The Complainants are Confederação Nacional das Cooperativas do Sicoob Ltda. ("Complainant 1") and Banco Cooperativo do Brasil S/A ("Complainant 2"), of Brasilia DF, Brazil, represented by Andra Assessoria em Propriedade Intelectual Ltda., Brazil.
The Respondent is Qingda Yan of Shapingba, Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Sun Tzu 888, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 4, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2015, 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 February 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 10, 2015.
The Center appointed Christian Schalk as the sole panelist in this matter on March 24, 2015. 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceedings is English. 4. Preliminary issue – multiple Complainants
Two companies have brought this Complaint: Confederação Nacional Das Cooperativas Do Sicoob Ltda (hereinafter referred to as "Complainant 1") and Banco Cooperativo Do Brasil S/A (hereinafter referred to as "Complainant 2"). Complainant 1 owns certain trademarks related to the dispute, while Complainant 2 owns others. The Complainants have requested that the disputed domain name be transferred to Complainant 1 if they are successful.
The issue of multiple complainants has been discussed among others in Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. D2009-1661 with further references; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331;). In the latter case, reference was made to the extent the Policy and Rules deal with this issue:
"Paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Paragraph 4(f) of the Policy provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. Under paragraph 4(f) of the Policy the consolidation petition is made to the first administrative panel appointed to hear a pending dispute between the Parties, this administrative panel may consolidate before it any or all such disputes in its sole discretion, provided the disputes are governed by the Policy. Under paragraph 10(e) of the Rules it is for the panel to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and Rules.
Neither the Policy nor the Rules expressly provides for the consolidation of multiple complainants in a single complaint. While both the Policy and Rules use the term 'complainant' throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term 'complainant'."
In Mucos Emulsions, GmbH and Marlyn Nutraceuticals, Inc. v. E and Kim Taeho,WIPO Case No. D2000-1513 it was stated that a complaint may be submitted by multiple related parties where there are common interests in a single domain name. In that case the Panel noted further that there have been a number of cases under the ICANN Policy that have been decided in favour of the Complainant despite the fact that more than one Complainant instituted the proceeding. (See Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh,WIPO Case No. D2000-0891; NFL Properties, Inc. et al. v. Rusty Rahe,WIPO Case No. D2000-0128)."
In the present case, although they are strictly separate legal entities, both Complainants are members of the same cooperative credit system in Brazil, Sicoob, and therefore have a common legal interest (see also Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof; Case No. D2009-1661 with further references). Furthermore, there is a common grievance on the part of both Complainants since both entities own trademarks where the term "Sicoob" constitutes its most distinctive and therewith predominant part. Moreover, as members of the same cooperative system, both Complainants use the both term "Sicoob" prominently in their business.
The Panel therefore concludes that the inclusion of multiple complainants in this case is acceptable. 5. Factual Background
The Complainants are members of Sicoob, a large cooperative credit system in Brazil with presence in 14 Member States of the Federative Republic of Brazil. This cooperative credit system has been established 15 years ago. More than two million members are organized in 576 singular cooperatives and in 15 central cooperatives.
Complainant 1 is a confederation of credit's cooperatives. Its purposes are among others the providing of representation services, supervision, standardization of operating procedures, implementation of internal controls and management information, legal advice as well as the coordination of the use of the trademark SICOOB. Complainant 2 is a private commercial bank, whose controlling stake belongs to the central credit cooperatives of Sicoob. Its purposes are providing financial products and services to cooperatives, expanding and creating new business opportunities and centralized management of financial resources of the Sicoob system.
Complainant 1 owns among others the following trademarks:
- Brazilian trademark registration No. 826628925 SICOOB (word & device mark), application date March 25, 2004, covering services in International Class 42;
- Brazilian trademark registration No. 826628933 SICOOB (word & device mark), application date March 25, 2004, covering services in International Class 41;
- Brazilian trademark registration No. 826628950 SICOOB (word & device mark), application date March 25, 2004, covering services in International Class 35;
- Brazilian trademark registration No. 900014776 SICOOB (word mark), application date September 21, 2004, covering services in International Class 42;
Complainant 2 owns among others the following trademarks:
- Brazilian trademark registration No. 819974080 SICOOB (word & device mark), registration date June 16,1997, covering services in International Class 36;
- Brazilian trademark registration No. 824588894 SISTEMA DE INFORMÁTICA SICOOB/BR, registration date May 2, 2002, covering services in International Class 42;
Complainant 2 owns also the following domain names
- , registered on March 5, 1999
- , registered on September 19, 2001
- , registered on May 8, 2003
- , registered on February 21, 2002.
The Respondent registered the disputed domain name on November 28, 2014. The website, to which the disputed domain name resolved, features, among others, links to Complainant 2 as well as to other online credit providers, such as at "", "/Consignados" and "". On the bottom of the website the following text appears in German, which can be translated as follows: "The sponsored links shown here have been generated automatically by a third party. They have no relationship neither with the owner of the domain name nor with the service provider. In case trademark law issues, please contact the owner of the domain name mentioned in the Whois." 6. Parties' Contentions A. Complainant
The Complainants allege that the disputed domain name is identical to a trademark or service mark in which the Complainants have rights. In this context, the Complainants refer to the above mentioned trademarks which they cite including their list of goods and services.
The Complainants allege also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants explain that it is the Respondent's intent to obtain unlawful advantage in the disputed domain name because it wants to sell the disputed domain name to any interested person and therewith putting in risk the integrity of the goods and services of the Complainants. The Complainants argue further that the Respondent shows on the website to which the disputed domain name resolves links and information to companies that offer financial services which are identical to those offered by the Complainants. The Complainants refer also to its exclusive trademark rights in the term "sicoob" and states that they have never assigned, granted, licensed, sold, transferred or authorized the Respondent to register or use their trademark and that therefore, there is neither a commercial- nor any other relationship between the Complainants and the Respondent which would allow the latter to use the Complainant's trademark. The Complainants further point to the fact that the Respondent's name as appears in the WhoIs is Qinda Yan and not Sicoob.
The Complainants allege finally that the disputed domain name has been registered and is being used by the Respondent in bad faith. The Complainants contend that on the website to which the disputed domain name resolves, the financial services are offered which are the same which are provided by the Complainants and that the Respondent's intention for such behavior is to attract for commercial gain Internet users to the website to which the disputed domain name resolves and to use the Complainants' trademark to mislead Internet users. The Complainants further allege, that the Respondent has the intent to sell the disputed domain name to interested persons. Furthermore, the Complainants argue that the registration and use of the SICOOB trademark as well as the domain names and and others predate the Respondent's registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the complainant has proven each of 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; 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. A. Identical or Confusingly Similar
The Panel finds that the Complainants have established trademark rights in the term "sicoob". The disputed domain name is identical to the trademark SICOOB in which Complainant 1 has established trademark rights and it is identical to the trademarks for SICOOB which are owned by both of the Complainants. The most distinctive and therewith predominant element of all these word and device trademarks is the term "sicoob".
In addition, the ".net" generic Top-Level-Domain ("gTLD") suffix in the disputed domain name does not affect the determination that the disputed domain name is confusingly similar with SICOOB in which the Complainant has trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
The Panel finds for the above reasons that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
According to the evidence the Complainants have brought before the Panel, constituting a prima facie case that the Respondent lacks rights or legitimate interests, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainants, nor have the Complainants granted the Respondent a license to use their trademark.
Furthermore, the Respondent has not rebutted the Complainants' allegations on the Respondent's lack of rights or legitimate interests, and has not provided the Panel with any explanations as to whether there are indeed legitimate reasons for the registration of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainants (see E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554). The Respondent has registered a domain name which is identical to a trademark in which the Complainants have rights, and which features even the most distinctive elements of Complainant 1's company name. The website to which the disputed domain name resolves offers financial services which are identical to those provided by the Complainants. The Panel believes that the only reason why the disputed domain name has been directed to such a website was to capitalize on the reputation and goodwill established by the Complainants in order to redirect Internet traffic intended for the Complainants away from them to the website to which the disputed domain name resolves in order to create income. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name.
The Panel finds for the above reasons that the requirement of paragraph 4(a)(ii) of the Policy is also met. C. Registered and Used in Bad Faith
The Complainants contend that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of a domain name:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's 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 online location, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the evidence brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, for the following reasons:
It is a principle considered under prior UDRP decisions (see Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the disputed domain name will not infringe the rights of any third party.
The Panel finds that the Respondent must have been well aware of the Complainants' SICOOB trademarks and their business when he registered the disputed domain name. The distinctive part of the disputed domain name ("sicoob") features the most important trademark of the Complainants under which they offer financial services. The disputed domain name resolves to a website where financial services are offered which are identical to those offered by the Complainants and where the Complainants are also mentioned as providers of such services.
The Panel finds further that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name, which fully contains the Complainants ' SICOOB trademark.
The disputed domain name resolves to a website where most of the links which are featured there are for financial services and especially in the field of granting credits which constitutes also the main business of the Complainants. Even if the Complainants have been somehow also mentioned there, there is the risk that Internet users searching for the Complainants' services on the Internet finally select the services of the Complainants' competitors which are mentioned side by side with the Complainants on this website. The main reason for this would be that they got directed to this website either by typing the disputed domain name in their Internet browser or by clicking on links shown in search engines which display the disputed domain name. This would enable others, especially the owners of the websites which are linked with the website to which the disputed domain name resolves, to take advantage of the fact that Internet users are directed to their website instead of the Complainants' websites. The only reason for this would be the use of the Complainants' trademark rights by the Respondent which allows third parties to reap the profit of such wrongful conduct (see also Luigi Lavazza S.p.A. Satoshi Shimoshita,WIPO Case No. D2011-1299; The Proctor & Gamble Company v. N,WIPO Case No. D2010-0357 and Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
Furthermore, the Panel believes that the Respondent may also benefit directly or indirectly from such confusion, for instance, by receiving "click-through" commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal or on a link (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Therefore, the Panel believes that the main purpose of doing this was to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
For all these reasons, the Panel finds that the Respondent has registered and is being using the disputed domain name in bad faith. 8. 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 Complainant 1 (i.e. Confederação Nacional das Cooperativas do Sicoob Ltda.).
Christian Schalk
Sole Panelist
Date: April 4, 2015
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