WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Grendene S.A. v. Link Commercial Corp Case No. D2009-1385 1. The Parties
The Complainant is Grendene S.A., of Rio of Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Link Commercial Corp, of Punta del Este, Maldonado, Uruguay. 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 October 16, 2009. On October 19, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 20, 2009, 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 October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2009.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 26, 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 one of the largest shoe companies in Brazil and the world's largest manufacturer of sandals, established in 1971.
The Complainant is the owner of the nominative trademark “GRENDENE” and of many other trademarks containing the word “GRENDENE” registered in Brazil and in other countries as set forth in annex 04 and 05.
The Complainant owns numerous successful and recognized brands, including Melissa, Rider, Grendha, Ipanema Gisele Bündchen, Ipanema, Grendene Kids and Grendene Baby.
The Complainant produces shoes under 34 different licensing agreements with celebrities and children's characters from comic strips and other entertainment venues.
The GRENDENE brand is present on the Internet under many retailers and distributors websites and also on the Brazilian domain “www..br”
The Respondent registered the domain name on December 20, 1996.
There is no information available about the Respondent except for that contained in the Complaint and in the Registrar's records which essentially provides only the name and contact details of the Respondent.
The disputed domain name is currently a pay-per-click page, with commercial links for third party websites that offer products and services in direct competition with those commercialized by the Complainant in its stores and website (such as shoes and sandals – see Annex 03 and 07).
The facts mentioned above have been established on the basis of the Complaint and documents attached thereto in accordance with paragraph 3(b)(xv) of the Rules. 5. Parties' Contentions A. Complainant
The Complainant is one of the largest shoe companies in Brazil and the world's largest manufacturer of sandals.
The Complainant is the owner of the nominative trademark GRENDENE and of other trademarks containing the word GRENDENE registered in Brazil and in other countries of the world.
The Respondent is not affiliated to the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks.
The Respondent is not commonly known as “Grendene”, has never operated a business under “Grendene” and does not have any registration for any trademark “Grendene“.
There is no relationship or association between the parties, therefore it is clear that the Respondent has registered and is using the domain name without any rights or legitimate interests, in connection with any bona fide offering of products and services and the only intent is for commercial gain exploiting the Complainant's trademark.
The Complainant states that he has no doubt that the Respondent is a professional cyber squatter. This can be easily perceived from the list of previous UDRP cases already decided against the Respondent.
The Complainant states that the identity of the products displayed on the website “www.” and the ones produced by the Complainant, as well as the references to some of Complainants notorious trademarks, clearly indicate that the Respondent had targeted the Complainant's trademark when registering the disputed domain name.
In view of the above the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrates that (1) it has trademark rights and (2) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark GRENEDEN based on the evidence provided in the Complaint.
The Panel further finds that the disputed domain name is identical to the Complainant's trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in question.
The Complainant claims that the Respondent is not affiliated to the Complainant, nor has it licensed or otherwise permitted the Respondent to use any of its trademarks. The Complainant also claims that the Respondent is not commonly known as “Grendene”, nor has it ever operated a business under “Grendene”.
The Complainant also claims that the Respondent is not the owner of any trademark rights or any other rights to the name “Grendene”.
The Complainant claims that the website is currently a pay-per-click page, with commercial links to third party websites that offer products and services in direct competition with those commercialized by the Complainant in its stores and website. As mentioned by the Complainant, the circumstances that the sponsored links displayed on the webpage may have been selected automatically is not relevant. It has already been stated by other panel decisions in previous cases, the Respondent having registered the domain name, is fully responsible over what links are selected and displayed on that page, and their ultimate effect. (See, Pernod Ricard v. T Co.,WIPO Case No. D2008-0789).
The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the domain name.
The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the domain name. In as much as the Respondent has not replied to these contentions, the Panel finds that the Respondent has failed to meet the burden of proof shifted to it, that it does have rights or legitimate interests. Therefore the Panel finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is identical to the Complainant's trademark. It is difficult to believe that this is a mere coincidence, especially taking into consideration that the mentioned domain name refers to one of Brazil's most famous shoe companies, and the
Respondent had knowledge of this well-known trademark GRENDENE when he registered it as a domain name since all sponsored links displayed on the website are related to products and services offered by the Complainant in its stores and website (Annex 3). It is difficult to conclude that the domain name was registered and used in good faith if the products displayed on the website and the refer to many of Complainants trademarks, clearly indicating that the Respondent had targeted the Complainant's trademark when registering the disputed domain name.
The above can only lead the Panel to conclude that the Respondent's intention was to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Furthermore, as evidenced by the vast information provided by the Complainant and confirmed by this Panel, the Respondent has registered a great deal of famous trademarks as domain names, which can only lead the Panel to conclude that such conduct can only be an act of bad faith and in order to prevent the owner of these trademarks from reflecting the mark in a corresponding domain name. (Annex 8 to 16)
As mentioned by the Complainant “Since the GRENDENE brand became a worldwide recognized trademark, during the late 90s, Complainant has intended to launch a website project at the address ‘www.'. Unfortunately the project is being blocked by the registration of the Domain Name by the Respondent, in 1996, using it as a pay-per-click marketing page, where even competing products are promoted (Annex 3)”.
Consequently the Panel considers that the Respondent has engaged in a pattern or behavior in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name after having reviewed past UDRP cases where this same Respondent has reiterated such conduct.
Therefore, in accordance with paragraph 4(b)(iii) and (iv) of the Policy, the above findings lead to the conclusion that the domain name in dispute has been registered and 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.
Rodrigo Velasco Santelices
Sole Panelist
Dated: December 10, 2009
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