The Complainant is CONTEM1G S.A. of Sao Paulo, Brazil, represented by Weinmann Zimmerli, Switzerland.
The Respondent is Web Solutions of Orlando, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name ("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 October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2013, 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 October 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 25, 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 Complainant was incorporated on July 18, 1984 in Brazil, and is primarily involved in the perfume and cosmetics industry. The Complainant owns registrations for its trade mark CONTEM1G in various countries, including the United States of America, the European Union, Argentina, Brazil and Mexico. It has been using the CONTEM1G mark since 1984. The Complainant also owns the domain name , which was registered on August 19, 1997.
The Respondent is based in the United States of America. The Disputed Domain Name was registered on January 17, 2002, and currently resolves to a parking page that includes sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant owns several trade mark registrations for CONTEM1G, including in the United States of America, Brazil and the European Union, and has been using the CONTEM1G mark since 1984.
(b) The Disputed Domain Name is identical to the Complainant's registered trade mark CONTEM1G and its domain name .
(c) The Respondent does not hold any trade mark rights in CONTEM1G.COM, and has not been using the Disputed Domain Name in relation to a bona fide offering of goods or services.
(d) The Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, as it intends to make a commercial gain by selling the Disputed Domain Name for profit.
(e) The Disputed Domain Name resolves to a website indicating that the Disputed Domain Name is for sale. The Respondent has also repeatedly contacted the Complainant to try and sell the Disputed Domain Name to it in return for USD 40,000. This indicates that the Disputed Domain Name was registered primarily with the intent to sell the Disputed Domain Name to the Complainant, or a competitor, for valuable consideration in excess of the Respondent's out-of-pocket expenses, which is evidence of bad faith.
(f) By registering the Disputed Domain Name, the Respondent has blocked the Complainant from using it. The Respondent itself is not using the Disputed Domain Name to offer any products or services. This is therefore further evidence of bad faith.
(g) The Disputed Domain Name is used by the Respondent to confuse Internet Users into thinking that it is connected to the Complainant, and to redirect traffic to the website that the Disputed Domain Name resolves to.
(h) The CONTEM1G mark is a unique word. The registration of the Disputed Domain Name by the Respondent cannot, therefore, be mere coincidence. B. Respondent
The Respondent did not reply to the Complainants’ contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainants. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the CONTEM1G trade mark on the basis of its various trade mark registrations, including trade mark registrations in Brazil, the United States of America, Argentina and the European Union.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is identical to the Complainant's CONTEM1G mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s CONTEN1G mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the CONTEN1G trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The website that the Disputed Domain Name resolves to is a parking page that provides sponsored links and includes a message stating that the Disputed Domain Name is for sale. The Panel therefore finds that the Respondent has not been using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant has produced evidence that the Respondent had been negotiating to sell the Disputed Domain Name to a company in Spain for USD 40,000, but that the Respondent said it would be willing to sell the Disputed Domain Name to the Complainant instead, if the Complainant provided a good counteroffer. It is therefore evident to the Panel that the Respondent obtained the Disputed Domain Name for commercial gain and in bad faith. As such, the Respondent appears to have no basis to claim any rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under the Policy, registration by the respondent of a domain name primarily for the purpose of selling it to a complainant or the complainant’s competitors for an amount in excess of the respondent's out-of-pocket costs, serves as evidence of registration and use of the domain name in bad faith.
Given the evidence provided by the Complainant (i.e. that the Respondent was trying to negotiate with both the Complainant and a third party in Spain, to sell the Disputed Domain Name for at least USD 40,000), the Panel finds that the Respondent obtained the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name to the Complainant, or the Complainant's competitors, for an amount in excess of the Respondent's out-of-pocket expenses. This finding is further supported by the fact that: (i) the Disputed Domain Name resolves to a parking page which states that the Disputed Domain Name is for sale; (ii) the Disputed Domain Name is not being used by the Respondent in a way that could create any rights or legitimate interests in the Disputed Domain Name; and (iii) the mark CONTEM1G is a made up word that has been used by the Complainant since 1984, and it therefore cannot be mere coincidence that the Respondent registered the Disputed Domain Name which is identical to the Complainant's CONTEM1G mark.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: December 6, 2013
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