The Complainant is Condomínio Voluntário Esplanada Shopping Center of Sorocaba, São Paulo, Brazil, represented by Mansur Murad Advogados, Brazil.
The Respondent is , Domain Admin of Rio de Janeiro, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2010. On May 18, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On May 18, 2010, eNom, Inc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 26, 2010. 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” 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 May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Response was filed with the Center on June 17, 2010.
The Center appointed Gabriel Francisco Leonardos as the sole panelist in this matter on July 19, 2010. 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 partnership of joint owners of a shopping mall in the City of Sorocaba, State of São Paulo, Brazil. This shopping mall was inaugurated in 1991with the purpose of gathering consumers of one of the richest areas in the State of São Paulo (Sorocaba and other 22 nearby cities). Today it hosts over 180 stores and has approximately 1.3 million visitors per month.
The Complainant owns in Brazil the trademark registration No. 818175540 for ESPLANADA SHOPPING (and device). Such registration was applied for on December 15, 1994, issued on February 18, 1997 and renewed on February 18, 2007. This application was granted with the following disclaimer made by the Brazilian Patent & Trademark Office - BPTO: “without the exclusive right of use of the word ‘shopping’ ".
The registration No. 818175540 originally stood under the name of the legal entity Associação dos Lojistas do Esplanada Shopping Center (in English: “Association of Store-Owners of the Esplanada Shopping Mall”) and only on October 13, 2009 the assignment of such registration in favor of Complainant was published in the Official Gazette of the BPTO.
The Associação dos Lojistas do Esplanada Shopping Center also owns the under the cctld “.br” the domain name , registered on February 10, 1998. The official web page of the Complainant’s shopping mall is currently hosted under this domain name.
The disputed domain name was registered by the Respondent on September 23, 2008. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is an entity connected with the Associação dos Lojistas do Esplanada Shopping Center and, thus, all rights of the latter should also inure to the benefit of the former, and vice-versa. According to the complaint, the Complainant and the Associação dos Lojistas do Esplanada Shopping Center have the same management and share the same interests.
The Complainant claims to have earlier rights over the trademark and business name ESPLANADA SHOPPING than the Respondent has over that the disputed domain name .
The Complainant also claims that the disputed domain name is identical to Complainant’s trademark and business name, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used by Respondent in bad faith. The Complainant seeks that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent alleges that the Complainant’s claim of being connected with the Associação dos Lojistas do Esplanada Shopping Center is false and made only in order to try to provide to the Complainant earlier rights than those the Complainant actually has, especially because the Complainant only acquired rights over the trademark registration No. 818175540 (which is the basis for the complaint) on October 2009, i.e. almost one year after the Respondent had registered the disputed domain name. Accordingly, the Respondent claims that the Complainant has no prior rights over the trademark ESPLANADA SHOPPING than the Respondent has over that the disputed domain name.
The Respondent explains that it is a provider of domain registration services and that the registration of domain names is part of its business. The Respondent claims that it registered the disputed domain name under the request of a customer called Fred Silva, who, according to the Respondent, was a person possibly related to the Complainant. Later on, such customer failed to pay the fees charged by the Complainant and the Complainant kept the registration of the disputed domain name in force only to have means to recover its expenses. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant. A. Identical or Confusingly Similar
In the present case, the disputed domain name is identical to the Complainant’s ESPLANADA SHOPPING trademark, as the gTLD suffix “.com” should not be taken into account for the purposes of finding a domain name identical or confusingly similar.
In light of the above, the Panel finds the disputed domain name identical to the prior registered trademark in which the Complainant has rights, according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has shown evidence of ownership of a valid trademark registration for the expression ESPLANADA SHOPPING. The Respondent claims that the Complainant does not have prior rights than the Respondent because the Complainant only acquired the trademark registration almost one year after the disputed domain name had been registered.
The Respondent’s defense cannot be accepted because when the Complainant purchased the trademark registration it became the rightful successor of all trademark rights that had attached to the previous owner (the Associação dos Lojistas do Esplanada Shopping Center) and, as such, the Complainant’s rights are deemed to date back to the original filing date of the trademark application, i.e. December 15, 1994. As the disputed domain was created on September 23, 2008, the Complainant’s prior rights are clearly evidenced.
The Panel finds, thus, immaterial for the purposes of this dispute whether the Complainant is or not an entity connected with the Associação dos Lojistas do Esplanada Shopping Center.
The Complainant states that it has not authorized the Respondent to use the ESPLANADA SHOPPING trademark. The Respondent, on its part, has not produced any evidence that it registered the disputed domain name under request of a customer called Fred Silva, who might have been related to the Complainant. Lacking any corroborating evidence, the Respondent’s allegations cannot be accepted in face of the statement of the trademark owner, who was the only person or entity entitled to give to the Respondent the authorization to register the disputed domain name.
The Panel also infers from the record that the Respondent is not commonly known by the name ESPLANADA SHOPPING or by the disputed domain name .
The Complainant has provided evidence that the Respondent used the disputed domain name in a web page with several sponsored links, in what has been commonly called a “link farm”. From the Complainant’s exhibits showing the website, it is apparent that the Respondent used the disputed domain name to trade off of the reputation of the Complainant – thus, the Respondent did not use the disputed domain name to make a bona fide offering of goods or services.
The Panel is satisfied that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven to the Panel’s satisfaction that the Complainant’s trademark ESPLANADA SHOPPING must have been known by the Respondent when the registration of the domain name was secured.
It has been also shown that in the website in operation under the disputed domain name Respondent hosts a “link farm”, i.e., a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the well-known nature of the Complainant’s mark to attract more Internet users and generate revenue presumably to the Respondent’s benefit in the form of “pay-per-click”.
In this sense, there is little doubt that the Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing the Complainant’s website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2001-0177: “Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant’s trademark.”
The Panel considers insufficient to avoid the finding of bad faith in the Respondent’s defense that it has not acted in bad faith because it has not attempted to sell the domain name registration to the Complainant for a profit, but that it only sought to be reimbursed of its expenses for registering the disputed domain name.
The Panel acknowledges that there is indeed no indication that the Respondent tried to sell to the Complainant the disputed domain name for a profit. However, such defense is not enough to avoid the finding of bad faith, because there are other circumstances which constitute an evidence of bad faith, such as hosting a link farm, as it happens in this case.
Thus, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark and that the Complainant has proven that the Respondent’s registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under the Policy. 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.
Gabriel F. Leonardos
Sole Panelist
Dated: August 2, 2010
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