The Complainant is Companhia Brasileira De Distribuição of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Rodrigo Couto, Brshoponline of Maringá, Paraná, Brazil. 2. The Domain Names and Registrar
The disputed domain names and are registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2015. On June 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 26, 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 sent an email communication to the Complainant on July 6, 2015 requesting the confirmation of the disputed domain names. The Complainant sent an email to the Center confirming that the disputed domain names were and .
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 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015. The Respondent sent an email communication to the Center on July 16, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 5, 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. 4. Factual Background
The Complainant is a Brazilian Company active in the retail segment and the owner of the Brazilian trademark registrations Nos. 816753105 and 816774277 for COMPREBEM registered on October 4, 1994 and March 8, 1994, respectively, successively renewed (Annexes 6 and 7 to the Complaint).
The disputed domain names and were registered on January 8, 2015 and November 8, 2012, respectively. Active webpages in which goods, mostly electronics, are on sale resolve from both disputed domain names. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain names reproduce its registered trademark COMPREBEM merely adding the suffixes “shop” and “shopping” to it. Such elements, in the Complainant’s view have a low degree of distinctiveness given that it relates to the sale of goods made available online and thus solely highlight the Complainant’s trademark it is combined with.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) the Respondent does not own any prior rights over the COMPREBEM trademark;
(ii) the Complainant has not licensed or otherwise permitted the Respondent to use the COMPREBEM trademark;
(iii) the Respondent is not linked to the Complainant and is not a partner to a company controlled by the Complainant.
Furthermore, the Complainant asserts that the websites relating to the disputed domain names are being used for the sale of goods which are identical and highly similar to the products that used to be sold in Complainant’s stores and ecommerce years ago.
Such use by the Respondent characterizes, in the Complainant’s view, a deliberate effort to confuse Internet users thus taking advantage from the Complainant’s trademark and reputation. The Respondent’s use of the disputed domain names should therefore be considered illegitimate and unfair, with the intent for commercial gain by misleadingly diverting consumers or tarnishing the Complainant’s trademark.
Lastly, the Complainant asserts that the use of the disputed domain names by the Respondent has exposed the Complainant to the Respondent’s consumers’ complaints and legal actions brought against the Complainant instead of the Respondent (Annex 15 to the Complaint). B. Respondent
The Respondent did not formally reply to the Complaint. On July 16, 2015 an email signed by “Rhauny” was sent to the Center stating that he had bought the disputed domain names since they were available “so that anyone can buy”.
He further stated that he has no interest in copying or impairing the Complainant’s website, being his “line of work” totally different from the Complainant’s field of activity. In his point of view, the websites in question are also “totally different”.
Lastly, the Respondent quoted twelve other domain names that incorporate the trademark COMPREBEM owned by third parties, stating that if the disputed domain names are to be blocked so should these other domain names. 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 Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 5(f) and 14(a) 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 Complainant has established its rights in the COMPREBEM trademark, duly registered in Brazil.
In this Panel’s view the suffixes “shop” and “shopping” in the disputed domain names are not sufficient to distinguish the disputed domain names from the Complainant’s mark given that such elements are commonly used in the retail business and thus can create confusion or undue association in Internet users between the disputed domain names and the Complainant’s trademark. In the present case, actual confusion has taken place between the Parties, having the Complainant evidenced that legal action was brought against it instead of the Respondent in view of the proximity between the Complainant’s trademark COMPREBEM and the name appearing on the websites at the disputed domain names, “Compre Bem Shop”.
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive 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 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 it has not acquired 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, 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 or otherwise, any rights to and/or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences therefrom as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant states that it has not licensed or otherwise permitted the Respondent to use the COMPREBEM trademark in the disputed domain names.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain names, or any possible link between the Respondent and the disputed domain names that could be inferred from the details known of the Respondent corroborate the Panel’s finding of the absence of rights or legitimate interests.
According to the print-outs of the websites at the disputed domain names, the disputed domain names are being used for the sale of goods which are highly similar to the products that used to be sold in the Complainant’s sores and ecommerce years ago. Furthermore, the websites do not disclose the Respondent’s relationship or lack thereof with the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
Therefore, paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain names, with an intentional attempt to attract, for commercial gain, Internet users to the 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 the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain names in connection with the sale of goods which are similar to the goods that used to be sold at the Complainant’s stores, can mislead Internet users for commercial gain by profiting from the similarity between the disputed domain names and the Complainant’s mark. Such risk of confusion has even taken place as shown by the Complainant in the lawsuit brought against it by one of the Respondent’s consumers.
Also, as already mentioned, the Respondent did not formally submit a response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain names.
For the reasons stated above, the Respondent’s conduct is considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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 names and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 19, 2015
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