The Complainant is Sompo Seguros S.A., Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is Maria Luiza da Silveira Bello, Simples Cred, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2019, 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. 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, and the proceedings commenced on September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2019. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 22, 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 is the main operational basis in South America of its parent Japanese company Sompo Japan Nipponkoa Insurance, an insurance company founded in 1888. The Complainant offers a broad range of insurance services, under the brand SOMPO. The Complainant’s parent company owns trademark registrations for SOMPO JAPAN and SOMPO in Brazil since respectively December 12, 2006 and September 5, 2017. SOMPO is also the core and distinctive part of the Complainant’s corporate name and official domain name The Respondent registered the disputed domain name The Panel accessed the disputed domain name on November 4, 2019, when it was linked to a parking webpage disposing links to insurance services. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The trademark SOMPO is protected in Brazil since 2006. SOMPO is a fanciful mark directly associated to the Complainant and its Japanese shareholder. The word “leiloes” is a descriptive term in Portuguese language, so that the distinctive part of the disputed domain name is “sompo”, which is identical and confusingly similar to the Complainant’s trademark - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The only entity which has legitimate rights over the trademark SOMPO in the insurance field is the Complainant. The Respondent is not known as “Sompo”, nor has been authorized to use it to compose the disputed domain name. The Respondent does not own any trademark registration or application for “Sompo” or “Sompo Leiloes”. The Respondent has neither ever used or demonstrated any intention of using the disputed domain name in connection with a bona fide offering of goods or services. The website at the disputed domain name used to reproduce the Complainant’s trademark, logo and slogan, and is now connected to a parking scheme with links to competing services. The Complainant received numerous complaints from its consumers concerning frauds related to the Respondent’s activities at the website linked to the disputed domain name. - The disputed domain name was registered and is being used in bad faith. The bad faith registration derives from the mere use of the famous trademark SOMPO to compose the disputed domain name. The Respondent’s parking scheme at the disputed domain name contains links to the Complainant’s official website and reproduces its well-known trademark SOMPO. Both the Respondent and the Complainant are located in Brazil. Therefore, it remains clear that the Respondent was well aware of the Complainant and its famous trademark SOMPO when it registered the disputed domain name. The Respondent intentionally attempted to attract Internet users to the disputed domain name, for commercial gain, creating a likelihood of confusion with the Complainant and its famous trademark SOMPO as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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 Annex 7 to the Complaint demonstrates for purposes of the Policy that the Complainant has rights in several SOMPO trademark registrations in Brazil, obtained since 2006. The trademark SOMPO is wholly encompassed within the disputed domain name, together with the suffix “leiloes” (“auctions” in a free translation from Portuguese). Previous UDRP decisions have found that the addition of other terms in a domain name (such as “leiloes” in this case) does not avoid confusing similarity (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927) and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The disputed domain name also presents the generic Top-Level Domain (“gTLD”) “.com”. It is already well established that the addition of a gTLD extension is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; 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 at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name used to be linked to a website reproducing - without permission - the Complainant’s trademark and logo, confusing the Complainant’s customers and generating complaints of fraud. The disputed domain name is currently linked to a website containing pay-per-click links related to insurance services. The Respondent was not authorized to use the SOMPO mark in any way, and using the disputed domain name incorporating the mark to host sponsored links associated with the Complainant’s area of business cannot be a bona fide offering of goods or services. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in March, 2019) the trademark SOMPO was already directly connected to the Complainant’s insurance services in Brazil. The Respondent resides in Brazil, where the Complainant is established and operates, as well as where several SOMPO trademark registrations are registered. The Respondent reproduced the SOMPO trademark and logo on the website previously published at the disputed domain name. Additionally, the Respondent’s current parking scheme at the disputed domain name promotes insurance services in competition with the Complainant. Therefore, the Panel concludes that it would definitely not be possible to consider that the Respondent could not have been aware of the SOMPO trademark, as well as that the adoption of the expression “sompoleiloes” could be a mere coincidence. Furthermore, the Respondent’s use of the disputed domain name – currently and previously – creates a likelihood of confusion with the SOMPO trademark and potentially generating revenue to the Respondent. Previous UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Also, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a third-party trademark and corporate name, certainly cannot be used in benefit of the Respondent in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 name Rodrigo Azevedo
Sole Panelist
Date: November 5, 2019
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