The Complainant is Tokio Marine Seguradora S.A., Brazil, represented by Opice Blum, Brazil.
The Respondent is Osvaldo Gomes, 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 April 27, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2021, 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 May 3, 2021 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 May 4, 2021. 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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 11, 2021. 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. On June 24, 2021, the Panel issued the Procedural Order No. 1 requesting the Complainant to submit evidence of authorization from the trademark owner, TOKIO MARINE HOLDINGS, INC. to proceed with this Complaint. On June 25, 2021, the Complainant asked for additional time to produce such evidence, which was allowed by the Panel. On June 30, 2021, the Complainant submitted a copy of the correspondence exchanged between the Complainant and the trademark owner between January 29, 2021, and February 10, 2021, which contains the express authorization to proceed with the Complaint. The Respondent did not submit any comments on the evidence submitted by the Complainant. 4. Factual Background The Complainant is part of the Tokio Marine group, a conglomerate exploiting the insurance business, founded in 1879 and present in over 35 countries. Tokio Marine Holdings, Inc., also part of that conglomerate, is the current owner of the Brazilian Trademark Registration No. 827939213 for TOKIO MARINE SEGURADORA & device, filed on December 8, 2005, and registered on February 20, 2018, (Annex 4 to the amended Complaint). The Complainant is the non-exclusive licensee of said trademark as per the Trademark License Agreement (Annex 7.2 to the amended Complaint – “License Agreement”) between the trademark owner and the Complainant. The disputed domain name The Complainant asserts to be the Brazilian subsidiary of the Tokio Marine group, licensed to use the TOKIO MARINE SEGURADORA trademark in Brazil. In addition to that, the Complainant asserts to have been present in the Brazilian market since 1959, holding rights over its tradename that incorporates the TOKIO MARINE expression, which has become well-known in Brazil. In the Complainant’s view, the disputed domain name reproduces the relevant part of the Complainant’s trademark with the term “leiloes” (Portuguese for “auctions”) that enhances the likelihood of confusion with the Complainant’s trademark, given that it could induce Internet users into believing that the disputed domain name operates auction services, an activity also conducted by the Complainant. Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Complainant has not licensed, permitted or authorized the use of the TOKIO MARINE SEGURADORA trademark; (ii) to the best of the Complainant’s knowledge, the Respondent has no rights or legitimate interests over the disputed domain name, nor has he been commonly known by the disputed domain name; (iii) the Respondent is not making a legitimate or fair use of the disputed domain name since it is intentionally used the disputed domain name to attempt to pass off as the Complainant (Annex 6 to the amended Complaint). As to the registration and use of the disputed domain name in bad faith, the Complainant argues that previous UDRP panels have consistently found that the registration and use of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent having specifically targeted the Complainant given the reproduction of the Complainant’s logo in the webpage that offered “auction services” further endorses an assumption of affiliation or sponsorship between the Complainant and the Respondent, causing the likelihood of confusion amongst Internet users. Also according to the Complainant, a further indicative of the Respondent’s bad faith was the choice to retain a privacy tool in order to conceal the Respondent’s true identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. 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 aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has evidenced that it is the non-exclusive licensee of the Brazilian Trademark Registration No. 827939213 for TOKIO MARINE SEGURADORA” & device, owned by Tokio Marine Holdings, Inc. Section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that “[a] trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. While panels have been prepared to infer the existence of authorization to file a UDRP case based on the facts and circumstances described in the complaint, they may expect parties to provide relevant evidence of authorization to file a UDRP complaint. In this respect, absent clear authorization from the trademark owner, a non-exclusive trademark licensee would typically not have standing to file a UDRP complaint.” In view of clause 10 of the Trademark License Agreement (Annex 7.2 to the amended Complaint) the licensor “shall have the sole right to decide whether or not the proceedings shall be brought against” trademark infringing parties, the Panel issued the Procedural Order No. 1, requesting the Complainant to provide clear authorization from the trademark owner, Tokio Marine Holdings, Inc., authorizing the Complainant to proceed with this Complaint, what was done by the Complainant, as mentioned above. The Panel finds that a dominant feature of the mark TOKIO MARINE SEGURADORA is recognizable in the disputed domain name. The addition of term “seguradora” for “seg” and the addition of the term “leiloes” does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a 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 disputed 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, in spite of not having 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 Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default, as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of production is still on the Complainant to make a prima facie case against the Respondent. In that sense, and as the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, given that the Respondent has used the disputed domain name to redirect Internet users to a webpage reproducing the Complainant’s logo, purportedly offering auction services, thus carrying a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). In addition to that, the Complainant indeed states that it has not licensed, permitted or authorized the Respondent the use of the TOKIO MARINE SEGURADORA trademark. Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name corroborates with the indication of the absence of a right or legitimate interests in the disputed domain name. 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. The second element of the Policy has therefore been established. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances: (i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; (ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name (reproducing the distinctive element of the Complainant’s trademark in connection with the reproduction of the Complainant’s logo in the webpage that resolved from the disputed domain name affirms a finding of targeting of the disputed domain name with respect to the Complainant’s trademark) suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put; (iii) the Respondent’s concealing of its identity in the WhoIs data; and (iv) the indication of what appears to be false contact information, and hence the Center not being able to fully deliver correspondence to the Respondent. For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy has therefore been established. 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 Wilson Pinheiro Jabur
Sole Panelist
Date: July 14, 2021
Full & Egal Universal Law Academy