The Complainant is Scopus Soluções em Ti Ltda. of São Paulo, Brazil, represented by Pinheiro, Nunes, Arnaud e Scatamburlo Advogados, Brazil.
The Respondent is Tomasz Kurlenko c/o Dynadot of San Mateo, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name () is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 10, 2016. 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 focused on technology-related services.
The Complainant is, inter alia, the owner of the following trademark registrations:
TRADEMARK
FILING DATE
REGISTRATION DATE
CLASS/SERVICES
822010488 SHOPFÁCIL
February 17, 2000
November 3, 2010
Class 35 / e-commerce (virtual shop)
822010470
SCOPUS SHOPFÁCIL
February 17, 2000
October 25, 2005
Class 35 / e-commerce (virtual shop)
825842107
SHOPFÁCIL
(stylized)
September 29, 2003
November 13, 2007
Class 35 / e-commerce (virtual shop)
In addition, the Complainant is the owner of the following domain names:
DOMAIN NAME
CREATION DATE
September 11, 2013
August 2, 1999
August 5, 1999
The disputed domain name was registered by the Respondent on December 12, 2013.
The Complainant claims to be “…a known Brazilian e-commerce which sells more than 200,000 products to all Brazilian territory…” 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
i. Identical or Confusingly Similar
The disputed domain name reproduces the Complainant’s trademark SHOPFÁCIL and is identical to its previously registered domain names.
ii. Rights or Legitimate Interests
The Complainant’s trademark SHOPFÁCIL was registered at least three (3) years prior to the registration of the disputed domain name by the Respondent.
There is no trademark registered in the name of the Respondent which consists of, or contains, the trademark SHOPFÁCIL.
The Complainant has not entered into any agreement with, or has granted any authorization or license to the Respondent concerning the use of the trademark SHOPFÁCIL.
The brand SHOPFÁCIL is not part of the Respondent’s name.
iii. Registered and Used in Bad Faith
The Respondent does not have a legitimate interest in the disputed domain name, since the links featured on the webpage to which the disputed domain name resolves lead to advertisements.
There are no references to the Respondent’s activities or services on said webpage, thus making it possible to assume that the Respondent’s selection of the disputed domain name is to exploit, in an unauthorized fashion, the reputation and goodwill of the Complainant, its names and marks.
The Complainant cites PRL USA Holdings, Inc., and Ralph Lauren Media LLC v. Morrison and Associates,WIPO Case No. D2001-0255 and Embratel v. Kevin McCarthy,WIPO Case No. D2000-0164, to support its allegations indicating that, under circumstances that are similar to those of the present case, the corresponding panels found bad faith in the registration and use of the respective domain names.
The Complainant indicates that the Respondent has used the disputed domain name as an instrument for speculation, and concludes that the three elements of paragraphs 4(a)(i)(ii)(iii) of the Policy have been met. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has failed to file a Response to the Complainant’s assertions, the Panel may choose to accept all reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name. (See Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292). A. Identical or Confusingly Similar
The Complainant is, inter alia, the owner of a wordmark for SHOPFÁCIL, a stylized trademark incorporating SHOPFÁCIL, and another wordmark for SCOPUS SHOPFÁCIL.
The disputed domain name is confusingly similar to the Complainant’s wordmark SHOPFÁCIL, the stylized trademark SHOPFÁCIL and the wordmark SCOPUS SHOPFÁCIL.
The addition of the generic Top-Level Domain (“gTLD”) “.com”, in this case, is immaterial for purposes of assessing confusing similarity. For purposes of this case, the Panel will not take into account the gTLD “.com”, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The first requirement of the Policy has been fulfilled. 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 evidence provided by the Complainant shows that the website to which the disputed domain name resolves, is being parked under a pay-per-click program. The disputed domain name resolves to a website that feature sponsored links to several websites.
The Respondent did not offer any evidence or arguments to demonstrate a bona fide use or preparations of use in connection with the disputed domain name. Also, the Respondent did not provide any evidence making a legitimate noncommercial or fair use of it.
The exhibits submitted by the Complainant demonstrate its ownership over the domain names , and . The Respondent has failed to provide evidence of being commonly known as "shopfá”.
The Complainant claims that it has not granted any authorization or license to the Respondent regarding the use of the mark SHOPFÁCIL. The latter was not denied by the Respondent.
Unlike the Complainant, the Respondent did not provide any evidence showing any use or demonstrable preparations to use the disputed domain name in any manner, or that he has been commonly known as "shopfá”, or that he is making any type of legitimate noncommercial or fair use of the disputed domain name. The Panel has no evidence before it to suggest any reason as to why the Respondent might have any rights or legitimate interests regarding the disputed domain name (see Mandarin Oriental Services B.V. v. Control Alt Delete,WIPO Case No. D2000-1671).
The Respondent is benefitting from the initial confusion created by the disputed domain name. In this case, Internet users could assume that the disputed domain name (and the sponsored links found on the website to which said domain name resolves) are related to the Complainant and its services. Instead, they will actually be conducted to the site of the Respondent, a use that cannot be considered as a bona fide offering of goods (see CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul,WIPO Case No. D2004-0988; and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206).
Therefore, the second requirement of the Policy has been fulfilled. 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 its 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.
Even though the Complainant cited PRL USA Holdings, Inc., and Ralph Lauren Media LLC v. Morrison and Associates,WIPO Case No. D2001-0255 and Embratel v. Kevin McCarthy,WIPO Case No. D2000-0164, this Panel considers that said cases differ from the present one. One relevant difference is that, in this case, the Complainant did not provide any evidence to demonstrate that its SHOPFÁCIL trademark has a strong reputation, and is widely recognized.
Notwithstanding the above, it is clear that the Respondent did not provide any evidence showing that he has been commonly known by the disputed domain name as , or that he is making any type of legitimate, noncommercial or fair use of the disputed domain name.
The Respondent pursued the registration of the internationalized disputed domain name in order to obtain a registration regarding . The disputed domain name was registered in a way to include the written accent on the Complainant’s trademark. By doing so, the Respondent acted, from the Panel’s perspective, in an unnatural and unnecessary way, for he does not have any rights or legitimate interests in the disputed domain name or have any rights over the Complainant’s trademark or a similar word mark.
This Panel considers that the only reason for registering and using the trademark of the Complainant as the disputed domain name was to attract customers who were looking for the website of the Complainant. (See FöreningsSparbanken AB v. Stefan Ekbergh, Fredrick Ekstrand,WIPO Case No. D2004 1006).
With the above in mind, Internet users are likely to relate the website to which the disputed domain name resolves and the Complainant’s trademarks and services. By creating a likelihood of confusion, the Respondent’s behavior falls squarely within paragraph 4(b)(iv) of the Policy.
Moreover, the Respondent has been using the disputed domain name as a parking site for more than two (2) years. The use of a confusingly similar domain name as a parking site has, in and of itself, been held to be evidence of bad faith registration and use (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415).
In absence of contrary evidence, this Panel finds the Respondent has registered and is making use of the disputed domain name in bad faith. The third requirement of the Policy has thus been fulfilled. 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: February 24, 2016
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