Carrefour SA, Atacadão S.A. v Sidinei Walter, Flora Decor, aaa, Sandro

WIPO Case No. D2025-0395

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Carrefour SA, Atacadão S.A. v. Sidinei Walter, Flora Decor, aaa, Sandro
Amorim, Dghjnv Algghhh, luciano farias, Atacadao g r, DARLING SHOP
CENTER NEGOCIOS DIGITAIS LTDA, matheus vieiras

Case No. D2025-0395

1. The Parties

The Complainants are Carrefour SA, France, and Atacadão S.A., Brazil, represented by IP Twins, France.

The Respondents are Sidinei Walter, Flora Decor, aaa, Sandro Amorim, Dghjnv Algghhh, luciano farias,

Atacadao g r, DARLING SHOP CENTER NEGOCIOS DIGITAIS LTDA, and matheus vieiras, Brazil.

2. The Domain Names and Registrars

The disputed domain name <atacadaobras.net> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “First

Registrar”).

The disputed domain names <atacadaobras.website> and <paycartaoatacadao.online> are registered with

GoDaddy.com, LLC (the “Second Registrar”).

The disputed domain names <atacadaoblack.online>, <atacadaobras.tech>, <atacadaoexpress.online>, and

<descontoatacadao.shop> are registered with Hostinger Operations, UAB (the “Third Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2025. On February 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 3 and 4, 2025, the Registrars transmitted by

email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Domains By Proxy, LLC, Unknown, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainants on February 7, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, 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 disputed domain names are under common control. The Complainants filed an amended Complaint on February 11,

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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 Respondents of the Complaint, and the proceedings commenced on February 18, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 11, 2025.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 24, 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 Complainant Carrefour SA has been one of the worldwide leaders in the hypermarket segment since 1968. It operates more than 12,000 stores with more than 384,000 employees worldwide and there are 1.3 million daily visitors to its stores.

The Complainant Atacadão S.A. is a Brazilian chain of wholesale stores established in 1960 and acquired by the other Complainant Carrefour SA in 2007. With over 300 stores and distribution centers in all the Brazilian states and more than 70,000 employees, the Complainant Atacadão S.A. is one of the largest wholesale networks in Brazil.

The Complainant Atacadão S.A. began an internationalization program, expanding its activities to other countries beyond Brazil. Since the Complainant Atacadão S.A. is part of the Carrefour SA Group, both companies have opted to be the joint Complainants in the present proceeding.

Both Complainants are hereinafter referred to as “the Complainant.”

The Complainant is the owner of several ATACADAO and ATACADÃO trademarks registered well before the registration of the disputed domain names, such as:

1) European Union trademark ATACADAO No. 012020194, registered on May 24, 2015, designating

services in class 35;

2) Brazilian trademark ATACADÃO No. 006785344, registered on October 10, 1978, covering goods in

class 31; and

3) Brazilian trademark ATACADAO No. 006937497, registered on May 25, 1979, covering services in

class 35.

The Complainant also owns Brazilian trademark CARTÃO ATACADÃO No. 840880367, registered on 24
July 24, 2018, designating services in class 36.

The Complainant also owns numerous domain names comprising the mark ATACADAO, including the domain name <atacadao.com.br>, registered on October 9, 1997.

The Respondents are Sidinei Walter, Flora Decor, aaa, Sandro Amorim, Dghjnv Algghhh, luciano farias,
Atacadao g r, DARLING SHOP CENTER NEGOCIOS DIGITAIS LTDA, matheus vieiras from Brazil.

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The disputed domain names have been registered within a two-month period from 2024 to 2025, and have been previously used in different manners:

#ID	Domain names	Creation dates	Previous use of the disputed domain names observed by the Complainant
1	<atacadaoblack.online>	December 8, 2024	e-commerce website allegedly offering various products for sale
2	<atacadaobras.net>	December 12, 2024	e-commerce website allegedly offering various products for sale
3	<atacadaobras.tech>	December 29, 2024	error page
4	<atacadaobras.website>	January 17, 2025	e-commerce website allegedly offering various products for sale
5	<atacadaoexpress.online>	December 8, 2024	e-commerce website allegedly offering various products for sale
6	<descontoatacadao.shop>	January 15, 2025	e-commerce website using the
Complainant’s trademark and allegedly offering various products for sale
7	<paycartaoatacadao.online>	January 10, 2025	error page

At the time of the filing of the present Complaint, none of the disputed domain names were associated with an active website and they either resolved to error pages or did not resolve to any webpage at all.

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 names.

Notably, the Complainant contends that the disputed domain names are identical or confusingly similar to the trademark in which it has rights, that the Respondent has no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.

The Complainant requests a transfer of the disputed domain names.

B. Respondents

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

6. Discussion and Findings

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 the trademarks or service marks in which the Complainant has rights;

(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 is being used in bad faith.

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6.1 Preliminary Issue
Consolidation: Multiple Respondents

The amended Complaint was filed concerning domain name registrants that are nominally different. The Complainant asserts that the registrants are either the same entity, mere alter egos of one another, or under common control. Accordingly, the Complainant requests the consolidation of the Complaint against multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain names 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes the following:

(1) all the disputed domain names were registered in a short time frame, between December 8, 2024, and
January 17, 2025;

(2) all the disputed domain names share a similar naming pattern, combining the Complainant’s ATACADAO trademark with an additional term that may related to the Complainant’s business (e.g., “black”, “express”, “desconto” – “discount” in English, “pay cartao” – “pay card” in English) or an additional term “bras” that may be an abbreviation for Brazil;

(3) the disputed domain names were registered with three different Registrars and list seven different
registrants. However, there are only two sets of nameservers used for the disputed domain names, as
evidenced by the WhoIs records in Annex 1 of the Complaint;

(4) all the disputed domain names have registrants which are supposedly based in Brazil, where the incomplete;

(5) the websites at the disputed domain names <atacadaoblack.online>, <atacadaobras.net>,
<atacadaobras.website> and <atacadaoexpress.online> previously used the similar website templates and
the tax information on the websites at the disputed domain names <atacadaobras.net> and
<atacadaoblack.online> is fake. At the time of filing of the Complaint, all the disputed domain names

became inactive;

(6) the registrant Sandro Amorim for the disputed domain name <atacadaobras.net>, and the registrant
DARLING SHOP CENTER NEGOCIOS DIGITAIS LTDA for the disputed domain name
<descontoatacadao.shop> were both involved in the previous case filed by the Complainant concerning
multiple domain names. See Carrefour SA and Atacadão - Distribuição, Comércio E Indústria LTDA. v.
ruslan cafeta, Sandro Amorim, ELCIO ALVES, Raphael Sabatel, WebSolucoes LTDA, zed cabum, Drutt dd,
DARLING SHOP CENTER NEGOCIOS DIGITAIS LTDA, and Cristian Lindo, WIPO Case No. D2024-5060.

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

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has 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 Panel finds that the entirety of the ATACADAO trademark is reproduced within the disputed domain names. Accordingly, these disputed domain names are confusingly similar to that trademark for the purposes of the Policy. The Panel further finds that the CARTÃO ATACADÃO trademark is also reproduced within the disputed domain name <paycartaoatacadao.online>. Accordingly, this disputed domain name is also confusingly similar to that trademark. WIPO Overview 3.0, section 1.7.

While the addition of other terms here, “black”, “bras”, “express”, “desconto”, or “pay cartao”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain names and the trademark for the purposes of the Policy. WIPO Overview 3.0, sections 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 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.

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In the present case, the Panel finds that the Respondent was aware of the Complainant’s trademarks when the Respondent registered the disputed domain names, as the Complainant’s business, its trademark registrations, and domain name predate the registration date of the disputed domain names. Moreover, the Complainant is well known in Brazil, where the Respondent is reportedly located, and the website at the disputed domain name <descontoatacadao.shop> previously used the Complainant’s trademark.

Five out of seven dispute domain names previously resolved to e-commerce websites allegedly offering for sale various products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.

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.

Although all the disputed domain names did not resolve to any active website at the time of the filing of the Complaint, 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. WIPO Overview 3.0, section 3.3. Having reviewed the available

record, the Panel notes the reputation of the Complainant’s trademarks, and the composition of the disputed
domain names, and the previous use of five out of seven 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.

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 names <atacadaoblack.online>, <atacadaobras.net>, <atacadaobras.tech>, <atacadaobras.website>, <atacadaoexpress.online>, <descontoatacadao.shop>, and

<paycartaoatacadao.online> be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: April 7, 2025