The Complainant is Sompo Seguros S.A., Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Eijy Nomura, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 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 July 2, 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 July 9, 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 July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 17, 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 August 24, 2021, the Panel issued the Procedural Order No. 1 requesting the Complainant to submit evidence of authorization from the trademark owner, Sompo Japan Insurance Inc. to proceed with this Complaint. On August 31, 2021, the Complainant asked for additional time to produce such evidence, which was allowed by the Panel.
On September 15, 2021, the Complainant submitted a copy of the correspondence received from the trademark owner on September 15, 2021 expressly authorizing it to proceed with the Complaint. The Respondent did not submit any comments on the evidence submitted by the Complainant.
4. Factual BackgroundThe Complainant is part of the Sompo Japan Nipponkoa Insurance group, a conglomerate in the insurance business, founded in 1888 and today present in all continents.
The Complainant is the non-exclusive licensee of the trademarks owned by Sompo Japan Insurance Inc, also part of that conglomerate in Brazil, amongst which are the following Brazilian trademark registrations (Annex 7 to the amended Complaint):
- No. 823781151 for the word mark SOMPO JAPAN, filed on April 24, 2001, registered on December 12, 2006 and subsequently renewed, in international class 36;
- No. 908544065 for the word mark SOMPO, filed on November 4, 2014 and registered on May 9, 2017, in international class 36; and
- No. 911081771 for the word & device mark SOMPO SEGUROS, filed on May 24, 2016 and registered on July 10, 2018, in international class 36.
The disputed domain name
The Complainant asserts to be part of the Japanese conglomerate of Sompo Japan Nipponkoa Insurance, an insurance company founded on 1888 and today, one of the largest insurance groups in the world, present in all continents. Acting as the operational basis in Brazil for that conglomerate, the Complainant claims to count on two thousand employees in Brazil and branches located in all regions of the country, to ensure a broad range of high quality insurance services under the SOMPO trademark.
In the Complainant’s view, the disputed domain name reproduces the Complainant’s trademark with the terms “leilao” and “seguradora” (Portuguese for “auction” and “insurance company”) 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 for the Complainant, which is not true.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has not been commonly known by the disputed domain name, nor has it been authorized to register the SOMPO trademark as a domain name;
(ii) the Respondent does not own any trademark registration or application for the trademarks “SOMPO” or “LEILAO SOMPO SEGURADORA” (Annex 10 to the amended Complaint);
(iii) the Complainant’s trademark is well known in the insurance field and exclusively associated with the Complainant;
(iv) the Respondent is not making a legitimate or fair use of the disputed domain name since it is intentionally using the disputed domain name to offer auction services of second-hand vehicles from different sources including vehicles from insurance companies such as the Complainant, unduly reproducing the Complainant’s logo.
As to the registration and use of the disputed domain name in bad faith, the Complainant states that the Respondent knew of the Complainant’s trademark when registering the disputed domain name given the choice of the disputed domain name and the reproduction of the Complainant’s logo on the website that resolved from the disputed domain name, being it evident that the Respondent had knowledge of the Complainant’s well-known trademark in the insurance field and sought to create an impression of affiliation or sponsorship between the Complainant and the Respondent, causing the likelihood of confusion amongst Internet users.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 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 SimilarThe Complainant is the non-exclusive licensee of the Brazilian trademark registrations for SOMPO and SOMPO-variations owned by Sompo Japan Insurance Inc. in Brazil (Annex 7 to the amended Complaint).
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 the non-exclusive license (registered before the Brazilian Patent and Trademark Office under No. 020567/09) the Panel issued the Procedural Order No. 1, requesting the Complainant to provide clear authorization from the trademark owner authorizing the Complainant to proceed with this Complaint, which was done by the Complainant, as mentioned above.
The Panel finds that the disputed domain name reproduces the textual component of the SOMPO trademark in its entirety with the addition of the terms “leilao” and “seguradora” and is therefore confusingly similar to it. 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”. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within 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 InterestsParagraph 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 proof is still on the Complainant (see WIPO Overview 3.0, section 2.1).
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 no relationship whatsoever with the Respondent and has never authorized the Respondent to register the SOMPO trademark as a domain name. 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 interest 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 FaithThe 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 Complainant’s trademark with the addition of terms related to the Complainant’s business in connection with the reproduction of the Complainant’s logo on 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 fact that presently no active webpage resolves from the disputed domain name does not prevent a finding of bad faith.
The third element of the Policy has therefore been established.
7. DecisionFor 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: September 23, 2021