Complainant is Instituto Roberto Sampaio Ferreira of São Bernardo do Campo, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
Respondent is Maria Cristina de Souza Macedo of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2012. On December 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2013.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on January 15, 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
The trademark upon which the Complaint is based is MULHERES QUE BRILHAM. According to the documentary evidence and contentions submitted, Complainant holds the following trademark applications for the trademark MULHERES QUE BRILHAM before the Brazilian Patent and Trademark Office (INPI):
Number Filing date Class
904585719
03/7/ 2012
45
904585727
03/7/ 2012
41
904752569
04/26/2012
41
According to the documentary evidence and contentions submitted, Complainant is a Brazilian nongovernmental organization the main objectives of which are to develop social work based on community education, by creating sociocultural networks, and to value the feminine main role.
Bombril Mercosul S.A., one of Complainant’s founders and a related company, holds the following trademark registrations for the trademark BOM BRIL MULHERES QUE BRILHAM:
Number Filing date Granting Date Class
902445812
03/25/2010
11/21/2012
05
902445731
03/25/2010
11/21/2012
21
902446274
03/25/2010
11/21/2012
03
902445901
03/25/2010
11/21/2012
21
902445243
03/25/2010
11/21/2012
03
902445499
03/25/2010
11/21/2012
05
Since 2010 Complainant has developed the project “Mulheres que brilham” (“Women that shine”), with the goal of appreciating the Brazilian woman and the female role in society today. Complainant and its related entity, Bombril Mercosul S.A, a well know business company, have launched several actions designed to recognize the importance of women and stimulate the feminine way. Among those actions, there are the many prizes given to Brazilian female personalities for their achievements in various fields of activities.
The disputed domain name was created on April 26, 2012. According to the documentary evidence and contentions submitted, Complainant sent a cease and desist letter to Respondent on July 12, 2012. On July 19, 2012, Respondent contacted Complainant by telephone requesting a 30-day deadline to cease the use of the trademark and to transfer the disputed domain name. On the same date, Complainant sent an e-mail to Respondent, agreeing with the requested deadline. On August 27, 2012, Complainant sent Respondent an e-mail acknowledging that Respondent had partially complied with the requests made by changing Respondent’s term to “Mulheres Brilhantes”, and noticing that Respondent had not transferred the disputed domain name to Complainant. On August 29, 2012, Respondent replied refusing to transfer or cancel the disputed domain name to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to Complainant’s trademark because it reproduces the entirety of the mark in which the Complainant holds rights.
Complainant further contends that Respondent does not have rights or legitimate interests in the disputed domain name because (i) Respondent has no registration and/or application for the trademark MULHERES QUE BRILHAM before the Brazilian Patent and Trademark Office (INPI); (ii) Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the disputed domain name or any other domain name reproducing its trademark MULHERES QUE BRILHAM; (iii) Complainant’s mark is well known in Brazil and has been used since 2010, long before Respondent registered the disputed domain name; (iv) Respondent is not commonly known or identified by the name “Mulheres que brilham”, and it does not offer any goods or services under such mark; (v) Respondent does not make a legitimate use of the disputed domain name because, before receipt of the cease and desist letter sent by Complainant, the disputed domain name was being used to host a website offering competing services under the same mark in which Complainant holds rights; upon receipt of the cease and desist letter, Respondent has modified its website and started using the term “Mulheres Brilhantes”.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) Respondent was aware of Complainant’s activities under the trademark MULHERES QUE BRILHAM when she registered the disputed domain name; (ii) Respondent intended to intentionally attract, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant’s trademark MULHERES QUE BRILHAM; (iii) Respondent began using the disputed domain name to host a website offering competing services (information related to the feminine universe) under the same mark in which Complainant holds rights; (iv) after receiving Complainant’s cease and desist letter, Respondent recognized that such use of the mark MULHERES QUE BRILHAM infringed Complainant’s trademark rights, and Respondent modified her website and started using the term “Mulheres Brilhantes”; however, Respondent refused to cancel or transfer the disputed domain name and started to use it to redirected Internet users to her new website , which is clearly not a legitimate or noncommercial use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the 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, paragraph 2.2, “WIPO Overview 2.0”). 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.
This 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 Complainant 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.Contac. 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 Complainant. 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 to determine whether Complainant has established each of the three elements required therein. B. Identical or Confusingly Similar
Complainant has alleged unregistered rights in the term “Mulheres que Brilham”. Complainant's evidence of rights includes a number of trademark applications filed with the Brazilian Patent and Trademark Office (INPI). Registration based on those applications has not yet been granted.
Complainant also alleges that Bombril Mercosul S.A, one of Complainant’s founders and a related company, holds various trademark registrations for the trademark BOM BRIL MULHERES QUE BRILHAM, and that a related company to the holder of a registered mark is considered to have rights in a trademark under the UDRP. See Telcel, C.A. v. jerm and Jhonattan Ramiréz,WIPO Case No. D2002-0309, Spherion Corporation v. Peter Carrington, d/b/a/ Party Night Inc.,WIPO Case No. D2003-1027.
With regard to Complainant’s registered trademark, the Panel notes that the disputed domain name incorporates a significant portion of Complainant’s registered trademark BOM BRIL MULHERES QUE BRILHAM, which, in the Panel’s view, suffices for the purposes of the Policy, paragraph 4(a)(i).
Therefore, the Panel is of the opinion that the disputed domain name is confusingly similar to Complainant's registered trademark. The addition of the generic top-level domain identifier (gTLD) “.com” is not material from the standpoint of the Policy.
The Panel also notes that Complainant relies on unregistered trademark rights in the term “Mulheres que brilham”.
In this respect, Complainant contends that unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. See The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050. In that decision, the panel acknowledged that the UDRP in paragraph 4(a)(i) refers merely to a "trademark or service mark" in which the complainant has rights, and in particular does not expressly limit the application of the Policy to a registered trademark or service mark of the complainant.
Paragraph 1.7 of the WIPO Overview 2.0 sets out the consensus view as to what a complainant needs to show in order to successfully assert unregistered trademark rights:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition… For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
In the case at hand, the claimed unregistered trademark consists of descriptive words and is not inherently distinctive. It therefore falls into that category of cases where there is an onus on a complainant to present compelling evidence of secondary meaning or distinctiveness. In the Panel’s view, Complainant supplies sufficient evidence in support of its claims for unregistered rights as at the time of the Complaint, for purposes of the Policy. Complainant, both directly and through its related company, Bombril Mercosul S.A, has made extensive use of the term “Mulheres que brilham” by means of numerous events, promotions and advertisements since as early as 2010. Therefore, the Panel concludes that Complainant has established unregistered trademark rights in the term “Mulheres que brilham”, for the purposes of the Policy.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel accepts Complainant’s contentions that Respondent is not associated in any way to Complainant, and has never been authorized by Complainant to register the disputed domain name. Evidence produced by Complainant also shows that Respondent has no registration and/or application for the term “Mulheres que brilham” before the Brazilian Patent and Trademark Office (INPI).
Paragraphs 4(c)(ii) and (iii) of the Policy require that Respondent submit evidence that she or her business have been commonly known by the disputed domain name or that she is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to divert consumers or to tarnish Complainant’s trademark. Pursuant to paragraph 4(c) of the Policy, any of such circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy.
There is no indication on the records that Respondent or her business have been commonly known by the disputed domain name, and in her response to Complainant, upon receipt of the cease and desist letter, no such contention was made. The Panel finds that that in this case Respondent is not making use of a generic value of the disputed domain name. Instead, in the Panel’s view, all circumstances point strongly to the Respondent having chosen the disputed domain name because of its value as a close approximation to Complainant’s trademark. In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “Mulheres que brilham” in the disputed domain name other than the fact that such term was fairly known in Brazil at the time the disputed domain name was registered due to the events, promotions and advertisings carried out by Complainant and its related companies.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
One of Complainant’s contentions of bad faith is based on the argument that at the time of registration of the disputed domain name Respondent knew, or at least should have known, the existence of Complainant’s activities under the registered trademark BOM BRIL MULHERES QUE BRILHAM and/or the unregistered trademark MULHERES QUE BRILHAM.
The Panel has already found that Respondent most likely adopted the term “Mulheres que brilham” because the same was fairly known in Brazil at the time the disputed domain name was registered due to the events, promotions and advertisings carried out by Complainant and its related companies. Therefore, the Panel concludes that Respondent registered the disputed domain name to benefit from the reputation of Complainant’s potential future registered and/or potential future unregistered trademarks. See WIPO Overview 2.0, paragraph 3.1, in which panels have found that, in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This seems to apply in this case. Accordingly, the Panel finds that, in the circumstances of this case, Respondent registered the disputed domain name in bad faith.
With regard to the use of the disputed domain name in bad faith, the Panel notes the sequence of events as follows.
The fact that Respondent began using the disputed domain name to host a website offering competing services, and that upon receipt of Complainant’s cease and desist letter Respondent modified her website, started using the term “Mulheres Brilhantes”, and began using the disputed domain name to redirect Internet users to her new website at “www.”, in the Panel’s view, is clear evidence of use of a domain name in bad faith.
Paragraph 4(c)(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 respondent’s web site or location or of a product or service on respondent’s web site or location, that circumstance shall be evidence of the registration and use of the disputed domain name in bad faith.
Therefore, 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.
Manoel J. Pereira dos Santos
Sole Panelist
Date: January 28, 2013
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