WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bolsa de Valores de São Paulo S.A. - BVSP v. André Agnoletto Case No. D2008-1361 1. The Parties
Complainant is Bolsa de Valores de São Paulo S.A. - BVSP, São Paulo, São Paulo, Brazil, represented by Felsberg E Associados, Brazil.
Respondent is André Agnoletto, Porto Alegre, Rio Grande do Sul, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 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 GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 8, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on September 15, 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Response was filed with the Center on October 7, 2008.
The Center appointed Eduardo Machado as the sole panelist in this matter on October 14, 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.
Even though both parties are placed in Brazil, the Complaint was filed in the English language, the registration agreement concerning the disputed domain name is in English and Respondent has filed his response English. Therefore, both parties clearly are able to understand English. 4. Factual Background
Complainant is known in the Brazilian market and world-wide as “The São Paulo Stock Exchange (BOVESPA)” and is the only stock trade center in Brazil, and Latin America's largest stock exchange, accounting for nearly 70% of the region's trade volume.
Complainant holds more than 90 trademark applications and registrations in Brazil consisting of or containing the word “Bovespa”.
Also, the Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word “Bovespa” in a large number of countries, such as France, Hong Kong SAR of China, Japan, Republic of Korea, Taiwan Province of China, United Kingdom, United States of America, Argentina, Paraguay, Uruguay, Chile, Spain, Portugal, Sweden, Mexico, Canada, Singapore and European Union. 5. Parties' Contentions A. Complainant Identity or Confusing Similarity of the Disputed Domain Name with the Trademark BOVESPA (paragraph 4(a) (i)):
Complainant contends that the relevant portion of the disputed domain name is “Bovespa”, which is identical with its various trademarks, with its corporate name and several domain names, which are registered and owned by Complainant.
Complainant contends that it is known in the Brazilian market and worldwide as “The São Paulo Stock Exchange (BOVESPA)”, and is the only stock trade center in Brazil, and is Latin American's largest stock exchange.
Complainant contends that Respondent has registered the disputed domain name on June 12, 2007, whereas the Complainant had registered the domain name almost seven years earlier, on November 29, 1995.
Respondent has no Rights or Legitimate Interests in respect of the Domain Name (paragraph 4(a)(ii)).
Complainant argues that the word “Bovespa” is an invented word, and as such, is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of those marks.
Complainant argues that there is no evidence of Respondent's use of, or 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.
Complainant states that there is no evidence that Respondent is or has been commonly known by the disputed domain name, nor there is evidence that Respondent has acquired trademark or service mark rights to use the “Bovespa” expression. Bad Faith Registration and Use (paragraph 4(a)(iii)) :
Complainant contends that Respondent does not conduct any legitimate commercial or noncommercial business activity through the website identified by the disputed domain name .
Complainant asserts that the disputed domain name has been registered by Respondent in bad faith for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant.
Complainant asserts that there is no evidence that the web site realistically offers services.
Complainant contends that the public in Brazil and worldwide would believe that the entity behind the disputed domain name was Complainant or in some way associated with Complainant. B. Respondent Identity or Confusing Similarity of the Disputed Domain Name with the Trademark BOVESPA (paragraph 4(a) (i)):
Respondent contends that Complainant is using the trademark BMF&BOVESPA not BOVESPA in their official website, that the trademark BOVESPA is not registered in all classes of products before the Brazilian Patent and Trademark Office. That Complainant has not registered the trademark BOVESPA in other countries.
Respondent argues that Complainant did not register the disputed domain name which is available for registration and that the disputed domain name was acquired in a legal process after its expiration period. Respondent has no Rights or Legitimate Interests in Respect of the Domain Name (paragraph 4(a)(ii)).
Respondent asserts that he would be prepared to carry on activities using the disputed domain name as he already maintains a website which has over 10,000 daily visits.
Respondent asserts that he is preparing to use the disputed domain name, as he is building a website which would offer a blog and a forum.
Respondent alleges that Complainant does not hold the domain names and . Bad Faith Registration and Use (paragraph 4(a)(iii)) :
Respondent asserts that he is not using the disputed domain name in bad faith and that there is no real evidence that he is doing so.
Respondent alleges that the disputed domain name was not registered in bad faith or for the purpose of selling it to Complainant.
Respondent informs that the disputed domain named is “parked” in Sedo domain name parking.
Respondent alleges that the disputed domain name was acquired in a legal process and that Complainant could also have acquired it the same way.
Respondent alleges that the domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant or to a competitor of that complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name.
Respondent states that the disputed domain name was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name, and, in connection therewith, Respondent has not engaged in a pattern of such conduct.
Respondent alleges that he is not a competitor of Complainant and that the disputed domain name was not registered primarily to disrupt Complainant's business.
Respondent alleges that he has not used the disputed domain name with the intention to appear like Complainant's website and that visitors are not misdirected because of typing mistakes, as has not been registered.
Respondent alleges that he likes the disputed domain name as he likes the stock market and wants to develop a personal website.
Respondent asserts that the disputed domain name is parked at S, a domain name parking company that is responsible for maintaining links related to what users who visit want to see.
Respondent questions why the disputed domain would be associated with the Complainant if Complainant did not register the domain names or .
Respondent alleges that he is not infringing any Brazilian laws, as he acquired the disputed domain name through a legal process and because Complainant has not registered the trademark BOVESPA in all classes. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is 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 domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that is identical to Complainant's BOVESPA trademarks.
The Panel finds that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name(s). If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
With respect to paragraph 4(c)(ii) of the Policy, Respondent alleges that he is preparing to use the disputed domain name by developing a website consisting of a blog and forum related to the stock market. Respondent provided, as evidence, the link , containing the website under construction, which he intends to host under the disputed domain name.
The Panel finds that the evidence does not demonstrate Respondent's rights or legitimate interests for the purposes of Paragraph 4 (a)(II) of the Policy.
Respondent was fully aware of Complainant's rights, as it displays a disclaimer in its unfinished website that says in Portuguese: “This is a personal website, developed with the purpose of expanding and improving knowledge about stock market, specially the Brazilian stock market BOVESPA. We are not responsible for the use of information available in our page. This website has no connection with BOVESPA. To visite BOVESPA's official website go to: www.”.
The website Respondent alleges to be preparing to use, if not in direct competition with Complainant's activities, would clearly take advantage of Complainant's activities by creating a likelihood of confusion as both are directed for the same consumers. Moreover, by the disclaimer displayed on the website, Respondent himself acknowledges the likelihood of confusion and association with Complainant's trademarks and services. Respondent has not denied, and cannot credibly deny, that its use of the disputed domain name was to attract Internet users aiming for Complainant website or its products, and therefore likely divert them from legitimate sites authorized by Complainant
The Panel finds that registering a domain name identical to the trademark of Complainant, with the purpose of attracting Internet users to a blog or forum to discuss mainly Complainant's activities is not a bona fide offering of goods or services. In any event, at the time the Complaint was filed and at the time of this Decision, the domain name still resolved to a parking webpage.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. Furthermore, Respondent himself informs that he is commonly known for his website , which has no resemble or connection with the disputed domain name .
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name. At the time the Complaint was filed, the disputed domain name resolved to a parking webpage on which several hyperlinks were displayed consisting for some of them of results related to, the stock market.
Moreover, the disputed domain name, as of the date of this decision still resolve to a page that displays links consisting for some of them of results related to the stock market. This is not a bona fide use. See TM Acquisition Corp. v. Sign Guards ako William Moore, FA132439 (National Arbitration Forum, December 31, 2002) (finding that the respondent's use of complainant's marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant's competitors, was not a bona fide offering of goods or services).
Finally, Respondent's contentions that the domain names and have not been registered by Complainant are completely irrelevant for the present discussion. It is not reasonable to set as a requirement that a trademark owner registers all available combinations of its trademarks in all existing gTLDs or ccTLDs. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's 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 the respondent's site or of a product or service offered on the respondent's site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the disputed domain name in bad faith.
Complainant's trademark BOVESPA is well-known in Brazil and Respondent indicates in his Response that he was aware of the Complainant's rights in such mark, even though Respondent argues that the registration of the disputed domain name was not an infringement of such rights as “Complainant did not protect his trademark on all trademark classes (sic)”. The Panel finds that Respondent infringed Complainant's trademark when he registered the subject domain name.
Under the Policy, it is evidence of bad faith that, “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.”, Policy paragraph 4(b)(iv). Respondent used Complainant's known trademark to attract users to Respondents' website where, at this moment, sponsored links are displayed. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondents' website.
At the time the Complaint was filed and at the time of this Decision, the disputed domain name still resolved to a page that offer visitors links related to the stock exchange market. See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants' website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use”). Prior WIPO UDRP decisions also support this conclusion. See also E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
In the circumstances, Respondent's allegations that he is preparing to use the disputed domain name to host a website to provide a blog and a forum to discuss Complainant's activities is not sufficient to escape the finding of using the domain name to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or location, or of a product or service on his website or location.
Accordingly the Panel finds that Respondent has made out bad faith registration and use of the disputed domain name. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: October 28, 2008.
Full & Egal Universal Law Academy