The Complainant is J. P. SA COUTO, S.A., of Perafita, Portugal, represented by J.E. Dias Costa, Lda., Portugal.
The Respondent is Wanzhongmedia, c/o Wan Zhong, of Shen Zhen City, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with EuroDNS S.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2011. On June 21, 2011, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the disputed domain name. On June 22, 2011, EuroDNS S.A. 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 June 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On June 27, 2011, the Complainant filed an Amended Complaint, dated June 26, 2011. In response to an email sent by the Center to the parties regarding the language of the proceedings, the Complainant filed the Amended Complaint in the English language.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2011.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 27, 2011. 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.
Regarding the language of the proceeding, the Center ascertained from the Registrar that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the registration agreement. 4. Factual Background
The Complainant is a Portuguese company incorporated on May 2, 1989 and very well known in Portugal, as a manufacturer of computers which it markets under the brands Tsunami and Magalhães which are leaders in Portugal. The Complainant was awarded several prizes, inter alia, Intel Channel Partner Premier (in 2002) and Gold Certified Partner de Microsoft (in 2005). The Complainant is the holder of figurative Portuguese trademark registration No. 338394, filed on July 13, 1999 and granted on February 15, 2000 (the “JP SA COUTO trademark”).
In addition, the Complainant registered the domain name, , in 1999, incorporating its JP SA COUTO trademark, which is used in connection with its marketing and sales activities.
The disputed domain name was created on March 7, 2009. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the distinctive part of the JP SA COUTO trademark and is confusingly similar to the JP SA COUTO trademark insofar as the disputed domain name contains that trademark, which is also the corporate name of the Complainant.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known as “jpsacouto”, and has not used, or made any demonstrable preparations to use, the disputed domain name or corresponding name in connection with a bona fide or non-infringing offering of goods or services. The Complainant did not authorize or license the Respondent’s use of its JP SA COUTO trademark, nor does it know of any other entity (individual, business or other organization, Portuguese or non-Portuguese) which carries the same name JP SA COUTO and since SÁ and COUTO are common family names in Portugal, it is extremely unlikely that a non-Portuguese entity would have a legitimate interest in these two words and also a legitimate use of these words on the Internet.
(iii) Although the disputed domain name currently resolves to a website, “www.”, which whilst apparently no longer active, was for several months and at least until May 9, 2011 active and, whilst purporting to cover “all topics in relation to local phone companies”, did in fact display sponsored links.
(iv) By registering the disputed domain name, the Respondent intentionally attempts to create confusion amongst Internet users and to attract them for commercial gain to a website. For instance, a Portuguese consumer that is already aware of the Complainant and of its goods will certainly associate the disputed domain name with the Complainant. This is damaging to the Complainant as it creates a likelihood of confusion with its JP SA COUTO trademark with respect to the source, affiliation or endorsement of the website owner. Such conduct amounts to bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained from the WIPO Center’s publicly available database of decided cases that Wan Zhong was a named respondent in a recent case, Saxo Bank A/S v. Wan Zhong,WIPO Case No. D2010-1977, where the registrar was also EuroDNS, S.A. and a privacy shield service was also used.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. 6.2 With respect to the requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
In comparing the JP SA COUTO trademark to the disputed domain name, it is evident that the latter, , consists solely of the distinctive part of the JP SA COUTO trademark, followed by the generic term “com”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name is confusingly similar to the JP SA COUTO trademark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as the Panel believes it has made in this case). See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name was a commercial website, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) is not the owner of any trademark right relating to the Complainant; (ii) has no legitimate interest in the disputed domain name, insofar as the JP SA COUTO trademark was registered many years before the disputed domain name; (iii) has never made a fair use of the disputed domain name, in relation with a bona fide offering of goods and services, and has not made demonstrable preparations of such use; and (iv) is not known by the name “jpsacouto”. Furthermore, the Complainant states it does not know any other entities individuals or organizations, Portuguese or non-Portuguese, carrying the JP SA COUTO name.
The Respondent’s web site, when it was active, demonstrated that the disputed domain name was used for commercial gain and as a diversion to Internet users from the active website associated with the Complainant’s domain name which they would seek to access.
In the circumstances, the Panel is satisfied that the Respondent used the disputed domain name for commercial gain, and concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by (i) using a web site, to which the disputed domain name resolved, which was only fictitious and artificial, because it made only brief references to telephone services, but without specifying which services are rendered or who is the entity who renders them; (ii) redirecting Internet traffic, intended for the Complainant for the Respondent’s commercial gain and (iii) creating confusion to the detriment of the Complainant by using a similar domain name to the Complainant’s domain name.
In addition, the Panel notes a pattern of conduct by the Respondent of preventing a trademark holder from reflecting the mark in a corresponding domain name, notably by registering the domain name, which was held in Saxo Bank A/S v. Wan Zhong,WIPO Case No. D2010-1977, to demonstrate bad faith, and the Panel finds such pattern of conduct to be indicative of bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors,WIPO Case No. D2000-0010. Furthermore, the Panel can discern no legitimate basis for the Respondent’s repeated use of a privacy shield service as in Saxo Bank A/S v. Wan Zhong,WIPO Case No. D2010-1977, and considers this fact under the present circumstances as corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC,WIPO Case No. D2006-0523.
The Panel concludes in these circumstances that the Respondent’s registration, use and present passive holding of the disputed domain name indicate bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Dated: July 28, 2011
Full & Egal Universal Law Academy