Carrefour SA, Atacadão SA v Ana Paula Lista Bernardi, Leticia Bianhci

WIPO Case No. D2025-1457

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

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

Case No. D2025-1457

1. The Parties

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

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

2. The Domain Names and Registrar

The disputed domain names <atacadaoficialbrasil.sbs>, <mercadoatacadaoficiallbr.sbs>,
<mercadoatacadao.sbs>, and <mercadosatacadaosa.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 April 9, 2025. On

April 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 11, 2025, the Registrar 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 (NOT DISCLOSED NOT DISCLOSED) and contact information in the Complaint. The Center sent an email communication to the Complainants on April 15, 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 the disputed domain names are under common control. The Complainants filed an amended Complaint on April 15, 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 Respondents of the

Complaint, and the proceedings commenced on April 29, 2025. In accordance with the Rules, paragraph 5,

the due date for Response was May 19, 2025. The Respondents did not submit any response.

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Accordingly, the Center notified the Respondents’ default on May 26, 2025.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 30, 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 Complainants in this proceeding are Carrefour SA (the “first Complainant), a French public limited company and Atacadão SA (the “second Complainant”), a Brazilian company. The first Complainant, Carrefour SA, founded in 1959, operates more than 12,000 stores in more than 30 countries, employing over

384,000 employees worldwide, and has 1.3 million daily unique visitors to its webstores and a turnover of around EUR 80 billion every year. The second Complainant, Atacadão SA, is a Brazilian chain of wholesale and retail stores established in 1960 and acquired by Carrefour in 2007.

ABAAS, the Brazilian Association of Wholesalers, ranks the second Complainant as the Number one chain nationally, with 361 locations and over 65,000 employees. Since the second Complainant is part of the Carrefour Group, both companies have opted to join in the present Complaint. Both companies are

hereinafter referred to as “the Complainant”.

The Complainant owns numerous trademark registrations corresponding and/or including

ATACADAO/ATACADÃO. The Complainant is, inter alia, the owner of:

- European Union Trademark registration number 012020194, for the ATACADAO (word) trademark,

registered on May 24, 2015;

- Brazilian trademark registration number 006785360, for the ATACADÃO (word) trademark, registered on

October 10, 1978;

- Brazilian trademark registration number 006785344, for the ATACADÃO (word) trademark, registered on

October 10, 1978; and

- Brazilian trademark registration number 006937497, for the ATACADAO (word) trademark, registered on

May 25, 1979.

In addition, the Complainant is the holder of numerous domain names consisting of or including its
ATACADAO trademark, registered under various generic Top-Level Domains as well as under a number of
country code Top-Level Domains. Amongst them is <atacadao.com.br>, which has been registered since
1998.

The Complainant has also established a strong social media presence online by being active on various social-media platforms.

The disputed domain names were registered between March 22 and 28, 2025. At the time of filing the

Complaint, all the disputed domain names resolved to pages displaying an error message.

The ATACADAO trademarks enjoy a widespread reputation, as noted in several previous UDRP decisions.

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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.

per se to a

Notably, the Complainant contends that the disputed domain names are confusingly similar to the (“official” in Portuguese), “mercado”(“market” in Portuguese), “brasil”, “br” and “sa” (likely abbreviations for Brazil and Sociedade Anônima, which translates to “Public Limited Company” or “Joint-Stock Company”) does not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain names; that the Respondents have no rights or legitimate interests in respect of the disputed domain names. Furthermore, the Complainant notes that the reputation of its ATACADAO trademark has already been recognized in many previous UDRP decisions, and thus the registration of the disputed domain names (which contain a well-known trademark) amounts

registration in bad faith. In addition, the Complainant states that the Respondents’ bad faith is also evident

in the Respondents’ endeavours to conceal its identity. Finally, the Complainant contends that the combination of the terms “oficial”, “mercado”, “brasil”, and “br” with the ATACADAO trademark in the disputed domain names is likely to mislead consumers into believing that the websites at the disputed

domain names are associated with the Complainant or provide services related to the Complainant’s
business, and that this deliberate attempt to create confusion demonstrates bad faith use.

Regarding the Respondents’ identity, the Complainant has requested a consolidation of multiple disputed domain names and the Respondents. In support of the above request, the Complainant claims that:

1)        both Respondents are related, to the extent that a sufficient unity of interest exists such that they may essentially be treated as a single domain name holder for the purposes of paragraph 3(c) of the Rules;

2)        the registration dates of the disputed domain names fall within a short timeframe, i.e., a one-week period, and all the disputed domain names were registered through the same Registrar;

3)        all the disputed domain names were registered under the “.sbs” TLD;

4)        all the disputed domain names are delegated to Cloudflare nameservers;

5)        the composition of the disputed domain names is very similar;

6)        at the time of filing the Complaint, all the disputed domain names resolved to either a blank page or an error message; and

7)        consolidation of the proceedings would be fair and equitable to all parties.

B. Respondents

The Respondents did not reply to the Complainant’s 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 with a common grievance against the Respondents. The Respondents have not rebutted the requested consolidation. The Panel finds that the Complainants have established that the

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

6.2. Consolidation of Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The registrants pursuant to paragraph 10(e) of the Rules.

Complainant alleges that the domain name registrants are the same entity or under common control. The
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 3.0, section 4.11.2.

As regards common control, the Panel finds that the Complainant has provided non-rebutted evidence that all the disputed domain names are likely under common control for the following reasons: all the disputed domain names were registered within a period of just one week in March 2025; all the disputed domain names resolved to inactive websites; all the disputed domain names are set up with the same name server; all the disputed domain names were registered with the same Registrar; all the disputed domain names are registered under the “.sbs” TLD; and the composition of the disputed domain names is very similar, in fact all of them comprise the Complainant’s ATACADAO trademark in combination with the Portuguese terms “mercado” and/or “oficial” and further letters or terms, respectively.

Finally, these same Respondents were already found to be connected in Carrefour SA, Atacadão S.A. v.
Leticia Bianhci, Ana Paula Lista Bernardi, WIPO Case No. D2025-1268.

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.

6.3. Further Procedural Considerations

Paragraph 10(b) of the Rules requires the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. Paragraph 10(c) requires that the administrative proceeding takes place with due expedition.

One of the domain name registrants’ mailing address is in Ukraine, which is subject to an international conflict at the date of this decision. These circumstances may impact case notification and it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

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Having considered all the circumstances of the case, the Panel is of the view that the proceeding should continue. The Panel has reached this conclusion in part because the Panel recognizes that the Center employed all reasonably available means calculated to achieve actual notice to the Respondent, including the privacy service’s email address obtainable by a public WhoIs search, the Respondent’s email addresses as confirmed by the Registrar, the postmaster addresses as required by the Rules, and the Written Notice.

The Panel also notes that the Respondent registered the disputed domain names between March 22, 2025 and March 28, 2025, i.e., over three years after the start of the commencement of the present international conflict, indicating that the Respondent provided the said address to the Registrar at the point of registration notwithstanding the ongoing international conflict, and thus would appear to be capable of controlling the disputed domain names and the related content. Further, having such access to the Internet, the

Respondent should have received at least electronic notice of this proceeding, in this sense Elec Games Ltd. v. Regery Ukraine, WIPO Case No. D2024-4870 where the panel found that: “the disputed domain name was created in August 2024, during the international conflict, suggesting that the Respondent is able to

access the Internet, maintain control of the disputed domain name (reinforced by the changing content to the Respondent’s email addresses as confirmed by the Registrar.

displayed thereon, mentioned below), and should have received at least electronic notice of this proceeding.”

Finally, the Panel notes that, for the reasons, which are set out later in this Decision, the Panel has formed the view that the Respondent registered and has used the disputed domain name in bad faith.

6.4. Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark 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 are being used in bad faith.

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 names. WIPO Overview 3.0, section 1.7.

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 the mark is incorporated entirely and recognizable within the disputed domain names.
Accordingly, the disputed domain names are 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, “[o]ficial”, “[o]ficiall”, “mercado”, “mercados”, “brasil”, “br” and “sa”, 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 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.

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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.

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 was aware of the Complainant’s trademark registrations and rights to the ATACADAO and ATACADÃO trademarks when it registered the disputed domain names.

In fact, when the disputed domain names were registered in 2025, the Complainant’s trademarks were already famous in Brazil and directly connected to the Complainant’s retail services. Therefore, the Panel concludes that it would not be feasible to consider that (at least) the second Respondent – a resident of Brazil – might not have been aware of the Complainant’s trademark at the time of registration of the disputed domain names, nor that the adoption of the expressions “atacadaoficialbrasil”, “mercadoatacadaoficiallbr”, “mercadoatacadao” and “mercadosatacadaosa” could be purely a coincidence.

Noting also the composition of the disputed domain names, it is more likely than not that the Respondent,
when registering the disputed domain names, had knowledge of the Complainant’s earlier rights to the
ATACADAO and ATACADÃO trademarks.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. The Panel is therefore satisfied that the Respondent registered the disputed domain names in bad faith.

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The Panel also considers that in the present case the addition to the Complainant’s trademark of the terms “mercado/s”, “[o]ficial”, “brasil”, “br”, and “sa” may even enhance the risk of confusion, suggesting that the disputed domain names refer to the Complainant’s official websites in Brazil.

In addition, panels have found that the current 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 trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the current passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Further, the Respondent has been the respondent in Carrefour SA, Atacadão S.A. v. Leticia Bianhci, Ana Paula Lista Bernardi, supra (domain names <mercadoatacadaobrasil.sbs>, <mercadoatacadaofcbr.sbs>, <mercadoatacadaoffc.sbs>, <mercadoatacadaofficialbr.sbs>, and <mercadoatacadaoficial.sbs>). In that case, the panel decided that the Respondent registered and used the domain names in bad faith and

ordered the domain names to be transferred to the Complainant. Based on this, under the circumstances of the present proceeding, the Respondent appears to have targeted the Complainant, which supports a finding of a pattern of bad faith on the part of the Respondent: preventing trademark holders from reflecting their trademarks in domain names.

Finally, the bad faith registration and use of the disputed domain names is also affirmed by the fact that the Respondent did not respond to nor has it denied the assertions of bad faith made by the Complainant in this proceeding.

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 <atacadaoficialbrasil.sbs>, <mercadoatacadaoficiallbr.sbs>,

<mercadoatacadao.sbs>, and <mercadosatacadaosa.sbs> be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: June 13, 2025