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

WIPO Case No. D2025-2644

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA. v. Host
Master, Njalla Okta LLC

Case No. D2025-2644

1. The Parties

The Complainant is Carrefour SA, France (the “First Complainant”), and Atacadão - Distribuição, Comércio E

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

The Respondent is Host Master, Njalla Okta LLC, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <seucartaoatacadaobrasil.com> is registered with Tucows Domains Inc. (the

“Registrar”).

3. Procedural History

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

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on July 10, 2025. In accordance with the Rules, paragraph 5,

the due date for Response was July 30, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on July 31, 2025.

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The Center appointed Daniel Peña as the sole panelist in this matter on August 7, 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 has operated in the retail business since 1968, with more than 12,000 stores in over 30 countries, having had a turnaround of EUR 76 billion in 2018. The First Complainant additionally offers travel, banking, insurance, and ticketing services.

Atacadão - Distribuição, Comércio E Indústria LTDA was established as a chain of warehouses in 1960, having been bought by the First Complainant in 2007, presently counting over 250 stores and distribution centers in all Brazilian states.

The Second Complainant is the owner of, inter alia, the following trademark registrations (collectively hereinafter referred to as the “ATACADAO trademark”):

- Brazilian trademark registration No. 006785344 for the word mark ATACADÃO, filed on July 15, 1977,

registered on October 10, 1978, successively renewed, in local class 31.10;

- Brazilian trademark registration No. 006937497 for the word mark ATACADAO, filed on March 21, 1978,

registered on May 25, 1979, successively renewed, in local classes 35.10/20/30.

The disputed domain name was registered on May 14, 2025, and resolves to an inactive webpage.

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.

Notably, the Complainants contend that the disputed domain name reproduces entirely the Complainants’ ATACADAO trademark with the addition of descriptive terms that are not sufficient to avoid a finding of confusing similarity under the Policy. Moreover, the added terms are directly related to the Complainants’ commercial activities: “seucartao” meaning “your card” in Portuguese, and “brasil” referring to the country where the Complainant conducts its business operations – Brazil.

As to the Respondent’s lack of rights or legitimate interests in the disputed domain names, the Complainants argue that: i. the Respondent has never been authorized by the Complainants to use the ATACADAO trademark in any manner, nor have the Complainants ever given consent for the registration of the disputed domain name, neither in an explicit nor an implicit way; ii. the Respondent is also not a partner, distributor or licensee of the Complainants, nor is there an existing contractual or commercial relationship between the Complainants and the Respondent which could eventually legitimate the registration and use of the disputed domain name by the Respondent; iii. the Respondent does not hold trademark rights in the term

“atacadao”; iv. the Respondent has not been commonly known by the disputed domain name as an services, rather having used them in connection with default Registrar or website hosting provider parking pages, or an error page, indicating the absence of any good faith offering of goods or services.
individual, business, or other organization; and v. the Respondent has not, before the original filing of the

The Complainants further contend that the Respondent has registered and is using the disputed domain name in bad faith, with it being inconceivable that the Respondent was unaware of the Complainants or their

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earlier rights in the ATACADAO trademark, necessarily having the Second Complainant’s name and
trademark in mind when registering the disputed domain name so as to attract Internet users by creating a
likelihood of confusion with the Complainants’ earlier marks.

In addition, the Complainants further contend that the passive holding of the disputed domain name may not be considered good faith use since the Respondent is likely using the disputed domain name to disturb the Complainants’ activities or to resell it.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the

Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainants have 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 entirety of the ATACADAO trademark is reproduced 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.

Although the addition of other terms “seucartao” and “brasil” 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 mark 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.

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Having reviewed the 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.

The Panel considers that the record of this case reflects that:

- the Respondent has never been authorized by the Complainants to use the ATACADAO trademark in any manner now that the Complainants have never given consent for the registration of the disputed domain name, neither in an explicit nor an implicit way. Further, the Respondent is not a partner, distributor or licensee of the Complainants, nor is there an existing contractual or commercial relationship between the Complainants and the Respondent which could eventually legitimate the registration and use of the disputed domain name by the Respondent;

- before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made
demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed

domain name in connection with a bona fide offering of goods or services;

- the Respondent (as an individual, business, or other organization) has not been commonly known by the
disputed domain name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3;

- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4;

- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the disputed domain name; and the disputed domain name reproduces the Second Complainant’s well-known mark in its entirety, and thus, there is a risk of implied affiliation with it.

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 stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s

documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

With regard to the bad faith at the time of registration, the Panel notes that “atacadao” is not a common or descriptive term, but a renowned trademark to which the Complainant has demonstrated rights. The Panel has reviewed the list of registered trademarks submitted with the Complaint confirming the registrations of the ATACADAO trademarks predate the date of registration of the disputed domain name.

The disputed domain name incorporates the Complainants’ registered trademark ATACADAO without authorization. This unauthorized use constitutes a clear violation of the Complainants’ trademark rights.

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Furthermore, the disputed domain name is inherently misleading, as it combines the Complainants’
trademark with the terms “seucartao” (Portuguese for “your card”) and “brasil”, which directly reference the
Complainants’ business operations in Brazil.

Therefore, the Panel finds that the Respondent, when registering the disputed domain name, had knowledge of the Complainants’ earlier rights to the ATACADAO trademark. The bad faith registration and use of the disputed domain name are also affirmed by the fact that the Respondent has not denied, or even responded to, the assertions of bad faith made by the Complainants in this proceeding.

Furthermore, the Panel finds that the passive holding of the disputed domain name, in the circumstances of the case, does not prevent a finding of bad faith registration and use. On the contrary, this Panel agrees with the Complainants’ assertion that in this case the disputed domain name containing the Complainants’ well-known earlier mark, constitutes an indication of bad faith. Here the Panel finds that the Respondent’s passive holding of the disputed domain name does not prevent a finding of bad faith WIPO Overview 3.0, section 3.3.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainants have satisfied 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 <seucartaoatacadaobrasil.com> be transferred to the Complainants.

/Daniel Peña/ Daniel Peña Sole Panelist Date: August 21, 2025