Atacadaofcbrasil.sbs

The timeline behind atacadaofcbrasil.sbs

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Carrefour SA, Atacadão - Distribuição, Comércio E Indústria LTDA. v. Ana Paula Lista Bernardi Case No. D2025-2605 1. The Parties The Complainants are Carrefour SA, France, and Atacadão - Distribuição, Comércio E Indústria LTDA., Brazil, represented by IP Twins, France. The Respondent is Ana Paula Lista Bernardi, Ukraine. 2. The Domain Name and Registrar The disputed domain name <atacadaofcbrasil.sbs> is 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 July 3, 2025. On July 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 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 July 7, 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 July 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 July 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2025. page 2 The Center appointed Christian Schalk as the sole panelist in this matter on August 15, 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 Carrefour SA is a well-known provider of so-called hypermarkets (large scale supermarkets which offer a huge variety of products, including all kind of food, household goods, technical devices, toys, books, electronic devices, etc.). The first Complainant, founded in 1959 and starting its hypermarket concept in 1963, now operates more than 12 thousand stores in more than 30 countries. This includes the hypermarkets but also smaller supermarkets in many European cities, among others under the name “Carrefour express”. The first Complainant has more than 384,000 employees worldwide, more than 1.3 million daily visitors and an annual turnover of EUR 80 billion. The second Complainant Atacadão - Distribuição, Comércio E Indústria LTDA. is a leading Brazilian wholesale and retail chain, established in 1960 and recognized for its extensive network of over 300 stores and distribution centers across all Brazilian states. It became a subsidiary of Carrefour SA in 2007. This acquisition integrated the second Complainant into Carrefour SA’s worldwide operations. Specializing in bulk purchasing for small businesses and consumers, the second Complainant offers a wide range of competitively priced products. The Panel will hereinafter refer to the first Complainant and the second Complainant as the “Complainant”. The Complainant owns, among others the following trademark registrations: - European Union trademark No. 012020194 for ATACADAO, registered on May 24, 2015; - Brazilian trademark No. 006785344 for ATACADÃO, registered on October 10, 1978; - Brazilian trademark No. 006937497 for ATACADAO, registered on May 25, 1979; - French trademark No. 4981135 for ATACADAO, registered on November 10, 2023; and - African Intellectual Property Organization (OAPI) trademark No. 1/072524, registered February 28, 2013. Several UDRP panels have recognized the Complainant’s ATACADÃO and ATACADAO marks as well- known trademarks, for instance, Carrefour SA, Atacadão S.A. v. Bento Ferreira, Amelio Herl, WIPO Case No. D2024-3706; Carrefour SA and Atacadão S.A. v. atacado varejo, WIPO Case No. D2023-3011, and Atacadão - Distribuição, Comércio E Indústria LTDA. v. seongchea park, WIPO Case No. D2022-4615. The Complainant has a significant online presence across multiple social media platforms such as Facebook Brazil and LinkedIn Global which are followed by millions of users worldwide. The disputed domain name was registered on March 31, 2025. According to the material brought before the Panel, the disputed domain name does not resolve to any website. 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 name. page 3 Notably, the Complainant alleges that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant argues that the disputed domain name incorporates its trademark ATACADAO in its entirety. The Complainant states in this context, that the addition of the letters “fc” and the geographical term “brasil” does not prevent a finding of confusing similarity since these additions are insufficient to dispel the overall impression that the disputed domain name is associated with the Complainant. The Complainant believes that they may even increase confusion by creating a false impression of affiliation with a Brazilian subsidiary or official outlet of the Complainant. The Complainant then concludes that the addition of generic, descriptive, or geographical terms to a trademark does not avoid a finding of confusing similarity and that the use of the “.sbs” generic top-level domain (“gTLD”) would be irrelevant in the assessment of similarity, as it is a technical requirement of the domain name system. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the terms “Atacadao” or “Atacadão” are neither the Respondent’s name nor has the Respondent ever been commonly known under this term. In addition, the Respondent is not and has never been a licensee or a franchisee of the Complainant nor has the Complainant ever in any manner authorized the Respondent to register, use, or to apply for a use of any of the Complainant’s trademarks as a domain name, nor is the Respondent using the disputed domain name for any purposes which in some cases could qualify as fair use under the Policy. The Complainant believes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The Complainant argues that the disputed domain name does not resolve to any active website. This passive holding, in the absence of any plausible explanation, strongly supports, according to the Complainant, the conclusion that the Respondent has no legitimate interests in the disputed domain name. The Complainant continues that adding the elements “fc” and “brasil” does not create distinctiveness. The use of “brasil” suggests geographic targeting of Brazilian consumers, where the Complainant operates and enjoys substantial reputation. The addition of “fc” may appear to Internet users as an abbreviation for a specific business unit or promotional label. The Complainant believes therefore, that these additions do not create a new or independent meaning; rather, they reinforce the false impression of affiliation with the Complainant. The Complainant believes that such targeting is not legitimate. The Complainant argues also that the Respondent has chosen a privacy protection service to conceal his identity which supports the inference that the Respondent was aware that the use of the disputed domain name could be legally challenged. The Complainant continues that incorporation of a well-known trademark, the lack of authorization, the absence of any genuine or fair use, the concealment of identity, and the passive holding of the disputed domain name, leads to the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name and refers in this context to section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends furthermore, that the disputed domain name was registered and is being used in bad faith. The Complainant believes that the Respondent filed the disputed domain name with full knowledge of the Complainant’s trademark rights in ATACADAO and ATACADÃO. Given the fame and widespread use of the Complainant’s marks, especially in the same jurisdiction referenced by the term “brasil” in the disputed domain name, it is inconceivable that the Respondent was unaware of the Complainant’s rights at the time of registration of the disputed domain name. The combination of the Complainant’s trademark with the geographic term “brasil” shows that the Respondent intentionally targeted the Complainant’s brand. The Complainant argues further that the concealment of identity by the Respondent and its failure to implement any Domain Name System Security Extensions (“DNSSEC”) protocol and thus the absence of any technical safeguards or proactive measures supports the conclusion that the registration was made in bad faith with no intention of legitimate use. page 4 The Complainant states that the Respondent is using the disputed domain name in bad faith although it does not resolve to an active website. The Complainant refers in this context to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where it has been decided that the passive holding of a domain name can constitute use in bad faith, particularly where the circumstances indicate that the domain name was registered precisely to target a well-known trademark without any legitimate purpose. The Complainant believes that the combination of the Complainant’s distinctive ATACADAO mark with the terms “fc” and “brazil” reinforces a false impression of affiliation with the Complainant’s Brazilian operations and that the disputed domain name is inherently misleading and appears designed to cause confusion among consumers. The passive holding combined with the inherently misleading nature of the disputed domain name, the fame of the Complainant’s mark and the absence of plausible legitimate interest, strongly supports a finding of registration and use of the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. 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. The Respondent’s 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. 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 on March 31, 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. The Panel also notes from the case file that the notification of the Complaint has been successfully delivered to the Respondent’s email addresses as confirmed by the Registrar. 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. 6.2. 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 3.0, section 1.7. The Panel finds that the Complainant has established trademark rights in the ATACADAO and ATACADÃO marks and that the entirety of the mark (save for the accent in the mark ATACADÃO) is reproduced within the disputed domain name. page 5 The addition of terms to a trademark does not prevent a finding of confusing similarity where the trademark remains recognizable within the disputed domain names (see WIPO Overview 3.0, section 1.8). Therefore, the addition of the letter combination “fc” and the geographical term “brasil “, in the disputed domain name cannot prevent a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to the ATACADAO and ATACADÃO marks for the purposes of the Policy (see WIPO Overview 3.0, section 1.7). Furthermore, the gTLD “.sbs” in the disputed domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. Although the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 (see WIPO Overview 3.0, section 2.1). Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names. However, the Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to rights or legitimate interests in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests. In this case, noting the reputation of the Complainant’s ATACADAO and ATACADÃO trademarks, the incorporation of the Complainant’s ATACADAO and ATACADÃO trademarks with the letter combination “fc“ and the geographic term “brasil” in the disputed domain name suggest that any website to which the disputed domain name pretends to resolve, refers to services offered by the Complainant for potential customers in Brazil where the latter has a strong commercial presence for years. This creates the impression among Internet users that the disputed domain name should resolve to a website which is either one of the Complainant’s websites or of an entity somehow linked with the Complainant while this is not the case (see also Carrefour SA v. Pedro Castro; Luis Villanueva; Lorenzo Lara; Samuel Naranjo; Alberto Caceres; Antonio Alvarez; Pablo Silva; Enrique Revuelta; Miguel Farias; Alejandro Villalba; Nicolas Ferreyra; Julio Rivas; Marcos Villanueva; Eugenio Cabrera, WIPO Case No. D2024-4736 and more general WIPO Overview 3.0, section 2.5.1). In addition, in accordance with the material brought before the Panel, the disputed domain name does not resolve to any active website. It is well established by previous UDRP panels, that passive holding of a domain name incorporating a third party’s distinctive trademark do not constitute a bona fide offering of page 6 goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy under the circumstances of the case (see Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, WIPO Case No. D2006-0006; and, The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340). Hence, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behavior cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. v. Cleiton da Silva Pardim, WIPO Case No. D2013-1548). For all these reasons, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. According to the materials brought before the Panel, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. The Complainant’s ATACADAO and ATACADÃO trademarks enjoy distinctiveness and are apparently well known in their field of business in Brazil and in other countries. The disputed domain name incorporates the trademarks ATACADAO and ATACADÃO trademarks in its entirety (save for the accent in the mark ATACADÃO). The Complainant has a substantive commercial presence on the Internet as well as on social media. A simple search on a search engine reveals many references to the Complainant, which would have made the Respondent immediately aware of the Complainant. In addition, given the fact that the Respondent combined the Complainant’s trademarks ATACADAO and ATACADÃO with the letter combination “fc” and the geographic term “brazil” which relates to a geographical area where the Complainant operates, it appears more likely than not that the Respondent was aware of the Complainant’s brands at the time of registration of the disputed domain name. Therefore, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of page 7 the Complainant’s brands at the time of registration of the disputed domain name (see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent’s behaviour constitutes also use of the disputed domain name in bad faith. The Panel finds that the disputed domain name is used in bad faith by the Respondent. Having regard to the material brought before the Panel, the disputed domain name is currently not in use. According to the section 3.3 of the WIPO Overview 3.0, it is consensus view that the lack of active use of the domain name does not as such prevent a finding of bad faith and that the panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the complainant’s well-known trademark, no response to the complaint, concealment of identity, and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). The Complainant’s ATACADAO and ATACADÃO trademarks are well-known trademark as it has been stated already by other UDRP panels (see, for instance, Carrefour SA, Atacadão S.A. v. Bento Ferreira, Amelio Herl, WIPO Case No. D2024-3706; Carrefour SA and Atacadão S.A. v. atacado varejo, WIPO Case No. D2023-3011, and Atacadão - Distribuição, Comércio E Indústria LTDA. v. seongchea park, WIPO Case No. D2022-4615). Furthermore, the Respondent has failed to take part in the present proceedings. Therefore, the Panel concludes that the non-use of the disputed domain name would not prevent a finding of bad faith under circumstances of this case. WIPO Overview 3.0, section 3.3. The Panel further finds that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom (see also WIPO Overview 3.0, section 3.1.4 and there especially, Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213). Accordingly, in light of the circumstances, the Panel finds that the Respondent has engaged in the bad faith registration and use of the disputed domain name and therewith the establishment also of 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 <atacadaofcbrasil.sbs> be transferred to the Complainant. /Christian Schalk/ Christian Schalk Sole Panelist Date: September 1, 2025

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.