no relevant trademark rights, is not commonly known by the disputed domain name, and has not been authorized by the Complainants to use the ATACADAO trademark.

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The Complainants assert that the Respondent has not used the disputed domain name for a bona fide offering of goods or services and is not making any legitimate noncommercial or fair use of it. According to them, the disputed domain name clearly evokes the Complainants’ trademarks ATACADÃO and ATACADAO, and the addition of geographic or descriptive elements such as “do-bras” only serves to increase the likelihood of confusion, rather than establish any independent or legitimate interest on the part of the Respondent.

The Complainants contend that the disputed domain name was registered and is being used in bad faith. that the Respondent had them and their trademark in mind when registering the disputed domain name.

According to the Complainants, the structure of the disputed domain name suggests a connection with Brazil name. In their view, the identity concealment, combined with the incorporation of the ATACADAO trademark and the lack of any legitimate use of the disputed domain name, strengthens the inference that the Respondent was aware of the Complainants and deliberately sought to avoid detection or accountability.
- one of the Complainants’ main markets, and gives the misleading impression that the disputed domain
name is linked to their Brazilian operations or official website for Brazil. The Complainants point out that the

The Complainants submit that while the disputed domain name is not actively used, this does not prevent a finding of bad faith under the doctrine of passive holding, as the disputed domain name incorporates a well- known trademark and is likely to mislead Internet users. The Complainants add that the disputed domain

name may have been acquired to mislead users in the future, to disrupt their business, to prevent them from

registering a corresponding domain name, or to extract financial gain from a future transfer.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1. Procedural issue – Consolidation of the Complainants

Under paragraph 10(e) of the Rules, a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

As discussed in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has 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.

In this proceeding, the Complaint has been submitted jointly by the two Complainants. They are affiliated to each other and appear to have a common interest in the ATACADAO trademark. They also describe a common grievance against the Respondent, where it has allegedly engaged in a conduct that has affected their rights. The Respondent has not expressed any views on the issue of consolidation of the Complainants, and it appears to the Panel that it would be procedurally efficient and equitable for the Complainants to be consolidated.

Taking the above into account, and on the basis of paragraph 10(e) of the Rules, the Panel allows the consolidation of the Complainants in this proceeding.

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6.2. 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 Complainants have shown rights in respect of the ATACADAO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. In addition to each of them having its own registration of this trademark, they are affiliates to each other, and as discussed in section 1.4.1 of the WIPO Overview 3.0, a trademark

owner’s affiliate, such as a subsidiary of a parent or of a holding company, or an exclusive trademark
licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a

complaint.

The Panel finds the ATACADAO trademark is recognizable within the disputed domain name. Accordingly,
the disputed domain name is confusingly similar to the ATACADAO trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “-do-bras”) 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 ATACADAO trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ 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 disputed domain name is confusingly similar to the distinctive ATACADAO trademark and carries a risk of implied affiliation with the Complainants. The Respondent has not denied the Complainants’ allegations and has not provided any plausible explanation for the registration of the disputed domain name and how it intends to use it. In this situation, it appears as more likely to the Panel that the disputed domain name has been registered targeting the Complainants in an attempt to confuse and attract Internet users to any

potential future website associated with the disputed domain name. Such conduct would not be legitimate
and would not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

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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.

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 affiliation with the Complainants, and the absence of any plausible explanation by the Respondent for the registration of the disputed domain name and how it intends to use it. In these circumstances, the Panel finds it impossible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
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 and reputation of the Complainants’

The Panel therefore concludes that the Respondent’s actions amount to registration and use of the disputed domain name in bad faith, and finds that the Complainants have 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-do-bras.com> be transferred to the Complainants.

/Assen Alexiev/
Assen Alexiev
Sole Panelist
Date: May 19, 2025