Complainant is Legião Urbana Produções Artísticas Ltda EPP of Ipanema, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Coracoes Perfeitos of Rio de Janeiro, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 20, 2014. On June 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2014.
The Center verified that the Complaint together with the amended 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 July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 25, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 30, 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;
- Trademark LEGIÃO URBANA, application No. 813737206 dated March 6, 2001, in international class 09; and
- Trademark LEGIÃO URBANA, application No. 813737214 dated October 24, 2000, in international class 35, among others.
The domain name was registered on November 11, 2001 by Respondent. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is identical to the LEGIÃO URBANA trademark since it incorporates the trademark in its entirety, in which the Complainant holds exclusive rights. Moreover, Complainant considers that the addition of the generic Top-Level Domain ("gTLD") ".com" 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 the dispute domain name reverts to an inactive website, and cites several previous UDRP Panel Decisions which have held that passive holding of a domain name may be considered evidence of bad faith, such as Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131.
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 Respondent Coracoes Perfeitos 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 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 this trademark, since it incorporates Complainant's trademark in its entirety, which fact alone 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 ".com", 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 ".com" 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. 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 for 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.
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 worldwide, and especially in Brazil, where the famous band was formed and most active.
The Panel also finds that the disputed domain name may create false associations between Complainant and Respondent, misleading Internet users into believing that Respondent is affiliated with Complainant, a proposition 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, as here, Complainant has a well-known trademark, and no Response to the Complaint was received.
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 11, 2014
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