The Complainant is Citar Tech Eireli - Me, Brazil, represented by Mor Assessoria Empresarial Eireli - Me, Brazil.
The Respondent is WhoisGuard, Inc., Panama / Wilton Silva, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 June 14, 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 June 19, 2019.
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 June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 30, 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 an online platform available at and for payments using bitcoin.
It is the owner of the following trademark applications:
- Brazilian trademark application No. 913693162, for the word mark PAGUE COM BITCOIN in class 36, filed on November 8, 2017, rejected on November 11, 2018 and pending an appeal against the rejection;
- Brazilian trademark application No. 916639282, for the word & device mark PAGUE COM BITCOIN in class 35, filed on January 28, 2019, and rejected on August 13, 2019; and
- Brazilian trademark application No. 916639347, for the word & device mark PAGUE COM BITCOIN in class 36, filed on January 28, 2019, and rejected on August 13, 2019.
The disputed domain name was registered on April 11, 2019. No active webpage resolves from the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant asserts to hold the three aforementioned Brazilian trademark applications for PAGUE COM BITCOINS. It further states that it “has rights” over the domain name registered on November 20, 2017 under the Complainant’s owner individual name, as well as over the domain name registered on January 8, 2014.
According to the Complainant, the disputed domain name is identical to its claimed trademarks and prior domain name registrations, being confusingly similar therewith.
The Complainant further asserts that its PAGUE COM BITCOIN mark ought to be considered notorious since it would be widely known by consumers, having acquired notoriety in relation to the services of online payments.
In support to such notoriety assertions the Complainant attaches (Annex 8 to the Complaint) its Facebook profile pages showing 139,907 likes; 140,056 followers; 79 recommendations and a score of 4,9 out of 5 based on 831 votes; as well as its Instagram profile showing 273 followers and its Twitter profile counting 1,074 followers. The Panel notes that Annex 8 to the Complaint also counts with copies of (i) the Complainant’s Terms of Use; (ii) Instructions on how to use the Complainant’s services and (iii) a Service Agreement dated September 24, 2018 for the development of a trademark strategy communication worth BRL 222,137.56 (roughly USD 56,000).
As to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainant argues that:
a. the disputed domain name reproduces the previous marks and domain names belonging to the Complainant;
b. the Complainant has not authorized the Respondent to register the disputed domain name; and
c. the disputed domain name “clones” the contents of the Complainant’s website.
Lastly, the Complainant contends that the Respondent attempted to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s prior marks and domain names, as well as contents of the Complainant’s website. Another evidence of the Respondent’s bad faith, according to the Complainant, is the provision of what seems to be incorrect address and telephone information, being as the details provided are non-existent. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence, and the Panel may accept all reasonable and supported allegations and inferences flowing from the Complainant’s submissions as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
The Policy provides, at paragraph 4(a), that each of three findings must be made in order for a Complainant to prevail:
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
The Complainant contends that it has trademark rights over PAGUE COM BITCOIN arising from the applications filed before the Brazilian Trademarks Office (“BPTO”).
The Complainant does not mention in its brief submission that, while subject to an appeal, the first of its applications has initially been rejected by the BPTO and that the other 2 recent trademark applications for the word & device PAGUE COM BITCOIN marks have subsequently been rejected.
The well-known and widely referred to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), clearly indicates in section 1.1.4 that “a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”, and in itself would be sufficient to dismiss this case.
However and in addition to that, the Complainant’s mark, PAGUE COM BITCOIN which roughly translates into English as “pay with bitcoin” is composed of what may be considered a descriptive expression given the services being rendered by the Complainant (online payments with bitcoins).
The Complainant would thus, absent a valid trademark registration, also have the burden of proving that its claimed mark is inherently distinctive or has acquired distinctiveness so as to establish unregistered trademark rights through consumer recognition (see Essential Travel Ltd v. and Underground Digital Media Ltd,WIPO Case No. D2004-0205).
To this end, the Complainant asserts that its mark ought to be considered notorious in view of having reached 140,056 followers in Facebook, 273 followers at Instagram and 1,074 followers at Twitter, as well as having undertaken to spend roughly USD 56,000 in brand awareness. Against the background of the refusals of the BPTO, the Panel is not prepared to find unregistered rights for the purposes of this case. The Panel finds that the evidence can not bring any credibility to the Complainant’s assertions of notoriety or awareness and could not even constitute “[r]elevant evidence demonstrating […] acquired distinctiveness (also referred to as secondary meaning) […] such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys” as the section 1.3 of the WIPO Overview 3.0 sets as factors to be considered to successfully assert unregistered or common law trademark rights.
The Panel accordingly finds that the Complainant has failed to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests / Registered and Used in Bad Faith
While the Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, the Panel does not need to consider the second requirements under paragraphs 4(a)(ii), and 4(a)(iii) of the Policy, for completeness, however the Panel notes that the Complainant’s claim of the Respondent “cloning” the Complainant’s web page could support a finding of bad faith and lack of rights or legitimate interests (and prossibly would assist in showing a degree of recognition in Complainant’s claimed trademarks) but that the Complainant has not provided a screenshot as evidence and the Panel’s own visit takes it to an inactive page. In sum, as to all required elements, the Complainant has not provided adequate evidence – assuming it were even available – to make out its case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 13, 2019
Full & Egal Universal Law Academy