WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Vortal - Comércio Electrónico, Consultadoria e Multimédia S.A. v. Ecoconstroi Case No. D2008-1798 1. The Parties
The Complainant is Vortal - Comércio Electrónico, Consultadoria of Lisboa, Portugal, represented by Yolanda Busse, Oehen Mendes & Associados, Portugal.
The Respondent is Ecoconstroi, of Porto, Portugal. 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 November 21, 2008. On November 24, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 24, 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. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2008.
The Center appointed José Mota Maia as the sole panelist in this matter on January 13, 2009. 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 Complainant is a Portuguese company which carries out activities in the field of information technologies, having obtained the protection of Portuguese trademark no. 405817 VORTALGOV, which was applied on September 1, 2006 to designate services in classes 35, 36, 37, 38 and 42 of the Nice Classification.
The Respondent registered the disputed domain name on June 11, 2007. 5. Parties' Contentions A. Complainant
The Complainant asserts that trademark VORTALGOV is being mainly used in connection with an electronic platform to negotiate public tenders online, which has been widely advertised since November 2006, and subject to extensive newspaper coverage.
The electronic platform operating under the Complainant's mark VORTALGOV has been awarded prizes and commendations.
The Complainant contends that the disputed domain name is identical or confusingly similar to its VORTALGOV mark, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and being used in bad faith B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to Rule 15, panelists in domain name disputes “shall decide a complainant on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that (they) deem applicable”.
Under Rule 4(a), the Complainant must prove the following:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under Rule 4(a)(i) the Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
The certificates attached to the Complaint demonstrate that the Complainant has rights in the mark VORTALGOV. As the panel noted in CSC Holdings, Inc v. Elbridge Gagne, WIPO Case No. D2003-0273, “any prior Panel decisions have considered domain names that consist of the prefix ‘www' affixed to a trademark and have concluded that such domain names are substantially similar to the relevant trademark”. Further, as the Panel found in 1st Auto Transport Directory, Inc v. I Planet Consulting, Inc, WIPO Case No. D2006-1212, “(t)yposquatted domain names, if they have their desired effect, are by definition confusingly similar to trademarks”.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark. B. Rights or Legitimate Interests
The Complainant also must demonstrate that the Respondent has “no rights or legitimate interests in respect of the domain name”. Rule 4(a)(ii). “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based base on its evaluation of all evidence presented, shall demonstrate (the Respondent's) rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice of the dispute, Respondent's 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) Respondent has been commonly known by the domain name, even if has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue”.
Policy, paragraph 4.c.
The Complainant asserts, and the Respondent does not deny, that the Respondent is not commonly known by the name VORTALGOV. The Panel accepts this un-rebutted assertion. The disputed domain name does not currently appear to be in active use, but rather merely resolves to a brief message claiming a page is under construction.
Particularly in this case, where the Respondent has offered no reason (and there appears to be no obvious reason) why the Respondent's use should be considered bona fide or a fair use, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of (Respondent's) documented out-of-pocket costs directly related to the domain name; or
(ii) 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, providing that (respondent has) engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent's website 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 Respondent's web site or location or of a product or service on Respondent's web site or location”.
The disputed domain name wholly incorporates the Complainant's distinctive VORTALGOV mark with the prefix “www”. The registration of such a domain name by the Respondent strongly suggests to this Panel an intent to create confusion with Complainant's mark.
The circumstances in the case before the Panel indicate that Respondent was likely aware of the Complainant's mark VORTALGOV when it registered the disputed domain name. The Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name and the Panel finds it difficult to conceive of any plausible actual or contemplated use of the disputed domain name. that would not be illegitimate. In these particular circumstances, the Panel concludes that the Respondent's passive holding of the disputed domain name satisfies the requirement for use in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
There is no evidence in the case that refute the Complainant's submissions.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 the Complainant.
José Mota Maia
Sole Panelist
Dated: January 27, 2009
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