Complainant is Hipercard Banco Múltiplo S.A. of Boa Viagem, Recife, Brazil, represented by L. J. Bray & Co., Brazil.
Respondents are Private Registration (B3) of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Telecom Tech Corp. of Panama City, Republic of Panama. 2. The Domain Name and Registrar
The Domain Name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2010. On May 31, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the Domain Name. On July 8, 2010, Bargin Register Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 2010. The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on July 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on August 4, 2010.
The Center appointed Luca Barbero, Alvaro Loureiro Oliveira and Ian Lowe as panelists in this matter on September 8, 2010. The Panel finds that it was properly constituted. Each member of 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
Complainant is Hipercard Banco Múltiplo S.A., a Brazilian bank founded in 1998 which is part of the Brazilian Conglomerate Itaú Unibanco and is controlled by Itaú Unibanco Holding S.A. Complainant’s associated company Itaú Unibanco S.A. is one of the most valuable banks listed on the Brazilian stock exchange.
Complainant is the owner of the Brazilian trademark registrations No. 816.007.330, for HIPERCARD, first registered on September 1, 1992, renewed up to January 9, 2012, in class 36.60, and No. 818.613.122, for HIPERCARD, first registered on September 16, 1997 and renewed up to September 16, 2017, in class 38.10. Complainant is also the owner of numerous trademark applications including the sign HIPERCARD as of the first months of 2010, such as the International trademark applications No. 830.530.517 for HIPERCARD, filed on February 11, 2010, in class 36, No. 830.526.005 for HIPERCARD EMPRESAS, filed on February 03, 2010, in class 36, No. 830.525.963 for HIPERCARD FAMÍLIA, filed on February 3, 2010, in class 36 and No. 830.543.082 for PAGUECONTAS HIPERCARD, filed on March 9, 2010, in class 36.
Complainant has also registered, through its controller Unibanco - União de Bancos Brasileiros S.A., numerous domain names consisting of or including the sign HIPERCARD, such as , registered on November 17, 1995; , registered on February 26, 2003; and , registered on February 26, 2003.
Respondents registered the Domain Name on February 25, 2000. As at the date of the Complaint, the Domain Name resolved to a sponsored pay-per-click website. 5. Parties’ Contentions A. Complainant
Complainant points out that Hipercard Banco Múltiplo S.A. is one of the largest credit card operators in Brazil and the only one to offer a totally free of charges credit card, with a network of more than 450.000 accredited establishments, including gas stations, restaurants, drugstores, hotels and airline companies.
Complainant states that the trademark HIPERCARD has been associated with Complainant’s credit cards as of 1991 and that, based on Complainant’s long and extensive use of the trademark, supported by relevant investments in advertising campaigns, Complainant has developed a substantial goodwill and brand recognition of its trademark.
Complainant highlights that the Domain Name is identical to the trademark in which it has rights as it reproduces the trademark HIPERCARD in its entirety.
With reference to rights or legitimate interests in respect of the Domain Name, Complainant states that Respondents do not run any business under the name “Hipercard” and have never used such sign to identify their products or services. Complainant also states that neither Complainant nor any other company of the Conglomerate has ever authorized the use of the trademark HIPERCARD to Respondents and that, since Complainant and/or other companies of the Conglomerate are the only companies entitled to use the trademark HIPERCARD in Brazil, the use of such trademark for the Domain Name is abusive and illegitimate.
Complainant points out that Respondents have not been using the Domain Name to offer goods or services with bona fide, since the Domain Name is redirected to a web page displaying sponsored links, in the Portuguese language, which redirect consumers to other web sites not related to Complainant and offering, among others, credit cards, jobs and cell phones. Complainant underlines that Respondents have not been commonly known by the sign HIPERCARD and have not been making any legitimate use of the Domain Name, since they are attempting to attract Internet users to their website by diverting them to products and services which have no connection with Complainant or its Conglomerate.
Complainant concludes, with reference to the issue of the rights or legitimate interests, that Respondents have no real interest in using the sign HIPERCARD and that, by registering the Domain Name, Respondents have been preventing Complainant from reflecting its trademark in the corresponding Domain Name, and obtaining economical advantage from the unauthorized and misleading use of Complainant’s trademark.
With reference to the circumstances evidencing bad faith, Complainant informs the Panel that cease and desist letters were sent on November 11, 2009 and on December 15, 2009 to Respondents, demanding that they cease any use of the Domain Name and transfer it to Complainant, but Respondents did not reply to Complainant’s contentions.
Complainant also states that Respondents’ use of a privacy shield and its disclosure of misleading information in connection with the registration of the Domain Name are further evidence of Respondents’ bad faith.
Complainant highlights that, since the owner is apparently based in an English speaking country, he or she should have opted for a domain name typed in the correct English form “hypercard”, while the option for the Domain Name with the letter “i” instead of the “y” is evidence of Respondents’ awareness and intentional registration of the Domain Name, which exactly corresponds to Complainant’s trademark.
In addition, Complainant underlines that Respondents’ redirection of the Domain Name to a web page on which several sponsored links, as well as the trademark HIPERCARD, are published, is evidence of Respondents’ bad faith use of the Domain Name. B. Respondents
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Domain Name registered by Respondents is identical or confusingly similar to a trademark or a service in which Complainant has rights; and
(ii) that Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of the Brazilian trademark registrations No. 816.007.330, for HIPERCARD, first registered on September 1, 1992, renewed up to January 9, 2012, in class 36.6, and No. 818.613.122, for HIPER CARD, first registered on September 16, 1997 and renewed up to September 16, 2017, in class 38.10.
In comparing Complainant’s trademark to the Domain Name with reference to HIPERCARD, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name. See, among others, i.a., Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (“the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”) and Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 (“the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that Complainant has established that the Domain Name is identical to the trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant must show that Respondents have no rights or legitimate interests in respect of the Domain Name. Respondents may establish a right or legitimate interest in the Domain Name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
(i) before any notice to Respondents of the dispute, Respondents’ 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) Respondents (as an individual, business, or other organization) have been commonly known by the Domain Name, even if Respondents have acquired no trademark or service mark rights; or
(iii) Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is well-established that the burden of proof lies on Complainant. However, satisfying the burden of proving a lack of Respondents’ rights or legitimate interests in respect of the Domain Name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that Complainant show a prima facie case that Respondents lack rights or legitimate interests in the Domain Name in order to shift the burden of proof on Respondents. If Respondents fail to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, Respondents have not rebutted Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between Respondents and Complainant. Respondents are not a licensee of Complainant, nor have Respondents otherwise obtained an authorization to use Complainant’s trademarks.
Furthermore, there is no indication before the Panel that Respondents are commonly known by the Domain Name, have made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that they intend to make a legitimate, noncommercial or fair use of the Domain Name.
The Panel notes that the Domain Name was at the time of the filing of the Complaint, and still is pointing to a sponsored pay-per-click (“ppc”) web site mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that, in the circumstances, the use of the Domain Name merely for a pay-per-click page which directs visitors to various third party commercial web sites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, where the panel found that respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”.
Similarly, in Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name ] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”. See also, inter alia, Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy”
Moreover, the Panel finds that Respondents, whose true identity was obscured by the privacy shield, have not shown that they are commonly known by the Domain Name, as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435. See, along these lines, Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743, in which the Panel stated that “[h]ere, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, in the Panel’s view this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.
Thus, in light of the above, the Panel finds that Respondents have no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that Respondents have registered or have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant, who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondents’ documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondents have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the trademark in the corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) Respondents have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondents have intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondents’ web site or location or of a product or service on the Respondents’ web site or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademark HIPERCARD in connection with Complainant’s credit cards in Brazil since 1991, of Complainant’s prior trademark and domain name registrations identical or including the sign HIPERCARD, and the fact that the sponsored links published on the web site “www.” corresponding to the Domain Name are displayed in Portuguese language, Respondents were more likely than not aware of Complainant’s trademark when registered the Domain Name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, on which various sponsored links are published, including links to credit cards, may be misled as to the source, sponsorship, affiliation, or endorsement of Respondents’ web site. Moreover, in all likelihood, Respondents profit by earning pay-per-click revenues (see, e.g., Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, supra, and Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003, in which the panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”
As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, supra, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines was the decision Renegade LLC v. Kenneth GibertWIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
As a further circumstance of bad faith, the Panel finds that, if the use of privacy services per se does not constitute bad faith, in this case it is likely that Respondent opted for a privacy shield to prevent enforcement of legitimate third-party rights. See, along these lines, Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302: “while Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences in appropriate cases (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542). Here, the Panel finds that Respondent’s use of a privacy shield supports its finding of bad faith registration. Although privacy shields might be legitimate in some cases such as protecting the identity of a critic against reprisal it is difficult to see why this Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy (see Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647, holding that use of privacy shield can be “treated as evidence of bad faith when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Such use defies the Policy’s overriding objectives to preserve accountability for unlawful acts on the Internet and to curb the abusive registration of domain names and cybersquatting (see, e.g., Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062)”.
In view of the above, the Panel finds that the Domain Name was 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 Complainant.
Luca Barbero
President Panelist
Alvaro Loureiro Oliveira
Panelist
Ian Lowe
Panelist
Dated: September 23, 2010
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