Complainant is 3M Company of St. Paul, Minnesota, United States of America (the “USA”), represented by Luiz Leonardos & CIA, Brazil.
Respondent is Website Solucoes, Bruno da Silva Porto of Rio de Janeiro, 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 March 19, 2014. On March 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center stating that the registrant name for the disputed domain name differed from the named Respondent, Complainant filed an amendment to the Complaint on March 26, 2014.
The Center verified that the Complaint together with the amendment to 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 March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2014.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 24, 2014. 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.
On May 9, 2014, the Center received an email communication from someone named R. Porto. The Panel has decided not to admit and consider such email communication. 4. Factual Background
Complainant is 3M Company and offers numerous products and services in a wide variety of fields.
Complainant has registered in Brazil since the year 1982 several trademarks containing the term “Aqualar” for classes covering “Apparatus for filtering water, filters for potable water, apparatus for purifying water and parts for the same” and “Household articles and utensils”.
Complainant markets in Brazil a filter for water under the trademark AQUALAR.
According to the Complaint, Respondent was commercializing products through the website “www..br” and also registered the disputed domain name .
The disputed domain name was registered on July 4, 2012. At the time of this decision, the website at the disputed domain name is not active. 5. Parties’ Contentions A. Complainant
Complainant is the owner of several trademarks for the term AQUALAR all of them duly registered in Brazil.
Complainant states that the distinctive portion of the disputed domain name is composed of the element “filtro” (which means “filter” in Portuguese, and is precisely the main product identified under Complainant’s trademark) and of the registered trademark AQUALAR. Therefore, the disputed domain name is confusingly similar to Complainant’s trademarks.
The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, inasmuch as it does not hold any applications or registrations for the trademark AQUALAR to designate filters or related goods, nor does it have any other kind of rights over such term.
Complainant also states that before any notice to Respondent of the present dispute, Respondent was commercializing products through the website “www..br”, which is equivalent to the disputed domain name and is registered under the name of an individual with the same middle and last names of Respondent. According to Complainant, such fact per se is a firm indication that Respondent also aims at carrying out commerce of goods through the website “www.”.
According to Complainant, the use of the domain name by the Respondent is not a legitimate noncommercial or fair use one, without intent for commercial gain misleadingly to divert consumers. On the contrary, Respondent’s intention seems to be exactly to commercialize products online, attracting consumers to its website through Complainant’s trademark, which is registered in Brazil (country of the Respondent) and has been consolidated for decades. Such conclusion may be inferred by the offering of goods on the website “www..br”, which is equivalent to the disputed domain name with the addition of Brazil’s country code.
The registration of the disputed domain name misleads the public and there is clear evidence that this is exactly the intention of Respondent, inasmuch as it has been contacted several times and formally notified by the Complainant, and still refused to cooperate. The bad faith is also evidenced by the fact that the website corresponding to the disputed domain name would certainly attract Internet users looking for the Complainant’s products, who would be led into confusion as to the source of the Complainant’s goods, or would, at least, be led to believe that the Complainant endorses the website of Respondent, which is not the case.
Finally Complainant states that such conduct also prevents the owner of the trademark from reflecting the trademark with its descriptive term “filtro” in a corresponding domain name, which disrupts the Complainant’s online business in relation specifically to its “Aqualar” filters.
Complainant requests the transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 in bad faith. A. Identical or Confusingly Similar
Complainant provided evidence that it has registered rights in the trademark AQUALAR in Brazil.
The disputed domain name is confusingly similar to the registered trademark AQUALAR in which Complainant has rights.
The term “filtro” is used within the disputed domain name. Previous UDRP panels have held that adding common, descriptive terms to a registered trademark and registering the result as a domain name does not mitigate the confusing similarity between a domain name and a trademark. In the present case, the term “filtro” is precisely the main product identified under Complainant’s trademark. Therefore Internet users may be mislead into thinking that the disputed domain name is related to Complainant.
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how Respondent can demonstrate a right or legitimate interest in the disputed domain name:
(i) Before receiving any notice of the dispute, Respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name; or
(iii) 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 trademark at issue.
Based on Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not licensed nor authorized the use of its trademark to Respondent, and there is no indication that Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
It is the view of the Panel that Respondent knew of the Complainant at the time of registering the disputed domain name. The Respondent registered a domain name composed of the trademark AQUALAR and the generic term “filtro”. The aforementioned generic term has an obvious connection with Complainant because it describes the product that Complainant sells under the trademark AQUALAR. Thus, it is the view of the Panel that this is clear and direct evidence of bad faith registration of the disputed domain name.
With respect to bad faith use, Respondent is not using the disputed domain name to resolve to an active website. There are several cases, of which Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, is an example, where so called “passive holding” of a domain name has been held to constitute use within the meaning of paragraph 4(a)(iii) of the Policy.
According to the consensus view, with comparative reference to the circumstances set out in paragraph 4(b) of the Policy deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 (the “WIPO Overview 2.0”).
The cumulative circumstances found to be indicative of bad faith in this case include the fact that Complainant’s trademark was registered in 1982 in Brazil, while the disputed domain name was registered thirty (30) years later; Respondent is alleged offering of goods on the website “www..br” (an allegation not denied by Respondent); and the contact details supplied by the Respondent to the Registrar were incorrect at the time of registration or have not been kept up to date (according to the report from the international courier, indicating that the Written Notice could not be delivered).
The Panel is convinced, on the preponderance of the evidence, combined with the inferences drawn due to Respondent’s failure to respond, that Respondent has registered and is using the disputed domain names in bad faith. Accordingly, it is found that Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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.
Pablo A. Palazzi
Sole Panelist
Date: May 12, 2014
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