The Complainant is The British United Provident Association Limited of London, United Kingdom, represented by Kuehn Law, United States of America (“United States”).
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Thiago Garcia, 021 Construction Services of Sydney, New South Wales, Australia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 25, 2019, 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 January 29, 2019 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 January 31, 2019.
The Center verified that the Complaint 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 February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 4, 2019. 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 operates “Bupa Insurance Company”, a company engaged in the provision of health services and sales of life, travel and health insurance products in Latin America and the Caribbean. Moreover, the Complainant entered the Brazilian market in 2001.
The Complainant is the owner of the BUPA trademark registered in Brazil, United States and the European Union, including, among others:
- BUPA, Brazilian Registration No. 823628388, registered on March 13, 2007;
- BUPA (& Design), Brazilian Registration No. 907578020, registered on November 1, 2016;
- BUPA, United States Trademark Registration No. 2193310, registered on October 6, 1998.
The Disputed Domain Name was registered on June 28, 2018.
The Disputed Domain Name resolves to a website which provides different links related to trips and health insurance services. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is identical to the Complainant’s BUPA trademarks, since the Disputed Domain Name incorporates the entirety of the BUPA trademark with the addition of the generic term Brazil and the Top-Level Domain (“TLD”) “.com”.
Rights or legitimate interests
The Complainant submits that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, as only a link farm exists at the Disputed Domain Name. Moreover, many of the links direct to services which are competitive to the Complainant.
The Complainant alleges that the Respondent has not been commonly known by the Disputed Domain Name, nor has the Respondent acquired trademark or service rights. Furthermore, the Complainant has never authorized the Respondent to use its trademarks.
A search on the Google search engine shows multiple results which all relate to the Complainant.
In addition, there is no evidence of legitimate noncommercial or fair use of the Disputed Domain Name.
Registration and use in bad faith
The Complainant alleges that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant established trademarks rights in Brazil as early as 2001, while the Respondent registered the Disputed Domain Name on June 28, 2018.
Moreover, the Complainant states that the Disputed Domain Name is connected with the Complainant and the use of the Respondent, who has no connection with the Complainant, suggests bad faith.
In addition, the Complainant alleges that its trademark is inherently distinctive and it does not correspond to a dictionary term. Therefore, it is reasonable to infer that the Respondent knew or should have known that its registration would be identical or confusingly similar to the Complainant’s trademark.
What is more, the Respondent website provides a link titled “Bupa Health Insurance” which leads users to a page of web results of competitors. The Respondent website also contains links to a significant number of competitors of the Complainant.
Consequently, the Respondent is intentionally attracting for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark BUPA. The Disputed Domain Name wholly incorporates the Complainant’s trademark and it is clearly recognizable in it.
Furthermore, the addition of the geographical term “brazil” does not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name.
Moreover, the composition of the Disputed Domain Name is such, that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on June 28, 2018, while the Complainant earliest trademark registration was granted in the United States in 1998.
The fact the Disputed Domain Name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name. The Disputed Domain Name is comprised of the BUPA trademark with the geographical term “brazil”. The use of the term “brazil” can lead to an inference of being a domain name related to the Complainant’s subsidiary or business in Brazil. In addition, many Internet users would assume that the Disputed Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote the business in Brazil.
The Panel is of the view that the Respondent has created a website to attract Internet users, for commercial gain, by creating a likelihood of confusion with the BUPA trademark, since users navigating the Disputed Domain Name will find a link farm parking page with services related to the Complainant. Thereby, the Disputed Domain Name is being used to direct web traffic with the intention to generate profit for the Respondent by use of advertising links. As such the Disputed Domain Name is being used for the purpose of commercial gain for the Respondent.
Paragraph 4(b)(iv) of the Policy states that: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location”.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith. 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: March 18, 2019
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