Complainants are OM Brand Licensive Licenciamento Ltda. and Terras de Aventura Indústria de Artigos Esportivos Ltda. of Rio de Janeiro, Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
Respondent is John Albuquerque of São Paulo, São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (“the Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On October 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2012, the Registrar 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 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2012.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 28, 2012. 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 trademark upon which the Complaint is based is OSKLEN. According to the documentary evidence and contentions submitted, first Complainant owns a number of registrations for the OSKLEN trademark in different countries. In Brazil, first Complainant owns the following trademark registrations: No. 814306144, issued on March 1, 1990; No. 200028022, issued on September 17, 2002; No. 820501107, issued on September 17, 2002; No. 823189953, issued on December 28, 2010; and No. 826774520, issued on September 4, 2007.
According to the documentary evidence and contentions submitted, Complainants belong to the Osklen Group, a Brazilian group doing business in the fashion market for over twenty years and currently having a large number of stores in Brazil, New York, Miami, Milan, Rome, and Tokyo, as well as showrooms in Italy, Spain, Greece, Australia and the Russian Federation. The Osklen Group also exports its products to Belgium, Chile and the Middle East. OSKLEN has been considered as one of the most successful Brazilian brands in the world.
Complainants also hold several domain names, including , registered on July 18, 1997; , registered on October 24, 1997; and , registered on August 7, 2012.
The disputed domain name was registered on June 19, 2012.
As the disputed domain name was resolving to a website offering prima facie counterfeit products, Complainants sent a cease and desist letter to Respondent on August 13, 2012. According to the contentions submitted, the website was deactivated, but no response was given to Complainants’ cease and desist letter. 5. Parties’ Contentions A. Complainants
Complainants contend that the disputed domain name is identical or confusingly similar to first Complainant’s trademark because (i) it incorporates the OSKLEN trademark in its entirety with the addition of the generic word “tenis”, which means in Portuguese “tenis shoes”, one of Complaints’ main products, (ii) the addition of a generic word linked to Complainants’ activities is likely to increase the possibility of confusion amongst consumers, and (iii) the addition of a generic word is not enough to characterize the disputed domain name as being distinct from Complainants’ registered OSKLEN trademark.
Complainants further contend that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no registration and/or application for the trademark OSKLEN before the Brazilian Patent and Trademark Office; (ii) Complainants have no relationship whatsoever with Respondent and have never authorized Respondent to use the disputed domain name or any other domain name; (iii) Respondent is not commonly known or identified by the name “tenisosklen”, and it does not offer any goods or services under such mark; (iv) Respondent does not make a legitimate use of the disputed domain name as same was being used to host a website selling counterfeit products unduly identified by Complainants’ trademarks. Complainants also argue that OSKLEN trade and service marks are well-known in Brazil and have been in the business for more than 23 years.
Finally, Complainants contend that Respondent registered and used the disputed domain name in bad faith because (i) Respondent intended to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainants’ trademark OSKLEN; (ii) by selling counterfeit products bearing Complainants’ trademark, Respondent demonstrated actual knowledge of Complainants’ rights over the trademark OSKLEN, and knowingly and willingly infringed them, in clear bad faith; (iii) after receipt of Complainants’ cease and desist letter, Respondent did not send any response to Complainants, but made the content of the website under the disputed domain name unavailable; (iv) it is consensus in prior UDRP cases that the passive holding of a domain name can constitute bad faith registration and use of a disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainants from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainants. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy in order to determine whether Complainants have complied with such requirements. B. Identical or Confusingly Similar
The disputed domain name incorporates the OSKLEN mark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC.,WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. In the instant case, the combination of the word “osklen” with the prefix “tenis” does not affect to this Panel the overall impression of the dominant part of the disputed domain name. In fact, the addition of a descriptive word linked to the products that the Complainants market renders the disputed domain name even more confusingly similar to the registered trademark. The Panel agrees with Complainants’ contention that the OSKLEN trademark is widely known in Brazil and, accordingly, the prefix “tenis” strengthens the impression that the disputed domain name belongs to, or is affiliated with, Complainants.
Finally, the addition of the generic top-level suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the OSKLEN trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The consensus view in UDRP decisions has been that a complainant is required to make out an initial prima facie case, and respondent thereafter carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainants have done enough to establish a prima facie case. In fact, the Panel finds reasonable Complainants’ contentions that (i) Respondent has no registration and/or application for the trademark OSKLEN before the Brazilian Patent and Trademark Office (or other jurisdiction); (ii) Complainants have no relationship whatsoever with Respondent and have never authorized the Respondent to use the disputed domain name or any other domain name; and (iii) Respondent is not commonly known or identified by the name “tenisosklen”, and it does not offer any goods or services under such mark.
The Panel also agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP decisions as the Panel is satisfied that the disputed domain name was being used to host a website selling counterfeit products unduly identified by Complainants’ trademarks.
Additionally, as further detailed below, the Panel agrees that the evidence and circumstances of this case indicate that the disputed domain name was registered to divert Internet users by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s domain name.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainants’ OSKLEN trademark when Respondent registered the disputed domain name . Given the reputation of the OSKLEN trademark and the publicity involving the activities of Complainants, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “tenis” in conjunction with the term “osklen” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainants’ trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847.
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its web site or location or of a product or service on its web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
In addition, an independent research was conducted by the Panel on December 8, 2012, in order to determine whether or not the disputed domain name still resolves to any website maintained by Respondent. The Panel found out that the disputed domain name no longer resolves to an active website. The Panel finds that this change is irrelevant for the resolution of the case.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 Complainant Terras de Aventura Indústria de Artigos Esportivos Ltda., as requested by Complainants.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: December 10, 2012
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