Complainant is Guaraná Amazônia S.L., Spain, represented by Isern Patentes y Marcas, S.L., Spain.
Respondent is Jinsoo Yoon, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2021. On May 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 May 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 7, 2021. The Center appointed Marina Perraki as the sole panelist in this matter on June 14, 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. 4. Factual Background Complainant is a Spanish company active in the production and bottling of a natural guarana soft drink. Complainant is the owner of several trademarks worldwide for GUARANÁ AMAZÔNIA (figurative), including: - European Union Trademark registration No. 003709581, GUARANÁ AMAZÔNIA (figurative), registered on November 24, 2009, for goods and services in international classes 29 and 35; and Complainant is also holder of domain names for “Guaraná Amazonia” including The Domain Name was registered on April 22, 2021 and resolves to a pay-per-click (PPC) website (the Website) displaying sponsored advertisement links for, inter alia, supplements, and capsules. The Website displays also a hyperlink indicating that the Domain Name is being offered for sale. The hyperlink directs users to a webpage that is soliciting offers to purchase the Domain Name stating a minimum price of USD 4,950. A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent 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. A. Identical or Confusingly Similar The Domain Name incorporates the verbal part of Complainant’s mark GUARANÁ AMAZÔNIA in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the GUARANÁ AMAZÔNIA mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 mark at issue. The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated, the Domain Name resolves to a Website displaying PPC links to third party sites. The use of a domain name to host a page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, such as in the case at issue (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9). In addition, the Domain Name incorporates in its entirety the verbal part of Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). Furthermore, the Website contains a hyperlink indicating that the Domain Name is being offered for sale, which directs Internet users to a webpage soliciting offers to purchase the Domain Name at a minimum price of USD 4,950 . The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and uses the Domain Name in bad faith. Because the GUARANÁ AMAZÔNIA mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (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). Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search due to Complainant’s use of GUARANÁ AMAZÔNIA mark on the Internet (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005‑0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Respondent could also have searched the European Union or the United States trademark registry and would have found Complainant’s prior registrations in respect of GUARANÁ AMAZÔNIA (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). Furthermore, the Domain Name incorporates in its entirety the verbal part of Complainant’s mark. As regards to bad faith use, Complainant demonstrated that the Domain Name leads to a Website displaying PPC links and an offer to sell the Domain Name at a minimum price of 4,950 USD, which seems to be in excess of out of pocket costs directly related to the Domain Name. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi,WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5). Furthermore, Respondent has been involved as named respondent in a large number of UDRP cases, such as Bayer AG v. JInsoo Yoon,WIPO Case No. D2018-2675, Red Bull GmbH v. Jinsoo Yoon,WIPO Case No. D2016-2351, Lab2Fab, LLC v. Jinsoo Yoon,WIPO Case No. D2020-2974, Joël Blomet and Prevor v. Jinsoo Yoon,WIPO Case No. D2015-1476 and Siemens AG v. JInsoo Yoon,WIPO Case No. D2020-0356. This pattern supports a finding of bad faith registration (Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2007-1664; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd,WIPO Case No. D2016-1881). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Marina Perraki
- United States of America Trademark registration No. 4097755, GUARANÁ AMAZÔNIA ORIGINAL DESDE 1957 (figurative), registered on February 14, 2012 for goods and services in international classes 32 and 35.
Sole Panelist
Date: June 28, 2021
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