The Complainant is Companhia Brasileira de Distribuição of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Jair Aires Pereira Netto of Paraná, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2014.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 19, 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
The Complainant is part of the Pão de Açúcar Group and owns the word and figurative marks EXTRA, which have been used in the supermarket business for more than two decades in Brazil.
The Complainant also owns several domain names encompassing the mark EXTRA, including , , , etc.
The disputed domain name was registered to the Respondent on February 1, 2010. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
I – The Complainant is a Brazilian company part of the Pão de Açúcar Group, a well known group in the national retail market that has several stores throughout the country. One of its main commercial establishments is identified by the trademark and trade name EXTRA, which has been used continuously since the inauguration of the EXTRA hypermarket chain in 1989. EXTRA is a very famous trademark in the segment of hypermarkets, supermarkets and sales of products in Brazil, due to the massive and continuous marketing investments for more than twenty-five years.
II – The Complainant owns several registrations for the trademark EXTRA under the Brazilian PTO (Industrial Property National Institute – INPI), as well numerous domain names containing the expression “extra”.
III - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent misuses the trademark EXTRA in the disputed domain name. The Respondent’s website at the disputed domain name focuses on the Brazilian market (“extrabrasil”) such as the website and trademarks of the Complainant. Furthermore, the Respondent uses the website at the disputed domain name to develop identical activity of the Complainant, which is sell products by ecommerce. The disputed domain name is a reproduction of the Complainant’s main distinctive element (famous trademark and trade name EXTRA), which causes an undue association by the consumers and the public in general. These illegal and unfair acts practiced by the Respondent characterize evident violation of: a) The Brazilian Intellectual Properties Law (Law # 9.279/96) and b) The Paris Convention, CUP1 (articles 1o, 3o, 6- BIS, 6o “Quinquies C1”, 8o) of which Brazil and the United States are signatories. The Respondent has neither prior rights in the EXTRA trademark nor legitimate interests in acquiring or maintaining the disputed domain name. The Respondent is not a company controlled by the Complainant and is not authorized to register domain names made up of the EXTRA trademark. All the attempts to send a Cease and Desist letter to the Respondent, by post and email, were unsuccessful because the Respondent has moved from the address indicated in the WhoIs for the domain name registration and the Respondent did not respond to the Complainant’s emails.
IV - The disputed domain name was registered and is being used in bad faith. The Respondent, apparently a Brazilian citizen, ignores the rights regarding EXTRA that identify the Complainant shops. The Respondent intends to attract Internet users to the Respondent’s website through the likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that “extra” is a term directly connected with the Complainant’s activities in the supermarket business in Brazil.
Annexes 9 - 14 to the Complaint show registrations of EXTRA trademarks obtained by the Complainant in Brazil since at least 1989.
The trademark EXTRA is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark by the addition of the words “loja” (store) and “brasil” (Brazil) around the expression “extra”, as well as the generic Top-Level Domain (gTLD) denominator “.com”.
Previous UDRP decisions have demonstrated that descriptive and geographical additions to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also already well established that the mere addition of a gTLD extension such as
“. com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the 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 the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the 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. Indeed, the Complainant has shown previous uses of the disputed domain name for the commercial purpose of a competing website selling goods similar to those offered on the Complainant’s website.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the 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 the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the 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 the 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.
When the disputed domain name was registered by the Respondent (in 2010) the trademark EXTRA was already registered and connected to the Complainant’s activities in the supermarket business for more than two decades in Brazil.
The Respondent also is also located in Brazil.
Therefore, the Panel considers it highly unlikely that the Respondent - at the time of the registration of the disputed domain name - was unaware of the Complainant’s trademark, also taking into account the use of the expressions “loja” (store), “extra” and “brasil” (Brazil) in the disputed domain name.
The Complainant showed that the disputed domain name has recently been used to sell products on a website in competition with the EXTRA stores and website. In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) presumably obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promotes competing activities.
Former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Currently, the Panel notes that there is no active website linked to the disputed domain name, but this is not enough to change the Panel’s findings. UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2. 0”), paragraph 3. 2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the use of a third party trademark that is registered and used in the same country for a long time, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with the lack of any plausible interpretation for the adoption of the word “extra” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 the Complainant.
Rodrigo Azevedo
Sole Panelist
Date: September 2, 2014
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