Carrefour SA, Atacadão S.A. v Leticia Bianhci, Ana Paula Lista Bernardi

WIPO Case No. D2025-1268

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão S.A. v. Leticia Bianhci, Ana Paula Lista Bernardi

Case No. D2025-1268

1. The Parties

The Complainants are Carrefour SA France (“First Complainant”), and Atacadão S.A., Brazil (“Second

Complainant”), represented by IP Twins, France.

The Respondents are Leticia Bianhci, Brazil, and Ana Paula Lista Bernardi, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <mercadoatacadaobrasil.sbs>, <mercadoatacadaofcbr.sbs>,
<mercadoatacadaoffc.sbs>, <mercadoatacadaofficialbr.sbs>, <mercadoatacadaoficial.sbs> are 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 March 27, 2025. On March 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <mercadoatacadaoffc.sbs>. On March 31, 2025, the

Complainant requested the addition of the disputed domain names <mercadoatacadaobrasil.sbs>,
<mercadoatacadaofcbr.sbs>, <mercadoatacadaofficialbr.sbs>, <mercadoatacadaoficial.sbs>. On March 31,
2025, and April 1, 2025, the Registrar transmitted by email to the Center its verification response disclosing
registrants and contact information for the disputed domain names which differed from the named
Respondent (unknown) and contact information in the Complaint.

The Center sent an email communication to the Complainants on April 2, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainants 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/or that all domain names are under common control. The Complainants filed amended Complaint on April 2, 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 Respondents of the Complaint, and the proceedings commenced on April 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 29, 2025.

The Center appointed Kaya Köklü as the sole panelist in this matter on May 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 7.

4. Factual Background

The First Complainant, founded in 1968, 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. In 2010, the Second Complainant started expanding activities in other Latin American countries 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 Respondents are reportedly located in Brazil and Ukraine respectively.

The disputed domain names were all registered between March 14 and 21, 2025, namely on the following dates:

<mercadoatacadaobrasil.sbs> on March 21, 2025
<mercadoatacadaofcbr.sbs> on March 20, 2025
<mercadoatacadaoffc.sbs> on March 14, 2025
<mercadoatacadaofficialbr.sbs> on March 20, 2025
<mercadoatacadaoficial.sbs> on March 17, 2025

According to the unrebutted evidence provided by the Complainants, the disputed domain names have so far not been actively used and do not resolve to active websites.

5. Parties’ Contentions
A. Complainants

The Complainants contend that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

B. Respondents

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

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6. Discussion and Findings
6.1 Preliminary Matters

Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.

Since one of the Respondents is reportedly located in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

Having considered all the circumstances of the case, the Panel is of the view that it should.

The Panel notes that the Center has used the Respondents postal and email addresses as registered with the Registrar for the purposes of notifying the Complaint. The case file indicates that the case notification emails to the Respondents were successfully delivered. However, the case file indicates that the Written Notice sent to the Respondent Ana Paula Lista Bernardi was not successfully delivered because she was absent. Bearing in mind that the disputed domain names were all just recently registered in March 2025, the Panel has no reason to doubt that the Respondents must have been at least until recently capable of

registering and controlling the disputed domain names but deliberately have chosen to provide apparently
false contact information.

The Panel also notes that the Complaint was successfully delivered to at least one of the Respondents postal address in Brazil (Leticia Bianhci) provided by the Registrar. Considering that, for reasons set out later in this Decision, the Respondents are more likely than not connected to each other, it is likely to the Panel that a successful notification of the Complaint to one of the Respondents also leads to awareness of the Complaint with the other one.

The Panel further notes that the Complainants have specified in the Complaint that any challenge made by the Respondents to any decision to transfer or cancel the disputed domain names shall be referred to the jurisdiction of the courts of the location of the principal office of the concerned registrar. In this case, the principal office of the Registrar, Gransy, s.r.o. d/b/a subreg.cz is in the Czech Republic.

Finally, it is moreover noted that, for the reasons which are set out later in this Decision, the Panel has no doubt to believe that the Respondents registered and have used the disputed domain names in bad faith, with the intention of targeting the Complainants’ goodwill in their trademark and misleading consumers.

The Panel concludes that the Parties have been given a fair opportunity to present their case, so that the administrative proceeding should take place with due expedition. The Panel will proceed to a Decision accordingly.

6.2. 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 with a common grievance against the Respondents.

Taking into consideration that the Respondents 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”)).

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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.

6.3. Consolidation of Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name 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.

In light of the criteria set out above, the Panel finds that the Complainant has provided unrebutted evidence that all disputed domain names are likely under common control for the following reasons:

All disputed domain names were registered between a period of only one week in March 2025. Furthermore, all disputed domain names were registered by only two registrants, namely 3 out of 5 disputed domain names were registered by one registrant while the other 2 disputed domain names were registered by a second registrant. Additionally, the disputed domain names provide for a similar nature and composition pattern, all of them comprising the Complainant’s ATACADAO trademark in combination with the Portuguese term “mercado” and further letters or terms respectively.

The Panel concludes that the Respondents are more likely than not somehow connected. Hence, the Panel accepts that all disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why a consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different registrants of disputed domain names (referred to below as “the Respondent”, whenever appropriate) in a single proceeding.

6.4. 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 names are 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 names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

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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 consistently 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 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 ATACADAO mark is reproduced within all of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the ATACADAO mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, such as “mercado”, “brasil”, “official” and abbreviations respectively misspellings thereof, 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 names and the ATACADAO 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.

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 Panel particularly notes that the nature of the disputed domain names, all of them comprising the Complainant’s ATACADAO trademark together with dictionary terms or terms related to the Complainant's business such as “mercado”, indicates the Respondent’s awareness of the Complainant and its ATACADO trademark, and hence, its illicit intent to take unfair advantage of such, which does not support a finding of rights or legitimate interests of the Respondent.

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In addition, none of the disputed domain names have apparently ever resolved to active websites 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 names 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 names, particularly considering the
nature and composition of the disputed domain names. It is obvious to the Panel, that the Respondent has
deliberately chosen the disputed domain names, which are 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 names in bad faith.

The fact that the disputed domain names have so far never resolved to active websites 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. 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 names, and the unlikeliness of any good faith use 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.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes 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 <mercadoatacadaobrasil.sbs>, <mercadoatacadaofcbr.sbs>, <mercadoatacadaoffc.sbs>, <mercadoatacadaofficialbr.sbs> and <mercadoatacadaoficial.sbs> be transferred to the Complainant.

/Kaya Köklü/
Kaya Köklü
Sole Panelist
Date: May 19, 2025