Complainant is Cooperativa Central de Crédito de Minas Gerais Ltda - Sicoob Central Crediminas of Belo Horizonte, Brazil, represented by Andra Assessoria em Propriedade Intelectual Ltda, Brazil.
Respondent is T of Rio de Janeiro, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2012. On November 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Response was filed with the Center on December 23, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 9, 2013. 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
Complainant is a Brazilian cooperative, responsible for the coordination and centralization of operational processes and representation of their individual affiliated cooperatives in services such as financial centralization, supervision and advice in the areas of credit, economics, technology, accounting, marketing and communication, organization and methods, among others.
Complainant uses the trademark CREDIMINAS since 1988 and it is owner of several trademark registrations in Brazil since 1997 (Annexes 10-16 of the Complaint) bearing this expression, such as registration nº 819910970, granted in 2009, for word trademark CREDIMINAS, claiming services related to financial activities.
Complainant is also owner of two domain names bearing the trademark CREDIMINAS since 1999 (Annexes 17-18 of the Complaint).
The disputed domain name was registered by Respondent on August 8, 2010. 5. Parties’ Contentions A. Complainant
Complainant is a company existent since 1988. Complainant states that it is one of few central cooperatives composing the Sicoob System, which is the largest Cooperative Credit System in Brazil, bringing together more than two million members around the country in 15 years of activity. This system comprises 576 singular cooperatives, 15 central cooperatives (among which is CREDIMINAS), a confederation (SICOOB Confederation), a bank (BANCOOB), a guarantee fund (FGS) and is present in 14 Member States of the Federative Republic of Brazil.
Complainant is owner of several Brazilian trademark registrations containing the word “Crediminas”, which, allegedly benefits a great amount of members in various locations, with efficiency, safety, credibility and good financial results.
Complainant alleges that Respondent registered the disputed domain name aiming to obtain unlawful advantage, since the referred website reverts to links from companies that offer the same financial services as Complainant, such as loans and insurances (Annex 8 of the Complaint).
Complainant also argues that Respondent has registered the disputed domain name in bad faith since it has the intent to sell the domain name for any interested party, putting in risk the integrity of the goods and services provided by Complainant. In this sense, at Respondent’s website there is a link on the top right indicating “know more about this domain” (in Portuguese) which reverts to a page where you can contact the owner of the disputed domain name - Respondent - clearly to provide possibility of negotiations regarding sale of the disputed domain name, in the attempt of profiting with this act (Annex 9 of the Complaint). B. Respondent
Respondent stated, in its response, that the disputed domain name is not identical or confusingly similar to Complainant’s trademark, since Complainant has not been using the name CREDIMINAS for the at least 9 years;
Respondent alleges that Complainant’s home page at “www..br” shows that it conducts business basically under the name/trademark SICOOB (Annex 2 of the Response) and that all credit cards showed are issued as SICOOBCARD, with no mention to CREDIMINAS.
Respondent argues that at Complainant’s website everything is referred to as SICOOB and this is because as of September 19, 2003, Complainant has changed its name from the original name "Cooperativa Central de Credito Rural de Minas Gerais Ltda - Crediminas" to "Cooperativa de Credito Central de Credito de Minas Gerais Ltda - SICOOB Central Crediminas" as per Complainant’s Annex 6, and has become part of the SICOOB system, letting CREDIMINAS as an abandoned legacy and former name.
Respondent alleges it had no prior knowledge of Complainant’s activities when it registered the disputed domain name and that it has legitimate interests in the disputed domain name, since it is the combination of two generic terms, "credi" from credit, and “Minas”, which is a State in Brazil.
Respondent also attests that it is not selling or advertising services connected directly with Complainant’s activities, since the web page is just parked with generic ads served based on visitor’s profiles and several UDRP cases already admit that using a parking service per se is not an infringing use, and may be even considered fair use.
Respondent states that it became aware of the fact that Complainant, or one of its agents, once owned the disputed domain name, but subsequently its registration for the disputed domain name was dropped, for lack of interest.
Respondent affirms that the disputed domain name is not and has never been for sale and considers that Complainant is attempting to acquire the disputed domain name through reverse domain name hijacking. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter. A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for CREDIMINAS in Brazil and that such trademark is incorporated in the disputed domain name .
The Panel feels it is highly possible that consumers erroneously access the disputed domain name when searching for Complainant’s website, which may definitely cause confusion and possible damage to Complainant.
The Panel therefore finds that the disputed domain name is identical to Complainant’s trademark registration, and, thus, that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel recognizes that Complainant has never authorized Respondent to incorporate its trademark CREDIMINAS into the disputed domain name and it is apparent that, in the Panel’s view, Respondent’s only intention when registering the disputed domain name was to attract, for commercial gain, Internet users to its website by creating a false association with Complainant’s trademark and company.
Complainant has proved to the satisfaction of this Panel that Respondent does not have rights or legitimate interests in the expression “Crediminas”, since it is not commonly known as CREDIMINAS, has never filed trademark applications for CREDIMINAS and has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Panel understands that the word “Crediminas” is a combination of two generic terms, but it is an expression duly registered by Complainant before the Brazilian PTO and, therefore, Complainant has exclusive rights to its trademark. It is not uncommon for the combination of two generic terms to form a new, distinctive term, and this is the case of Complainant’s trademark CREDIMINAS.
In fact, Complainant has registration for several word marks for CREDIMINAS, which gives it exclusivity over this expression for every service/product claimed by Complainant with its trademark registrations, including, especially, services/products related to financial activities. Thereby, Respondent’s allegation that CREDIMINAS is a combination of two generic terms cannot have weight in this case, since Complainant has in fact exclusive rights over this expression.
Moreover, the Panel considers Respondent’s use of the disputed domain name, in which the links on the website appear to be based on the value of Complainant’s trademark, to be unfair use resulting in misleading diversion. See paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel also attests that Complainant’s website at “www..br”, contrary to Respondent’s allegations, still has several references to the trademark CREDIMINAS, since the Sicoob System is actually named, and always referred to at the website as ”Sicoob System Crediminas”. Thereby, it is clear that Complainant still uses its registered trademark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
The Panel finds it is highly unlikely that Respondent was not aware of Complainant’s activities and legal rights to the trademark CREDIMINAS at the time of registration of the disputed domain name. The fact that the disputed domain name resorts to links offering services connected to the financial services offered by Complainant is another sign that Respondent was acting in a way as to make an undue profit from the use of a domain name confusingly similar to Complainant’s trademark.
Respondent claims that the web page at the disputed domain name is just parked with generic ads and that using a parking service per se is not an infringing use and may be considered fair use. The Panel, in the circumstances of this case, and as discussed above, does not agree. See also paragraph 3.8 of the WIPO Overview 2.0, in which it is stated that panels have found that respondents will normally be deemed responsible for content appearing on a website at its domain name. The Panel finds that this is the case in the current proceedings.
Thereby, based on paragraph 4(b)(iv) of the Policy, the Panel holds that Respondent is using the disputed domain name to intentionally attempt to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark, which leads to a finding of bad faith of Respondent while registering and using the disputed domain name.
The fact that the disputed domain name appears to have been once registered by Complainant and subsequently expired, in the Panel’s view, is not relevant and does not change the Panel’s findings.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. D. Reverse Domain Name Hijacking
In light of the Panel’s findings above, Respondent’s request for a finding of reverse domain name hijacking is denied. 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.
Gabriel F. Leonardos
Sole Panelist
Date: January 22, 2013
Full & Egal Universal Law Academy