WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bolsa de Valores de São Paulo S.A. - BVSP v. Rarenames, WebReg Case No. D2008-1360 1. The Parties
The Complainant is Bolsa de Valores de São Paulo S.A. - BVSP, São Paulo, Brazil, represented by Felsberg E Associados, Brazil.
The Respondent is Rarenames, WebReg, Washington, DC, United States of America, represented by Erik S. Zilinek, Esq. of NameMedia, Inc., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 8, 2008, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On September 8, 2008, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 18, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2008. The Response was filed with the Center on October 9, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on October 21, 2008. 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
According to the Complainant, it is the Brazilian Stock Exchange (BOVESPA), an active member of the World Federation of Exchanges (WFE), Iberoamericana de Bolsas (FIAB) and the International Organization of Securities Commissions (IOSCO). A company that is part of this group is Companhia Brasileira de Liquidação e Custódia, CBLC, or in English, Brazilian Clearing and Depository Corporation .
The Complainant holds more than 27 trademark applications and registrations in Brazil consisting of or containing the expression CBLC, including a number of registrations in class 36 in respect of financial services. The trademark registrations and applications cover classes 16 (books, magazines, periodicals (published in connection with financial service business products and related matters)); 35 (compilation and organization of information services; publicity (regarding financial service business data and information made public to the market)); and 38 (communications through computer terminals (focused on the exchange of financial service information)).
The Complainant is the registrant of the domain names , and .
The Respondent deals in domain names and appears to have registered the disputed domain name on June 17, 2006. 5. Parties' Contentions A. Complainant
The Complainant contends that it is part of the BOVESPA group, of which Companhia Brasileira de Liquidação e Custorida (CBLC) is a member.
The Complainant contends that the disputed domain name is identical to trademarks in which it has rights. The Complainant attaches documentary evidence of its registration of Brazilian trademarks Nos. 822472783, 822472791 and 822472813, featuring CBLC and its name Companhia Brasileira de Liquidação e Custódia (2000); trademark No. 821833936, for CBLC.COM.BR (1999); and trademarks Nos. 821877232, 821877348 and 821877356, for CBLC (1999).
The Complainant contends that it is the registrant of the domain names , and .
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The word CBLC is an invented word and is the acronym of Companhia Brasileira de Liquidação e Custódia. The acronym is not one that a registrant would choose unless to create an impression of an association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or to use any domain name incorporating its trademarks. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the domain name or acquired trademark or service mark rights in it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, for the reasons that follow.
There is no evidence that the Respondent conducts any legitimate commercial or noncommercial business activity though the disputed domain name. Given the Complainant's fame, there is no plausible circumstance in which the Respondent could use the disputed domain name legitimately. It is not plausible that the Respondent would have been unaware of the Complainant's name.
The Complainant contends that the disputed domain name was registered for the purpose of selling it to the Complainant, as the owner already of several domain names incorporating the expression CBLC, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the registration of the domain name. The disputed domain name resolves to a website that clearly is for sale.
The Complainant contends that the website of the disputed domain name refers to financial services and products in competition with and in confusion with the Complainant. This amounts to passing off and trading on the goodwill of the Complainant, because Internet users may think the disputed domain name is associated with the Complainant.
The Complainant requests the transfer to it of the disputed domain name. B. Respondent
The Respondent denies the Complaint and has replied at considerable length, submitting a number of UDRP decisions for the Panel to consider as possible precedent decisions.
In summary, the Respondent concedes that the disputed domain name contains “cblc” which is effectively identical to the trademark CBLC. The Respondent contends, however, that the acronym “cblc” is not unique but common, and is used by numerous parties without any of them having exclusive rights. The Respondent reproduces a number of resources in support of this contention, including pages of Google search results for the search term “cblc”, copies of websites featuring “cblc” in their URLs, and a list of results from the website “”, which specialises in listing entities corresponding to initial letters.
The Respondent disputes that the trademark CBLC has any strength as a source indicator in the United States of America, and says the fact that the Complainant registered its trademark in Brazil does not provide it with exclusive rights to prevent other parties from making use of the same four letters (citing Koninklijke KPN N.V. v. Konstantinos Zournas,WIPO Case No. D2008-0055).
The Respondent further contends that it has rights in the disputed domain name in the terms of paragraphs 4(a)(ii) and 4(c) of the Policy. Its grounds include, but are not limited to, the following.
A domain name comprising a common acronym is available to the first entity that acts to register it, and in this case the domain name was registered after its previous owner (apparently not the Complainant) allowed it to expire.
The Respondent uses the disputed domain name in connection with third party advertising services, and in the circumstances applicable to this case, where the domain name is a common acronym, it is well-established that this is a legitimate use.
The Respondent contends that the offering of the disputed domain name for sale is legitimate business. It is well-established that the sale of domain names constitutes a bona fide offering of goods and services where the Respondent is unaware of a party's rights in a trademark. The present Respondent's policy is to register and maintain only domain names that incorporate common acronyms, words or phrases, descriptive terms, or words for which the available evidence suggests that no third party has exclusive rights.
The Respondent further contends that it has not registered the disputed domain name in bad faith.
In the terms of paragraph 4(b)(i) of the Policy, it is contended that there is nothing to indicate that the Respondent registered or acquired the domain name primarily for the purpose of selling to the Complainant or to any other entity. The Complainant has offered no evidence that the Respondent had actual knowledge of the Complainant's trademark, and the Respondent says that it did not. The Respondent cites previous UDRP decisions to the effect that a finding of bad faith requires the Respondent to have contemplated the Complainant's trademark rights, that a Respondent in the United States of America has no duty to search trademark registers in Brazil or elsewhere, and that in the UDRP context constructive knowledge of a trademark is rarely invoked except where Complainant and Respondent are in the same country.
The Respondent contends that the offering of an acronym domain name for sale is not bad faith unless there is proof it was registered solely for the purpose of profiting from the Complainant's trademark rights.
The Respondent says that the disputed domain name registration had lapsed when it bought it, and that this action in itself does not amount to bad faith. It says, citing previous UDRP decisions, that the purchaser of an abandoned domain name should be all the more confident that there is no competing trademark claim relating to the domain name.
The Respondent further contends that it did not register the disputed domain name in order to prevent the trademark holder from reflecting the mark in a corresponding domain name. The Complainant in fact has several domain names incorporating “cblc”.
The Respondent denies that the disputed domain was registered for the purpose of disrupting the business of the Complainant, and in any case they are not competitors.
The Respondent says there is no likelihood of its domain name being confused with the Complainant's trademark. Their businesses are quite different. There is no reason to believe that anyone would be confused into thinking that Respondent's website is endorsed by the Complainant.
The Respondent requests that the Complaint be denied. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ”complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant must prove that it has rights in the trademark CBLC, and that the disputed domain name is confusingly similar or identical to that trademark.
Copies of several trademark registration documents have been produced in evidence, proving to the satisfaction of the Panel that the Complainant has rights in the trademark CBLC. The disputed domain name is . The gTLD suffix “.net” may be disregarded as it or an equivalent is inevitable in a domain name structure. What remains is “cblc” which clearly is identical to the Complainant's trademark CBLC, the distinction between upper and lower case being of no significance. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant says that the Respondent is not Companhia Brasileira de Liquidação e Custódia, known as CBLC, and has no connection with it. The acronym CBLC is invented and the Respondent would not have chosen it except for the acronym's association with the Complainant. The Complainant certifies that it has not allowed the Respondent to use its trademarks, and that it has found no evidence of the Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services, or any evidence that the Respondent has been commonly known by the domain name.
A prima facie case has thus been made out to the effect that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to refute this as provided for in paragraph 4(c) of the Policy, which states in part:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In overview, the Respondent's activity may be summarised as follows. The Respondent deals in domain names, and has over 10,000 in stock. One of its lines of specialisation is domain names comprising acronyms, that is to say, seemingly arbitrary sequences of letters that may stand for something in the minds of some people. These are for sale. For instance, a person may wish to register their own initials or those of a society as a domain name, but the Respondent has already registered it, and will sell the domain name at a price that depends upon a perception of the desirability of the acronym.
As the Respondent submits, in a number of UDRP cases, this activity has been held to be a legitimate business (although previous decisions are not binding precedent). The prominent exception is where a Complainant can show, on the balance of probabilities, that the acronym was registered or acquired as a domain name by a Respondent in the knowledge of the acronym's trademark significance and with the intention of trading on that trademark significance.
A further element of the business model for trading in domain names in this way is to try to derive some cash flow from the domain names held in stock, or to “monetize” them, while awaiting sale. Generally this is done by placing them on the Internet as websites with token content so that a user who finds their way to the site, perhaps by looking for their own or someone else's initials or perhaps through guessing the domain name of an entity whose website they are seeking, will arrive at a seemingly active website. Typically the website states its availability for sale and displays a number of links to advertisers. When a user clicks on a link, the advertiser pays a small fee for the referral, generating a revenue stream for the Respondent. Third party advertising by this means is known as pay-per-click or click-through advertising. It appears on many respectable websites and, in and of itself, is entirely legitimate.
The Respondent's website at is cast in the above mould. In the screen print captured by the Center, the website states that is for sale and provides contact information for its purchase. It then lists what are openly declared to be sponsored advertising links, and a search engine. The nature of the advertising links leads to the impression that they are targeted to individual viewers according to what may be gleaned about their possible interests, derived from their search terms, location and other criteria.
On the basis of its use of the website as described, the Respondent contends that it has rights or a legitimate interest in the disputed domain name in the terms of paragraph 4(c)(i) of the Policy because it is using it for a bona fide offering of goods and services, being those it advertises.
The Panel treats paragraph 4(c)(i) of the Policy as being directed more specifically towards an actual offering of goods or services directly from a website, which could include links through that website provided its business were bona fide. Where, as here, the website of the disputed domain name is merely one of a Respondent's stock that has been fitted up with token content and links to advertisers, it would be too great a stretch to equate this with a bona fide offering of goods or services.
Paragraph 4(c)(ii) of the Policy does not apply in this case.
Paragraph 4(c)(iii) of the Policy appears to contemplate the kind of use to which the disputed domain name has been put. Clearly that use, comprising as it does the offer of the domain name for sale, combined with its use for advertising that cannot plausibly be for any other purpose than the generation of revenue, does not qualify as noncommercial. As to whether alternatively it is fair, neither dealing in domain names nor click-through advertising are themselves unfair in the absence of bad faith, but would be unfair if coupled with bad faith (Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964). It is therefore necessary to proceed to the consideration of bad faith before making a finding on this element of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In terms of paragraph 4(b)(i) of the Policy, the Complainant says the disputed domain name is undoubtedly for sale, because the Respondent's website clearly says so. Conversely the Respondent has shown in the evidence of an Internet search, and a table of acronyms, that numerous persons, companies or other entities world-wide could lay claim to the acronym “cblc”, and many have incorporated the letters “cblc” into their domain names. For example: Chippenham Borough Lands Charity; Council of Black Led Churches; China Business Law Consult Center; Credit Bureau of Lancaster County. The acronym has applications other than to personal or business intitials, including at least two in medical terminology, namely cancer-related Casitas B-Lineage Lymphoma type c and a disease of vitamin B12 metabolism known as Cobalamin c deficiency. Given this wide usage there is no evidence that the Respondent has in any specific way targeted the Complainant, or registered or acquired the disputed domain name primarily for the purpose of selling it specifically to the Complainant or a competitor of the Complainant. The Complainant does not succeed under this element of the Policy.
Similarly, with respect to paragraph 4(b)(ii) of the Policy, there is no evidence and there has been no action to suggest that the Respondent's holding of the disputed domain name has intentionally prevented the Complainant, or any other potential user of the acronym, from reflecting its trademark in a domain name. In so far as any entity wanting to register the domain name may find it already taken, the flavour of previous UDRP decisions is that the first to register an innocuous domain name may do so, absent any evidence of abusive registration (Asphalt Research Technology, Inc. v. National Press & Publishing, Inc.,WIPO Case No. D2000-1005).
There is no evidence in the terms of paragraph 4(b)(iii) of the Policy that the Respondent has attempted to disrupt the business of the Complainant.
The key to a finding of bad faith in the terms of paragraph 4(b)(iv) of the Policy would be proof of intentional confusion with the Complainant's trademark by the Respondent in its choice of domain name. The Respondent (apparently in the United States of America) says it did not know about the Complainant, which, the Panel accepts, has fame in Brazil. On the evidence, it is not possible to prove or reasonably to infer otherwise. The concept of constructive notice is used sparingly in UDRP disputes, for example where knowing abuse of a trademark is clear. The Complainant's claim that the website advertises competing financial services is not sustainable; any such references in the screen print made by the Center dated September 19, 2008 being at the random level and realistically well below trading on the goodwill of the Complainant. The acronym “cblc” as adopted by the Complainant is already so disseminated in Internet usage that in the present context it is not tenable that use of those initials could lead to confusion with specifically the Complainant as distinct from any other legitimate users of the same acronym (F. Hoffmann-La Roche AG v. Domain Admin T Co.,WIPO Case No. D2006-1488).
Thus, the Panel is unable to find that the Complainant has proved bad faith registration and use as required by paragraph 4(a)(iii) of the Policy. Returning to paragraph 4(a)(ii) of the Policy, in the absence of evidence of bad faith, of intention to divert Internet users from the Complainant, or of intention to tarnish the Complainant's trademark, it follows that the Respondent's use of the disputed domain name for purposes of offering it for sale or for third party advertising is not unfair. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: November 4, 2008
Full & Egal Universal Law Academy