The Complainant is Scopus Soluções Em TI LTDA, Brazil, represented by Pinheiro, Nunes, Arnaud e Scatamburlo Advogados, Brazil.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (the “United States”) / Leonam Antunes, 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 October 31, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 4, 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 November 6, 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 November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019. The Center appointed Eduardo Machado as the sole panelist in this matter on December 17, 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 a Brazilian company established since 1975, owner of Brazilian trademark registration nr. 822010488 for the SHOPFÁCIL word mark to cover its e-commerce services, filed in 2000 and granted in 2010, which is currently valid to identify, in international class NCL (7) 35, e-commerce services. The Complainant is also the owner of the trademark registrations nr. 831042532 and 831042540 for the SHOPFÁCIL & DEVICE marks, filed in Brazil on June 14, 2011, and achieving registration on February 07, 2017. The Complainant is operating as a Brazilian e-commerce though the website “shopfacil.com.br”, owned by the Complainant. The Complainant is also the owner of the The Respondent did not submit a Response, and, therefore, very little information is known about the Respondent. The Respondent registered the disputed domain name on January 2, 2019. The disputed domain name currently redirects to a website at “shopfacilbrasil.com.br”, which also reverts to an e-commerce website. 5. Parties’ Contentions A. Complainant The Complainant argued that the disputed domain name is confusingly similar to its SHOPFÁCIL trademark, duly registered before the Brazilian Trademark Office since 2010. In this regard, the Complainant argues that its registration for its SHOPFÁCIL mark was granted by the Office with the disclaimer “as a whole”, which means that the SHOPFÁCIL mark is formed by the conjunction of common terms but that such, as a whole, was distinctive and susceptible of registration. In this sense, the Complainant claims that the disputed domain name reproduces the Complainant’s SHOPFÁCIL trademark, registered in Brazil under No. 822010488, No. 831042532, and No. 831042540, and would be identical to the domain names previously registered by the Complainant with the mere addition of the term “Brasil”. The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s trademark, making it possible for customers to believe that this domain name is the real and current Complainant’s domain name. In addition to the above, the Complainant continues to argue that the possibility of confusion would be evident given that consumers will immediately identify the disputed domain name registered by the Respondent with the Complainant’s alleged well-known trademark, believing that the registrations identify the same company, and that the products offered would originate from the same source. The Complainant continues to argue that the Respondent is not known or in any way related to the Complainant or any of its affiliates and the Complainant’s trademark registrations precedes the registration of the disputed domain name by at least nine (9) years and that the Complainant has never authorized, consented to, or licensed the Respondent the use of the SHOPFÁCIL trademark or to register the disputed domain name incorporating the SHOPFÁCIL mark. Furthermore, the Complainant alleges that the Respondent has registered and is using the disputed domain name in bad-faith, in order to obtain an unfair commercial gain by diverting the Complainant’s customers. The Complainant affirms that the Respondent seems to be using the disputed domain name to host an e-commerce website, same activity performed by the Complainant and identified by its SHOPFÁCIL marks. In this sense, the Respondent’s misappropriation of the SHOPFÁCIL mark would be an attempt to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its marks. B. Respondent The Respondent did not reply to any of the Complainant’s contentions. 6. Discussion and Findings The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. In this case, the Panel finds that the Complainant has provided uncontested evidence to establish that it is the owner of the SHOPFÁCIL mark, considering that such has been duly registered before the Brazilian Trademark Office since 2010. In this sense, the disputed domain name is considered by the Panel as confusingly similar to the Complainant’s registered trademark, since the disputed domain name reproduces, in its entirety, the Complainant’s SHOPFÁCIL mark, with the mere addition of the term “brasil”, which is insufficient to prevent the confusing similarity and association with the Complainant’s SHOPFÁCIL mark. In this regard, previous panels have found that the mere addition of a geographical term, in this case, the addition of the term “brasil”, does not distinguish the disputed domain name from the Complainant’s trademark (see Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171, a geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). The Panel therefore finds that paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the disputed domain name. These circumstances include: (i) before any notice to the holder of the dispute, the holder’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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or (iii) the domain name holder 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. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services. On the contrary, the Respondent is currently using the disputed domain name to redirect Internet users to the e-commerce website “shopfacilbrasil.com.br”, same activity performed by the Complainant under the SHOPFÁCIL mark. In addition, no evidence has been presented that the Respondent has been commonly known, as an individual, business or otherwise, by the disputed domain name nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, considering that the disputed domain name is being used to resolve to an e-commerce website, with clear commercial use. The uncontested evidence shows that the Complainant has prior trademark rights related to the SHOPFÁCIL mark at the time of the Respondent’s registration of the disputed domain name and that the Respondent nevertheless registered the disputed domain name to redirect Internet users to a website that offers similar services as the Complainant. These circumstances do not create rights or legitimate interests in the disputed domain name by the Respondent. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to: (i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or (ii) the holder has 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 holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor, or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the website or location or of a product or service on the holder’s website or location. The Panel finds that the circumstances described in paragraph 4(b)(iii) and (iv) of the Policy fit those of the current proceeding. The Complainant has proven that that the Respondent, by registering the disputed domain name, which reproduces the entirety of the SHOPFÁCIL mark, did so with the intention of attracting the Complainant’s customers to the disputed domain name for commercial gain, profiting off the Complainant’s registered SHOPFÁCIL mark, without the Complainant’s authorization. As evidence provided by the Complainant in the current proceeding, the SHOPFÁCIL mark, registered in Brazil since 2010, can be considered a well-known mark in the Brazilian territory, same territory in which the Respondent is located and performs its activities. In light of this, the Panel finds that the Respondent was most certainly aware of the Complainant’s registered and well-known mark to identify its e-commerce service, evidencing the bad-faith registration by the Respondent (see Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754). In this sense, the Respondent’s registration of the disputed domain name can be considered as in bad faith, as Respondent knew or should have known of the Complainant’s well-known SHOPFÁCIL mark and, despite that, the Respondent chose to register the disputed domain name that reproduces the Complainant’s mark to redirect Internet users to the Complainant’s competitor, diverting the Complainant’s clientele and disrupting the Complainant’s business. Moreover, the use of the disputed domain name by the Respondent can be considered in bad-faith since the Respondent, by using the disputed domain name that is composed of a reproduction of the Complainant’s well-known mark also does so in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This conclusion is also supported by the fact that the Respondent failed to submit any Response in this case or to provide any evidence of the disputed domain name good faith registration and use of the disputed domain name. The evidence also demonstrates that the registration of the disputed domain name by the Respondent does not in any fashion predates the Complainant’s significantly earlier trademark registration for the SHOPFÁCIL mark, nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s marks. The Panel thus concludes that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Eduardo Machado
Sole Panelist
Date: December 31, 2019
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