The Complainant is Aceco TI of Embu das Artes, Brazil, represented by Tini Garcia e Souza Advogados, Brazil.
The Respondent is Carlos Torres of Weston, Florida, United States of America / Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America. 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 October 1, 2014. On October 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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 the Complainant on October 8, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 10, 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2014.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 10, 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 a Brazilian industrial and economical group that provides data center solutions, installation of data centers, command centers and control centers and design, construction and maintenance of data centers.
The Complainant is the owner of the following trademark: Registration Trademark Country Registration Date
007219601
ACECO
Brazil
17/04/1975
The Complainant has filed, among others, the following trademark applications: Application No. Trademark Country Filing Date
904173852
ACECO TI
Brazil
20/10/2011
904189317
ACECO TI
Brazil
25/10/2011
904189279
ACECO TI
Brazil
25/10/2011
904189252
ACECO TI
Brazil
25/10/2011
904174050
ACECO TI
Brazil
20/10/2011
The disputed domain name was registered on April 19, 2011. 5. Parties’ Contentions A. Complainant
1. Identical or Confusingly Similar
The ACECO trademarks have been used by the Complainant since 1975.
Said trademarks have been extensively advertised to the general public and to companies with technological needs, having reached a high level of awareness.
2. Rights or Legitimate Interests
There is no evidence of the Respondent using the disputed domain name with a bona fide offering of goods or services.
The disputed domain name is currently inactive, and since the Respondent has been trying to hide his identity, it is impossible to foresee any rights of the Respondent to the disputed domain name.
3. Registered and Used in Bad Faith
Due to the well known character of the Complainant’s trademarks, the Respondent registered the disputed domain name in bad faith.
The Respondent is using the disputed domain name under a passive holding scheme which evidences a bad faith use of the disputed domain name.
The Respondent acquired the disputed domain name for the purpose of transferring it for a value that exceeds the out of pocket costs directly related with the acquisition of the disputed domain name.
The Respondent’s attempts to hide his identity, in addition to the fact that the Respondent is not making a genuine use of the disputed domain name, are indicative of bad faith.
In the amended Complaint, the Complainant stated that the Respondent is an employee of, works for, or collaborates with Lamco Group, a company that is a direct competitor of the Complainant.
Since the disputed domain name was registered by a competitor (or an employee of a competitor), the Respondent is committing cyber piracy practices. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (See Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant owns a trademark registration for ACECO and several trademark applications for ACECO TI.
The disputed domain name is confusingly similar, visually and phonetically, to the Complainant’s trademark ACECO, because said trademark is entirely incorporated in the disputed domain name. ACECO is an arbitrary trademark with no meaning in English or Portuguese. Therefore, taking into account the meaning that the trademarks ACECO and ACECO TI, and the disputed domain name convey, respectively, it is clear that the disputed domain name is confusingly similar to the Complainant’s trademark (see RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089).
The addition of the generic term “TI” does not reduce the risk of confusion between the Complainant’s trademark and the disputed domain name. The addition of the generic Top-Level Domain (“gTLD”) “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel typically does not take into account the gTLD “.com”. (See Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The first element of the Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent has provided no evidence to show any rights to, or legitimate interests in, the disputed domain name. According to the Complainant, the Respondent has not been granted any license or authorization to use the ACECO trademark. The Complainant has asserted that the Respondent is related to one of the Complainant’s competitors. The Respondent has not rebutted this allegation.
Since the Respondent’s name seems to be Carlos Torres, it is reasonable to infer that the Respondent has not been commonly known by the name “Aceco” or by the name “Aceco TI”. On the contrary, the Complainant has proven to be known as Aceco and Aceco TI.
In the Panel’s view, the Respondent in this case is not entitled to register a domain name incorporating the company name and trademarks of the Complainant, because this conduct can cause confusion among the Internet users and consumers (See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondent has any rights to, or legitimate interests in the disputed domain name. Mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
The evidence filed by the Complainant shows that the Respondent may have registered the disputed domain name with the intention to preclude the Complainant from using its trademark under a “.com” gTLD, which according to precedents issued according to the Policy cannot be deemed as a fair use of the disputed domain name (see G Corporation v. William E. Merrit WIPO Case No. D2000-0266).
The Respondent has not provided any evidence showing any use by the Respondent of, or demonstrable preparations to use the disputed domain name in any manner, or that he has been commonly known as , or that the Respondent is making any type of legitimate noncommercial or fair use of the disputed domain name.
The second element of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has 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; or
(ii) the respondent has 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Complainant has argued that the Respondent is occupationally related with a competitor of the Complainant. The Respondent has not rebutted this assertion. Considering that the disputed domain name entirely incorporates the Complainant’s trademark ACECO (which is an arbitrary term), with the addition of the generic term “TI”, there seems to be no explanation to justify why the Respondent chose to register .
The Complainant argues that this is a case of passive holding according toTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Therefore, the following Telstra factors should be analyzed:
(i) the Complainant’s trademark ACECO is arbitrary and has been in use for decades, to distinguish specialized services rendered by the Complainant. Said trademark has been publicized in Brazil, and through the Internet in other parts of the world;
(ii) the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name;
(iii) the Respondent took active steps to avoid disclosing his identity;
(iv) when the Registrar provided the contact details of the Respondent, the Complainant found a possible occupational relationship between the Respondent and one of the Complainant’s competitors. This allegation has not been rebutted by the Respondent;
(v) the Respondent has not been commonly known by . According to the arguments of the Complainant, not contested by the Respondent, the Respondent knew the Complainant and its trademark ACECO, because he works for a competitor in the same industry;
(vi) the disputed domain name could create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In addition to the above, 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, because the arguments and evidence filed by the Complainant, which have not been contested by the Respondent, result in a bad faith inference concerning the registration and passive holding of the disputed domain name (see mutatis mutandi Williams-Sonoma, Inc. v. Rafael Chavez,WIPO Case No. DMX2012-0001; NS2.COM Internet S/A v. Jesús Manuel Jiménez GarcíaWIPO Case No. DMX2011-0027; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Real Madrid Club De Futbol v. Lander W.C.S., WIPO Case No. D2000-1805; J. García Carrión, S.A. v. Mª José Catalán Frías,WIPO Case No. D2000-0239; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; and Montes De Piedad Y Cajas De Ahorro De Ronda, Cádiz, Málaga, Almería Y Antequera (Unicaja) v. Fernando Labadia Pardo,WIPO Case No. D2000-1402).
The third element of the Policy has been met. 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.
Kiyoshi Tsuru
Sole Panelist
Date: November 25, 2014
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