The Complainants are Multiplan Empreendimentos Imobiliários S/A of Rio de Janeiro, Brazil / Renasce Rede Nacional de Shopping Centers Ltda. of Rio de Janeiro, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Jair Muniz Arruda Junior, SJN Imóveis Ltda. of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2014. On September 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2014, 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 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2014.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 7, 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 Complainants are part of one of the largest shopping centers companies in Latin America, having launched in 1999 the Shopping Anália Franco, located in São Paulo, Brazil.
The Complainants are the owner of several trademark registrations for SHOPPINGANALIAFRANCO amongst which:
- Brazilian Trademark registration No. 819835382 for SHOPPING JARDIM ANÁLIA FRANCO filed on March 7, 1997 and registered on November 8, 2005 (Annex 6 to the Complaint); and
- Brazilian Trademark registration No. 825728061 for SHOPPINGANÁLIAFRANCO, filed on July 22, 2003 and registered on July 3, 2007 (Annex 6 to the Complaint).
The disputed domain name was registered on May 24, 2002. Currently no active website resolves from the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainants assert that they are part of one of the largest shopping centers companies in Latin America, owning 18 units with more than 4,900 stores and serving no less than 170 million customers per year.
In 1999, the first Complainant launched the Shopping Anália Franco, located in São Paulo, Brazil. This mall was elected São Paulo’s best shopping mall in 2012 by the magazine Época (Annex 5 to the Complaint), having also earned other prizes in recognition of its services, what, in the Complainants’ point of view would lead their trademark SHOPPINGANÁLIAFRANCO to have acquired the well-known status in Brazil.
The Complainants further assert that they attempted to solve the matter amicably prior to initiating this administrative proceeding, having sent a cease-and-desist letter to the Respondent, requesting the transfer of the disputed domain name. No response however was received (Annex 9 to the Complaint).
In the Complainants’ point of view the disputed domain name is identical to their registered SHOPPINGANÁLIAFRANCO trademark, likely creating confusion.
According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has no connection or affiliation with the Complainants and has not received any license or consent, express or implied, to use the Complainants’ trademark in the disputed domain name or in any other manner;
(ii) the Respondent is not commonly known (as an individual, business or other organization) by the disputed domain name;
(iii) the Respondent has not acquired any legitimate rights whatsoever in the disputed domain name; and
(iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainants assert that the bad faith of the Respondent can also be evidenced by the fact that the Respondent, who is Brazilian and lives in the same city where the Complainants’ Shopping Anália Franco is located, was evidently aware of the Complainants’ and their SHOPPINGANÁLIAFRANCO trademark.
Moreover, the Complainants argue that the disputed domain name has been passively held for the past 12 years with no active use by the Respondent, except for the sponsored links hosted on the website, what characterizes obtaining profits by attracting Internet users in likelihood of confusion with the Complainants and their trademark. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 in bad faith.
The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainants have established rights in the SHOPPINGANÁLIAFRANCO trademark, duly registered in Brazil.
The Panel finds that the disputed domain name reproduces the Complainants’ trademark in its entirety. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice 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 in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make a prima facie case against the Respondent.
In that sense, the Complainants indeed state that they have not licensed or otherwise permitted the Respondent to use the SHOPPINGANÁLIAFRANCO trademark in the disputed domain name, nor is there any sort of affiliation, sponsorship or business relationship between the Complainants and the Respondent.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain name appears to be taking place what makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the trademark of a well-known shopping mall in São Paulo, Brazil, which is the same city where the Respondent is located.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
i. circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants who are the owners of a trademark relating to the disputed domain name or to a competitor of that Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
ii. the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of the Complainants; or
iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0 (“WIPO Overview 2.0”) states that “(…) 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. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. (…)”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainants’ trademark is well-known in the city where the Respondent is located;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
(iii) the Respondent did not reply to the Complainants’ cease-and-desist letter;
(iv) the email addresses provided by the Respondent appear to be false ones, the Center not having been able to contact the Respondent through such, and
(v) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainants’ rights under trademark law.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use. 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 first Complainant, Multiplan Empreendimentos Imobiliários S.A. (as requested in the Complaint).
Wilson Pinheiro Jabur
Sole Panelist
Date: November 21, 2014
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