The Complainants are Lojas Renner S.A. of Porto Alegre, Rio Grande do Sul, Brazil and Maxmix Comercial Ltda. of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Carolina Rodrigues of Belize City, Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with EPAG Domainservices GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2016. On March 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 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 March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 19, 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 Complainants are Lojas Renner S.A.and Maxmix Comercial Ltda. which merged in 2011, they have been using the mark CAMICADO since at least as early as 1980 and today operate a retail chain of 68 housewares stores in Brazil (with plans to expand) with millions of US Dollars in revenue and over a thousand employees. The Complainants own several marks in Latin America for the mark CAMICADO, some dating back to the 1980’s.
The disputed domain name was originally registered on January 13, 2006 (many years after the establishment of the Complainants’ trademark rights). After the Complainants sent a cease and desist letter to the then-listed Registrant in September 2015, it appears that the disputed domain name records were changed and the disputed domain name was transferred to the Respondent. The Respondent has used the disputed domain name to set up a website containing pay-per-click links, some of which lead visitors to the websites of the Complainants’ competitors. 5. Parties’ Contentions A. Complainants
Without the Complainants’ authorization, the Respondent developed a web page at the disputed domain name containing sponsored links to various commercial websites, including links to websites related to goods and services of the Complainants’ competitors. The Complainants assert that the disputed domain name is identical to its registered CAMICADO mark in which the Complainants have rights. They further assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name because, among other things, the Respondent is not a licensee, authorized agent of the Complainants, or in any other way authorized to use the Complainants’ trademarks. Further, the Complainants assert that the disputed domain name was registered in bad faith because the Complainants’ prior, intensive use of the CAMICADO mark made it inconceivable that the Respondent was not well aware of the Complainants’ trademark rights at the time of registration. The Respondent’s use of the disputed domain name to establish a website listing sponsored links to competitors, among other things, demonstrate bad faith use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar
The disputed domain name comprises “Camicado”, which is in substance the Complainants’ registered trade mark CAMICADO, and the generic Top Level Domain (“gTLD”) “.com”. It being permissible to ignore the gTLD for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Panel is satisfied that the disputed domain name is substantially identical to the Complainants’ registered trade mark. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainants make that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town,WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous UDRP panels, the Panel finds that the use of the disputed domain name to establish a web page with sponsored links to websites for competitive products is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.”
In this case, the Panel finds that the Respondent registered and is using the domain name in bad faith. The Respondent could not have ignored its awareness of the Complainants’ trademark rights when it registered the disputed domain name. Moreover, the content of the pay-per-click links on the Respondent’s website using the disputed domain name show the Respondent’s intention to create a likelihood of confusion that would attract Internet users to the website for commercial gain. 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 Complainants.
Evan D. Brown
Sole Panelist
Date: May 5, 2016
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