The Complainant is Cinpal Companhia Industrial De Peças Para Automóveis from Taboão da Serra, Brazil, represented by David Do Nascimento Advogados Associados S/C, Brazil.
The Respondent is Carlos Antonio Volpato from São Paulo, Brazil, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On March 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
On March 21, 2017, the Center sent an email communication to the Parties, informing the Complaint had been submitted in English but included a request for Portuguese to be the language of proceedings and inviting the Parties to comment on the language of proceedings. The Complainant sent an email communication to the Center on March 24, 2017 reiterating its request for Portuguese to be the language of proceedings. On April 10, 2017, the Respondent sent an email to the Center requesting English to be the language of proceedings.
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 in English and Portuguese, and the proceedings commenced on March 29, 2017. The Respondent did not provide any comments by the specified due date, however, on April 10, 2017, the Respondent requested an extension to file his Response, in accordance with Rules, paragraph 5(b). In accordance with the Rules, paragraph 5, the due date for Response was extended to April 22, 2017. The Response was filed with the Center on April 21, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 4, 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. Language of the Proceeding
The Complainant made a request that the language of the proceeding be Portuguese in spite of the fact that the registration agreement is in English given that both parties are from Brazil and speak Portuguese. Considering that the Respondent expressly rejected such request and that the Complaint was already submitted in English and that all communications sent by the Center were both in English and in Portuguese, this Panel, fluent both in Portuguese and English, will issue its decision in English so as not to create unnecessary and unjustified burden on any of the Parties. 5. Factual Background
The Complainant is a Brazilian company that manufactures and supplies parts and accessories for motor vehicles. It is the owner of the following trademark registrations before the Brazilian Trademark Office:
- No. 007108192 for CINPAL (and device) in international class 12 filed on May 29, 1972, registered on April 25, 1980 and successively renewed;
- No. 006860680 for CINPAL in local class 40.15 filed on August 11, 1972, registered on December 10, 1975 and successively renewed; and
- No. 800166990 for CINPAL in international class 12 filed on June 20, 1980, registered on December 21, 1982 and successively renewed.
The disputed domain name was registered on May 2, 2002. Currently no active webpage resolves from the disputed domain name. 6. Parties’ Contentions A. Complainant
The Complainant asserts to be a Brazilian company that manufactures and supplies parts and accessories for motor vehicles, especially trucks, tractors and agricultural implements; currently employing 1,494 people it claims to enjoy high recognition in its field of activity, being a leading supplier in Brazil.
According to the Complainant, the disputed domain name reproduces its trademark and previous domain names in their entirety what can create a likelihood of confusion between Internet users.
As to the absence of rights or legitimate interests of the Respondent, the Complainant argues that:
(i) the Respondent had full knowledge of the Complainant having been its employee for a period of two years starting in the year 1986;
(ii) the Respondent has not used, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
(iii) the disputed domain name has been parked, what does not characterize a bona fide offering of goods or services or legitimate use of thereof; and
(iv) the Respondent has not been commonly known by the disputed domain name, as an individual or business, and owns no registered trademark rights in any variation of the word “cinpal”.
As relates to bad faith in the registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given that he was its employee in the past.
Moreover, a cease-and-desist letter was sent to the Respondent in an attempt to amicably settle the matter (Annexes 13 and 14 to the Complaint) but the Complainant alleges that the Respondent indicated that he would be willing to sell the disputed domain name for BRL 150,000.00 to what the Complainant counter-offered BRL 8,000.00 which were rejected by the Respondent who lowered its offer to BRL 75,000.00 (Annex 15 to the Complaint). Such amounts clearly characterize excessive amounts, clearly exceeding out-of-pocket expenses incurred in the registration and maintenance of the disputed domain name. B. Respondent
The Respondent contends that the trademark registrations owned by the Complainant do not entitle it to exclusive rights over the expression “Cinpal” in connection with all products and services, being, on the contrary, such protection limited to the goods and services covered by the registrations, namely vehicle parts and components and retail services.
As to his legitimate interests in the disputed domain name the Respondent asserts that he registered the disputed domain name in 2002 seeking to use it in connection with a project that he intends to materialize: the “Circumcision Information Network”. Since the domain name had been registered in 1997, he chose to add the suffix PAL so as to convey a friendly, welcoming aspect to the project which aims to “make people aware about the importance of prevention against STDs”.
As to the alleged bad faith in the registration of the disputed domain name the Respondent confirms that he worked for the Complainant from March 24, 1986 to June 28, 1988 but he was the one that resigned from his occupation. The registration of the disputed domain name which occurred 14 years after is, on the Respondent’s view, unrelated and the attempts the Complainant made to characterize the pretense offers must be disregarded since they are unilateral efforts made by the Complainant in an attempt to constitute evidence, blatantly speaking on behalf of the Respondent without having any solid proof that both parties would have agreed on such things. 7. 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(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established rights over the CINPAL trademark. The disputed domain name reproduces the mark CINPAL in its entirety, with the addition of the generic Top-Level Domain “.com”, which is typically disregarded when comparing a trademark and a disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non‑exhaustive 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 disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant states that the disputed domain name has been passively held by the Respondent. The Respondent states that he intends to use the disputed domain name in connection with a project that he intends to materialize but did not make any statement as to the use made of the disputed domain name since its registration in 2002.
This Panel therefore conducted independent searches at the Internet Archive and detected that the disputed domain name, at times, was used to redirect Internet users to the Complainant’s webpage, and at other times to redirect Internet users to pornographic websites, but most of the time the impression is that no active webpage resolved from the disputed domain name.
The Respondent, in his submission states that he intends to use the disputed domain name in connection with a “Circumcision Information Network”. He has not, however, submitted a single shred of evidence of such plan. It has long been established that once the Complainant has made a prima facie case (as it has in this case), the burden of production shifts to the Respondent to prove his rights or legitimate interests in the disputed domain name.
The mere allegation is not sufficient, especially considering that the disputed domain name was registered in 2002 and he would have had enough time to produce evidence in that sense.
Moreover, there has not been any submission of evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, or any notice that he has acquired trademark or service mark rights over the “cinpal” expression.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy states:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;”
Considering the evidence submitted, the Respondent’s actions as alleged by the Complainant, together with the Respondent’s response indicate full knowledge of the Complainant’s trademark at the time the disputed domain name was registered.
The offers for sale mentioned by the Complainant for BRL 150,000.00 and then BRL 75,000.00 would corroborate with a finding of bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(i) of the Policy. In any event, the use of the disputed domain name to resolve, at times, to the Complainant’s website, to pornographic websites and to parked pages, and the current passive holding of the disputed domain name are evidence of registration and use in bad faith. 8. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: May 8, 2017
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