Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA v; Jefferson dos santos soares, JS Digital

WIPO Case No. D2025-1400

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA v.
Jefferson dos santos soares, JS Digital

Case No. D2025-1400

1. The Parties

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

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

The Respondent is Jefferson dos santos soares, JS Digital, Brazil.

2. The Domain Name and Registrar

The disputed domain name <card-atacadao.shop> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 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 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 April 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 April 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 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 Kaya Köklü 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, founded in 1959, is a widely-known operator of super and hypermarkets with more than 12,000 stores in over 30 countries.

The Second Complainant is a Brazilian chain of wholesale and retail stores established in 1960 and was acquired by the First Complainant in 2007. The Second Complainant started expanding activities in beyond Brazil.

The First Complainant has trademark rights in the ATACADAO trademark. For instance, the Complainant is the registered owner of the European Union Trademark Registration No. 012020194, registered on May 24, 2015, for ATACADAO, and Brazilian Trademark Registration No. 006937497, registered on May 25, 1979, for ATACADAO, both covering protection for services as protected in international class 35.

The Respondent is reportedly located in Brazil.

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

According to the unrebutted evidence provided by the Complainants, the disputed domain name has so far not been actively used and does not resolve to an active website.

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.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings
6.1. Consolidation of Multiple Complainants

The Complaint contains a request for consolidation of the First and Second Complainant on the basis that they are related companies.

Taking into consideration that the Respondent have not rebutted the requested consolidation, the Panel finds that the Complainants have established that the Complaints can be consolidated based on a common grievance and interest of both Complainants, in particular as the Second Complainant is a subsidiary of the First Complainant. The Panel is convinced that it is fair and equitable in the circumstances of the case to order the consolidation as requested (section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Consequently, the Panel accepts the First and Second Complainant in this administrative proceeding and, for the ease of reference, will jointly refer to them as “the Complainant” in the following, whenever appropriate.

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6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i)        the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has 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.

Paragraph 4(a) of the Policy states that a complainant bears the burden of proving that all these requirements are fulfilled, even if a respondent has not substantively replied to the complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by a complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in a complaint as true. WIPO Overview 3.0, section 4.3.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

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 Complainant has shown rights in respect of the ATACADAO trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark 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, here “card” in combination with a hyphen, may bear on assessment of the second and third elements, the Panel finds such addition 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

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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 name. The Panel particularly notes that the nature of the disputed domain name, which comprises the Complainant’s ATACADAO

trademark together with the term “card” (which falsely suggests an association with the loyalty and/or payment cards of the Complainant), indicates the Respondent’s awareness of the Complainant and its ATACADO trademark, and hence, its intent to take unfair advantage of such, which does not support a finding of rights or legitimate interests of the Respondent.

In addition, the disputed domain name has apparently never resolved to an active website which also does not support a finding of any rights or legitimate interests under the circumstances of this case.

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 name such as those enumerated in the Policy or otherwise.

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.

In the present case, the Panel notes that the Respondent must have had the Complainant and its
ATACADAO trademark in mind when registering the disputed domain name, particularly considering the
nature and composition of the disputed domain name. It is obvious to the Panel that the Respondent has
deliberately chosen the disputed domain name, which is confusingly similar to the Complainant’s
ATACADAO trademark, to target and benefit from the reputation of the Complainant. Consequently, the
Panel is convinced that the Respondent has registered the disputed domain name in bad faith.

The fact that the disputed domain name has so far never resolved to an active website does not prevent a finding of bad faith. 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. Although 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 available record, the Panel notes the
longstanding reputation of the Complainant’s ATACADO trademark, the inherently misleading composition of
the disputed domain name, and the unlikeliness of any good faith use of the disputed domain name 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.

Having reviewed the record, the Panel has no reason to doubt that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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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 name <card-atacadao.shop> be transferred to the Complainant.

/Kaya Köklü/
Kaya Köklü
Sole Panelist
Date: May 21, 2025