Carrefour SA, Atacadão S.A. v Marcus Vinicius

WIPO Case No. D2024-0357

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão S.A. v. Marcus Vinicius

Case No. D2024-0357

1. The Parties

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

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

The Respondent is Marcus Vinicius, Brazil.

2. The Domain Name and Registrar

The disputed domain name <atacadao.org> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2024.
On January 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 26, 2024, 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 (Contact Privacy Inc. Customer 0169714942) and contact
information in the Complaint. The Center sent an email communication to the Complainants on January 29,
2024, 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

January 30, 2024.

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 January 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2024.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 26, 2024.
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.

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4. Factual Background

The First Complainant operates in the retail business since 1968, with more than 12,000 stores in over 30 countries, having had a turnaround of EUR 83 billion in 2022. The First Complainant additionally offers travel, banking, insurance, and ticketing services.

The Second Complainant was established as a chain of warehouses in 1960, having been bought by the First Complainant in 2007, presently counting with over 300 stores and distribution centers in all Brazilian states.

The Second Complainant is the owner of 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 class 31;

- Brazilian trademark registration No. 006937497 for the word mark ATACADAO, filed on March 21,
1978, registered on May 25, 1979, successively renewed, in class 35..

The disputed domain name was registered on December 27, 2023. Presently, the disputed domain name 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.

Notably, the Complainants contend that their ATACADAO trademark enjoys a wide-spread continuous
reputation, having already been found to be well known in Brazil by past UDRP panels (Carrefour SA and
Atacadão S.A. v. atacado varejo, WIPO Case No. D2023-3011; Atacadão - Distribuição, Comércio E
Indústria LTDA. v. seong-chea park, WIPO Case No. D2022-4615, and Carrefour SA and Atacadão -
Distribuição, Comércio e Indústria LTDA. v. Gabriel Silva, WIPO Case No. D2023-4424).

According to the Complainants, the disputed domain name is highly similar to the Second Complainant’s well-known ATACADAO trademark given its entire reproduction in the disputed domain name.

As to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainants argue that:

i.         the Respondent does not hold trademark rights in the term “atacadao”;

ii.         the Respondent has not been commonly known by the disputed domain name as an individual, business, or other organization;

iii.        the Complainants have not authorized the use of their trademarks or terms similar thereto in the disputed domain name in any manner or form; and

iv.        the Respondent has not, before the original filing of the Complaint, used or prepared to use the disputed domain name in relation to a bona fide offering of goods or services.

The Complainants further contends that the Respondent has registered and is using the disputed domain name in bad faith, being it inconceivable that the Respondent ignored the Complainants or their 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.

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In addition, the Complainants further contends that the passive holding of the disputed domain name may
not be considered a good faith use since the Respondent is preventing the Complainants from reflecting their

trademarks in a corresponding domain name.

B. Respondent

The Respondent did not reply to the Complainant’s 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 are 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 identical to the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.7.

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:

- 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. Paragraph 4(c)(i)
of the Policy, and WIPO Overview 3.0, section 2.2.

- 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.

- the disputed domain name reproduces the Second Complainant’s mark in its entirety, and thus, there
is a high risk of implied affiliation with it;

Based on the available record, 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.

The Panel considers that the evidence of this case reflects that: the Complainants hold a well-known trademark in the Brazilian territory, where the Respondent is located and that the disputed domain name chosen by the Respondent indicates a high risk of association with the Complainants and their activities.

In addition to that, Panels have found that the non-use of a domain name (including a blank or “coming soon”
page) 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 name 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, and (iii) the
respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration
agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the
Respondent failed to participate in this proceeding, thereby failing to provide any good faith explanation as to
its registration and intended use of the disputed domain name, and the Respondent seemingly engaged the
use of a privacy service to conceal its contact details on the publicly-available WhoIs, which supports an
inference of bad faith. Additionally, given the reputation of the Complainants’ ATACADAO trademark and
the composition of the disputed domain name, the Panel 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.

Based on the available record, the Panel finds that the Complainants have 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 name <atacadao.org> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: March 11, 2024