WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bolsa de Valores de Sao Paulo S.A. - BVSP v. D Inc. Case No. D2008-1362 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 D, Inc., Redding, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 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 Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On September 8, 2008, Network Solutions, LLC. 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 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 the 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 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 .
Nothing is known about the Respondent except what appears in the registration record. According to the Registrar's verification response, the disputed domain name appears to have been created on December 27, 2004. 5. Parties' Contentions A. Complainant
The Complainant contends that it is part of the BOVESPA group, of which Companhia Brasileira de Liquidação e Custódia (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 non-commercial 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 stating plainly “Você pode comprar o domínio CBLC.com” (You can buy the domain name CBLC.com).
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 did not reply to the Complainant's contentions. 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 “.com” 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 by the Complainant 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, but has not responded. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) 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.
The UDRP disputes procedure is not intended to grant a decision by default in favour of the Complainant in the absence of a Response. It remains for the Complainant to establish to the Panel's satisfaction the three elements required by paragraph 4(a) of the Policy. Nevertheless the Panel interprets paragraph 10(a) of the Rules as authority to make limited enquiries of a general nature. A brief search of the Internet and of a table of acronyms for the term “cblc” led to several pages of examples unrelated to the Complainant including 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 initials, 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. The Panel is satisfied that the acronym “cblc” is not exclusive to the Complainant but is in wide usage.
The Respondent is not assisted in this case by failure to respond. Nevertheless it remains for the Complainant to prove its case. In the terms of paragraph 4(b)(i) of the Policy, there is no doubt that the website to which the disputed domain name resolves is offered for sale. There is no evidence, however, that the Respondent's primary intention has been to attempt to sell the disputed domain name to the Complainant or a competitor of the Complainant for a profit within the meaning of paragraph 4(b)(i) of the Policy, and the Complainant does not succeed under this heading.
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 widely disseminated nature of the acronym “cblc” makes it inherently difficult to show that the Respondent has targeted the Complainant specifically, and the Complainant has not produced sufficient evidence to sustain this. Even if it were possible to infer that the Respondent knew of the Complainant, the registration of a conflicting domain name would not be bad faith without an intention by the Respondent to exploit the trademark significance of that domain name (F. Hoffmann-La Roche AG v. Domain Admin T Co.,WIPO Case No. D2006-1488).
Accordingly, the Panel is unable to find on balance that the Complainant has proved the element of bad faith registration and use under paragraph 4(a)(iii) of the Policy that is required in order to succeed. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: November 4, 2008
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