The Complainants are Lojas Renner S.A. ("First Complainant") of Porto Alegre, Brazil and Maxmix Comercial Ltda. ("Second Complainant") of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.
The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("US") / Paulo Pereira, Paulo da Silva Pereira of São Paulo, Brazil / Raimundo Soares dos Santos of São Paulo, Brazil. 2. The Domain Names and Registrars
The disputed domain names , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2016, regarding one domain name. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 November 29, 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 a first amendment to the Complaint on November 30, 2016. On December 9, 2016, the Complainant submitted an amended Complaint, adding two more domain names. On December 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the two additional disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 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 a second amendment to the Complaint on December 26, 2016.
The Center verified that the Complaint together with the amendments to the Complaint and 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 January 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 30, 2017. 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 Second Complainant exploits the CAMICADO trademark in the retail of houseware, bedding, bath and tableware in Brazil since 1980. The First Complainant acquired the Second Complainant in 2011 for approximately USD 100 million.
They are the owners, amongst several others, of the following trademark registrations in Brazil:
- Trademark Registration No. 814553303 for the mark CAMICADO, filed on November 17, 1988, registered on September 4, 1990 and successively renewed, and
- Trademark Registration No. 814553362 for the mark CAMICADO, filed on November 17, 1988, registered on September 4, 1990 and successively renewed.
The disputed domain names , and were registered, respectively, on October 27, 2016, November 4, 2016 and November 30, 2016. Currently, no active webpages resolve from the disputed domain names but in the past they all resolved to webpages similar to the Complainants', offering goods well below the market prices and depicting fake "secure website" seals. 5. Parties' Contentions A. Complainant
The Second Complainant asserts to have been established in Brazil in 1980 as a retail chain, currently counting with more than 80 stores in Brazil and having revenues of more than BRL 440 million. Its online presence (and most notably its domain name ) accounts for 18 percent of its revenues.
The Complainants assert that the disputed domain names were registered by the same person or entity who used a privacy protection service so as to conceal its true identity. Given that the webpages that resolved from the disputed domain names displayed the exact same content and that all of the Whois information on the disputed domain names after the unveiling of the privacy protection information service details depicted the same physical address, the only possible conclusion, in the Complainants' view, is that the disputed domain names were registered by the same individual or entity.
According to the Complainants, the distinctive element of the disputed domain names is the Complainant's CAMICADO trademark. The disputed domain names are confusingly similar to the CAMICADO trademark given that the addition of the Portuguese word "loja" ("shop" in English) merely relates to the Second Complainant's retail business and creates a potential impression that the Respondents are the Complainant's authorized resellers, or are affiliated with the Complainant. As to the addition of the prefix "a" in two of the disputed domain names the Complainants assert that such a letter corresponds to "the" in Portuguese and is even more likely to mislead Internet users.
As to the absence of rights or legitimate interests, the Complainants argue that:
i. the Respondents are not affiliated with the Complainants nor have been licensed or otherwise permitted to use the Complainants' trademarks;
ii. the Respondents have used the disputed domain names in connection with a fake online store targeting specifically the Complainants' customers, offering the exact same products sold by the Complainants but at prices below the market price;
iii. the Respondents do not have any registered trademarks or trade names corresponding to the disputed domain names;
iv. the Respondents have never been commonly known by the disputed domain names.
In what it relates to the bad faith registration and use of the disputed domain names, the Complainants assert that the Respondents' knowledge of the Complainants' trademark is evident in view of the well-known status of the CAMICADO trademark in Brazil as well as to the similar layout of the webpages that resolved from the disputed domain names and fraudulent use perpetrated by the Respondents, making it only possible to conclude that the Respondents knew about the Complainants' trademark and reputation, and used them to their advantage in bad faith.
Lastly, the Respondents' bad faith can also be inferred from the use of a privacy protection service so as to conceal their true identity and by the lack of reply to the cease and desist letter sent prior to the beginning of this proceeding. B. Respondents
The Respondents did not reply to the Complainants' contentions. 6. Discussion and Findings A. Joint Respondents
The Complainants assert that the disputed domain names were registered by the same person or entity.
Considering the particulars and elements of the case (notably (i) the fact that the webpages that resolved from the disputed domain names had the same content; (ii) considering that the disputed domain names were registered within a short interval of time and (iii) that after the unveiling of the privacy protection information service details on the whois details of the disputed domain names, all of them depicted the same physical address), as well as the absence of any reply from the Respondents that could indicate anything different, this Panel accepts that the disputed domain names are under common ownership or control and that therefore it is appropriate to have the three disputed domain names jointly decided. B. Identical or Confusingly Similar
The Complainants have established their rights in the CAMICADO trademark.
The addition of the generic term "loja" which means "shop" or "store" in Portuguese or the letter "a" which in Portuguese can be translated into "the", only makes the disputed domain names even more similar to the Complainants' trademark, creating a high risk of association by Internet users.
Therefore the Panel finds that the disputed domain names are confusingly similar to the Complainants' trademark. The first element of the Policy has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate a respondent's rights to or legitimate interests in a 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.
In that sense, the Complainants indeed state that no authorization, license, permission or consent was granted for the use of CAMICADO in the disputed domain names.
Also, the absence of any trademarks or trade names registered by the Respondents corresponding to the disputed domain names, or any possible link between the Respondents and the disputed domain names, that could be inferred from the details known of the Respondents or the webpage relating to the disputed domain names, corroborate with a finding as to the absence of a right or legitimate interest.
The Respondents use of the disputed domain names in connection with an online store similar to the Complainants' one, offering the same goods sold by the Second Complainant, at well below market prices also depicting fake "secure website" seals cannot be considered a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert the Complainants' consumers.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a 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 a 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, both the registration and use of the disputed domain names in bad faith can be found in view of the similarity between the Respondents' webpage and the Complainant's online store, all of which selling the same or related products.
The Respondents' use of the disputed domain names not only clearly indicates full knowledge of the Complainants' trademark but also an attempt of misleadingly diverting consumers for their own commercial gain.
Other factors corroborate a finding of bad faith:
(i) the use of a privacy protection service;
(ii) the absence of any reply to the warning letter sent prior to the filing of the Complaint;
(iii) the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names.
For the reasons above, the Respondents' conduct has to be considered, in this Panel's view, as bad faith registration and use of the disputed domain names 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: February 13, 2017
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