Complainant is Legião Urbana Produções Artísticas Ltda. of Ipanema, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
Respondent is Vera Duarte of Santo André - São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2014. On June 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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.
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 June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 18, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 29, 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. 4. Factual Background
Complainant is a Brazilian company, which was founded in the year of 1987 to manage activities and assets related to the former Brazilian rock band "Legião Urbana". The band was active until 1996, and sold over 20 million albums. Until nowadays "Legião Urbana" is considered one of the most influential Brazilian bands.
Complainant is the owner of several trademark registrations for LEGIÃO URBANA before the Brazilian Trademark and Patent Office, as per Annex 03 of the Complaint, such as:
- Trademark LEGIÃO URBANA, application No. 200047400 dated September 25, 1990, in International Class 18; and
- Trademark LEGIÃO URBANA, application No. 813737206 dated March 06, 2001, in International Class 09; and
- Trademark LEGIÃO URBANA, application No. 813737214 dated October 24, 2000, in International Class 35, among others.
The disputed domain name was registered on October 10, 2007 by Respondent. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is identical to the LEGIÃO URBANA trademark, to which the Complainant holds exclusive rights, since it incorporates the trademark in its integrity. Moreover, Complainant considers that the addition of the generic Top-Level Domain ("gTLD") ".net" does not make the disputed domain name less confusing.
Complainant also holds that Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent has no registration and/or application for the trademark LEGIÃO URBANA before the Brazilian Patent and Trademark Office. In addition, Complainant states that Respondent has no relation to Complainant whatsoever, nor has Complainant ever granted Respondent any license to use the LEGIÃO URBANA trademark.
Furthermore, Complainant alleges that its trademark is very well known worldwide, and it has been registered and used prior to the disputed domain name's registration.
Complainant claims that Respondent does not make a legitimate use of the disputed domain name, because by the time the Complaint was filed, the disputed domain name was being used to host a website with pay-per-click advertising links for the e-commerce website "Submarino".
Complainant also asserts that Respondent has registered and is using the disputed domain name in bad faith since it must have had knowledge of Complainant's prior rights over the LEGIÃO URBANA trademark, taking also into consideration that the band Legião Urbana is famous worldwide and especially in Brazil, where Complainant is located.
Lastly, Complainant affirms that Respondent also acted in bad faith when registering and using the disputed domain name, by intending to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant's trademark LEGIÃO URBANA. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for the LEGIÃO URBANA trademark.
The Panel finds that the disputed domain name is identical to such trademark, since it incorporates Complainant's trademark in its entirety (without the accent on the letter "a"), fact alone which is generally sufficient to cause confusion or create false associations, misguiding Internet users into believing that the disputed domain name is directly related to the products and services provided by the trademark owner.
With regard to the addition of the gTLD ".net", it is widely accepted that it may be disregarded when assessing the issue of confusing similarity between a trademark and a domain name. It is well-settled in UDRP decisions that "the applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark" (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0", paragraph 1.2). In this case, the use of the gTLD ".net" does not, in any way, diminish the risk of confusion between the disputed domain name and Complainant's trademark LEGIÃO URBANA.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's LEGIÃO URBANA trademark (Policy, paragraph 4(a)(i)). B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview 2.0 as follows: "[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
In this case, Complainant has provided sufficient prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any Response, that burden has not been discharged, and the Panel has considered Complainant's prima facie case to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license whatsoever with Respondent, regarding the use of the trademark LEGIÃO URBANA.
Furthermore, it is clear to this Panel that Respondent does not own any trademark registration bearing LEGIÃO URBANA, nor has Respondent any rights on an unregistered basis to such trademark.
Also, the Panel concurs that Respondent is not commonly known as "Legião Urbana", and has never used any trademark or service mark similar to the disputed domain name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Paragraph 4(b)(iii) 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: "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant's rights to the trademark LEGIÃO URBANA at the time of registration of the disputed domain name, considering its notoriety, especially in Brazil where the famous band was formed and most active.
Regarding Complainant's allegation that, at the time the Complaint was filed, the disputed domain name was being used to host a website with pay-per-click advertising links for the e-commerce website "Submarino", the Panel notes that when it accessed the page corresponding to the disputed domain name on August 7, 2014, it reverted to a Google search, with information on the LEGIÃO URBANA band, its albums and history.
Regardless, the Panel finds that the disputed domain name may indeed create false associations between Complainant and Respondent, misleading Internet users into believing that Respondent is affiliated with Complainant, fact that Complainant has duly confirmed not to be true.
The Panel additionally notes that "passive holding" may in certain circumstances constitute further evidence of bad faith use, especially when Complainant has a well-known trademark and no Response to the Complaint was received, as it happens in the present case.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
Finally, the Panel asserts that this finding of bad faith by Respondent is entirely and exclusively based on Complainant's factual and legal grounds as described in the Complaint and verified by the Panel, whereas no external facts – among others regarding the judicial dispute before the Brazilian Courts between Complainant and two former musicians of the "Legião Urbana" band that are not part of this UDRP proceeding regarding the LEGIÃO URBANA trademark – performed any kind of influence in the present decision, and nor should this decision influence any other ongoing proceedings between other parties, such as the aforementioned lawsuit. 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.
Gabriel F. Leonardos
Sole Panelist
Date: August 7, 2014
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