The Complainant is Nobre Seguradora do Brasil S.A. of São Paulo, Brazil, represented by Grossi Paiva Advogados, Brazil.
The Respondent is Privacy Protection Service Inc. of Queensland, Australia / Luis Soldado of Setubal, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2016, 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 April 22, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on June 1, 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.
In an email of June 14, 2016, the Center received a further submission from the Complainant. 4. Factual Background
The Complainant is an insurance company located in Brazil. The Complainant has been offering insurance services since 1992 in the markets of vehicle accident and life insurance.
The Complaint is the owner of the trademark NOBRE SEGUROS registered in Brazil on December 7, 2000 covering insurance services (class 36).
The disputed domain name was registered on April 28, 2015. The disputed domain name is used for a website used to criticize the Complainant and its president. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar with the Complainant’s trademark. The Complainant adds also that the Respondent has a clear intent to confuse consumers in Internet searches. The Complainant highlights that the disputed domain name also contains the civil name of the Complainant’s president, which is being used to attract web traffic based on organic searches.
The Complainant states that the term “nobre seguradora” contained in the disputed domain name has the same meaning as “nobre seguros” in the Portuguese language, and also is part of the corporate name of the Complainant.
With respect to the lack of rights and legitimate interests of the Respondent in the disputed domain name, the Complainant states that:
- the Respondent has no legitimate interests in maintaining or using the disputed domain name;
- the Respondent has no exclusive rights over the terms “Nobre Seguros” and “Nobre Seguradora” nor on the civil name of the Complainant’s president;
- the Complainant’s trademark and the name of the president of the Complainant have been used to cause damage to the reputation and business of the Complainant;
- the Respondent does not offer any goods or services associated with the disputed domain name, but rather causes deliberate damage to the image of the Complainant due to its inevitable association in organic searches conducted on the Internet’s search engines;
- the Respondent has never been known by the terms associated with the disputed domain name, as it is solely used to refer to the Complainant and its main representative in a negative way.
With respect to bad faith registration and use, the Complainant states that:
- the manner in which the privacy registration service was used in this case clearly demonstrates that the disputed domain name was registered and is being used in bad faith;
- the fact that the disputed domain name contains the civil name of the Complainant’s president and the Complainant’s trademark reveals the intent of the Respondent to prevent the Complainant from reflecting its mark in a corresponding domain name;
- the emails spread over the Internet by the Respondent also reveal that there is a pattern and an intention to associate the defamatory content to organic searches in the web;
- the disputed domain name is being used for the purpose of disrupting the business of the Complainant;
- the association of the civil name of the Complainant’s president next to the trademark of the Complainant evidences that the Respondent has intentionally attempted to attract Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark;
- any Internet searches for “Nobre seguradora” or “Pedro Jorge de Almeida Albuquerque” will lead to the disputed domain name registered by the Respondent with defamatory content.
The Complainant requests transfer of the disputed domain name.
On June 14, 2016 the Complainant submitted to the Center a Supplemental Filing informing that the Complainant has renewed the domain name registration, and also that the Respondent has populated the content of the disputed domain name with defamatory statements against the Complainant and its president. In addition, the Complainant states that the Respondent has been “trying to blackmail the Complainant”, “threatening him to register new domain names and more spread false and defamatory information”. The Complainant states that this conduct sets bad faith registration and use of the disputed domain name under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, the Complainant must convince the Panel of three elements if it wishes to have the disputed domain name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name is registered and used in bad faith.
These three elements are considered below. A. Supplemental filing
The Complainant filed a Supplemental Filing on June 14, 2016 in order to inform the Center of new evidence including the change in the content of the website under the disputed domain name and an email sent by the Respondent to the Complainant. The Respondent did not oppose this Supplemental Filing.
The Panel considers that the Complainant’s request to file a Supplemental Filing is justified since the evidence introduced was not available at the time of filing the Complaint and the Respondent had the opportunity to comment. Therefore, the Supplemental Filing is accepted. B. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights for NOBRE SEGUROS. It is clear to the Panel that the disputed domain name, consisting in part of the Complainant’s trademark NOBRE SEGUROS with the addition of the generic term “seguradora” and the name of the president of the Complainant, is confusingly similar to the Complainant’s trademark NOBRE SEGUROS.
The fact that the disputed domain name uses the term “seguradora” instead of the term “seguros” does not change this conclusion. Both terms are related to the Complainant’s area of services. In addition, the use of the personal name of the president of the Complainant in the disputed domain name does not dispel confusion.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the disputed domain name:
“(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.”
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks corresponding to the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production on the second element shifts to the Respondent. The Respondent is in default and has not provided any answer or justification for the registration of the disputed domain name.
The Panel visited the website under the disputed domain name and was able to verify that it contains disparaging comments to the Complainant and its president. The content is available in English, Spanish and Portuguese languages.
In addition, the Complainant states in its Complaint that the Respondent sent emails over the Internet with the content of the disputed domain name and this is evidence of an intention to associate the defamatory content to organic searches in the web. The Panel agrees with the Complainant. The record shows that a link to the disputed domain name was distributed among commercial partners of the Complainant, presumably in order to disparage the Complainant and its trademark.
Finally, the Panel notes that in the Supplemental Filing received by the Center on June 14, 2016 the Complainant submits a copy of an email from the Respondent to the Complainant informing that it will continue creating new websites like the one under the disputed domain name if the Complainant does not favorably respond to the Respondent’s demands. The Respondent did not deny these assertions.
Thus, it does not appear that the Respondent made a fair use of the disputed domain name “without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
From the Respondent’s silence, and from the evidence suggesting disparagement of the Complainant’s mark in connection with a website disparaging the Complainant, it may reasonably be inferred that the Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant’s trademark at the time of registering the disputed domain name.
It is the view of the Panel that it is clear from the record that the Respondent was targeting the Complainant in registering the disputed domain name.
The Panel visited the website under the disputed domain name and was able to verify that it contains disparaging comments to the Complainant and its president. The content is available in English, Spanish and Portuguese languages. In addition, Annex 6 of the Complaint contains an email sent from one individual to several persons, copying the president of the Complainant, informing them of the existence of the disputed domain name and its content. Finally, in its Supplemental Filing, the Complainant alleges that the Respondent’s representative emailed the Complainant’s counsel and stated that “You are aware that if the issue is not resolved, we can create numerous web pages under different names, to keep this issue alive, right? Taking this particular page off the internet will not resolve the issue, only payment of the pending invoice will. Kind Regards”. The Respondent has not denied any of these statements.
Clearly, the registration and use of the disputed domain name was intended to disrupt the Complainant’s business by taking advantage of the fact that Internet users seeking the Complainant’s site are likely to go to the address of the disputed domain name. From the evidence submitted, it appears that the Respondent is threatening to use its website to damage the business and reputation of the Complainant and of its officers if the Complainant does not favorably respond to the Respondent's demands. An example of this can be found in an email dated June 14, 2016, attached to the Complainant’s Supplemental Filing.
The Respondent’s primary purpose of harassing the Complainant, diverting its clients to websites that disparage and defame the Complainant, and interfering with the Complainant's business are all evidence of the Respondent’s bad faith (Hunton & Williams v. American Distribution Systems, Inc. et al.,WIPO Case No. D2000-0501; Compagnie Generale des Matieres Nucleaires v. Greenpeace International,WIPO Case No. D2001-0376; Sociedad General de Autores y Editores v. Realmente Cabreados con la SGAE,WIPO Case No. D2002-0953 and Chung, Mong Koo and Hyundai Motor Company v. Individual,WIPO Case No. D2005-1068).
The Complainant has therefore succeeded in proving this element. 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.
Pablo A. Palazzi
Sole Panelist
Date: June 20, 2016.
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