ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Universo Online S/A v. Marian Titu Case No. D2024-3478 1. The Parties The Complainant is Universo Online S/A, Brazil, represented by Dannemann Siemsen, Brazil. The Respondent is Marian Titu, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with Secura GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2024. On August 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2024, 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 (DOMAIN ADMIN) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 9, 2024, 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 September 11, 2024. 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 September 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2024. The Center appointed John Swinson as the sole panelist in this matter on October 17, 2024. 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.
page 2 4. Factual Background The Complainant was established in 1996. The Complainant is a Brazilian company which provides online content, services and products on the Internet. The Complainant has over 114 million unique visitors per month and is Brazil's leading online content company. The Complainant uses the trademark UOL to identify its services. The Complainant’s primary website is located at . The Panel notes that the domain name redirects to the domain name . The Complainant owns a portfolio of trademark registrations for or that include UOL in Brazil and in other countries, including for example, United States of America Trademark Registration No. 2934743, with an application filing date of July 23, 2003, and a registration date of March 22, 2005. The disputed domain name was registered on June 9, 2024. The Respondent did not file a Response, so little information is known about the Respondent. According to the Registrar’s records, the Respondent has an address in the Isle of Man. At one time, the disputed domain name redirected to an online casino website at “https://joya.casino/index.php”. At the present time, the disputed domain name does not resolve to an active website. In May 2024, the Complainant approached the Respondent via a GoDaddy broker to purchase the disputed domain name. The broker replied with an asking price of USD 100,000. Negotiations did not lead to a sale. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the Complainant’s UOL trademark has a high level of public recognition, particularly in Brazil, with over 114 million visitors to the Complainant’s website each month. In 2018, the Brazilian Patent and Trademark Office recognized that the trademark UOL deserved special protection in all fields, since its fame went beyond the limits of its market segment, granting the status of high renown. When searching UOL on Google, the first page of results all relates to the Complainant. The Respondent does not own any trademarks for UOL or used “UOL” in connection with a bona fide offering of goods or services. The Respondent does not operate a business known as UOL and is not commonly known as UOL. The Respondent has not been authorized to use UOL by the Complainant. The disputed domain name redirects to a casino website. In view of the reputation of the Complainant, it is evident that the Respondent registered the disputed domain name with knowledge of the Complainant and its UOL trademark. Due to the redirection to a casino website, the Respondent’s use of the disputed domain name is clearly in bad faith and intentionally attempting to attract Internet users to another on-line location for commercial gain. When contacted by the Complainant to purchase the disputed domain name, the Respondent offered a large price and then stopped negotiating. This shows that the dispute domain name was registered for the purpose of selling to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no formal Response has been submitted. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Merit Turizm Yatirim Ve Isletme Anonim Sirketi v. Fedlan Kilicaslan, G&F Company Group NV / Redsoft N.V., WIPO Case No. D2017-1398. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
page 4 proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to file a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. Furthermore, the Panel finds that the Respondent has used the disputed domain name misleadingly to divert Internet users to a casino website, which circumstances cannot give rise to rights or legitimate interests. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the disputed domain name was (at one time) redirected to an online casino website. The Panel finds the Complainant’s UOL trademark to be widely known in the field of online services in Brazil. The Respondent provides no explanation of its choice of the disputed domain name and the Panel infers in these circumstances that the Respondent registered the disputed domain name with knowledge of the Complainant’s UOL trademark and with the intention of taking unfair commercial advantage of that mark. The disputed domain name comprises an unadorned appropriation of the Complainant’s UOL trademark, together with the TLD “.bet”. In the view of the Panel, the disputed domain name is likely in these circumstances to imply to Internet users that it is owned, operated or otherwise legitimately commercially affiliated with the Complainant, possibly linking to authorized information about its services. The disputed domain name is in fact unconnected with the Complainant and resolved to a website promoting online casino services. The Panel finds, therefore, that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The fact that the disputed domain name is no longer being used to host a website does not prevent a finding of bad faith under the third element of the Policy. The Panel also notes that a person with the same name as the Respondent was unsuccessful in a prior domain name dispute under the Policy involving a domain name that also diverted to a casino website. Byborg IP v. Marian Titu, WIPO Case No. D2023-3289. Although failure (or success) in a prior decision under the Policy does not determine the result in the present case, this prior decision shows a potential pattern of conduct and suggests a level of sophistication in registering domain names for the purposes of traffic generation. The Panel also is aware of the prior case Mills and Reeve LLP v. Peter Smith, WIPO Case No. D2015-1994. In that case, the respondent was Peter Smith from the Isle of Man and used the name “Petersmithwebs” as part of an email address. In the present case, according to the Registrar’s records, the Respondent has an address in the Isle of Man and the Respondent’s email address also includes “Petersmithwebs” as part of the email address.
page 5 The Panel finds that the Complainant has established 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 be transferred to the Complainant. /John Swinson/ John Swinson Sole Panelist Date: October 30, 2024
Full & Egal Universal Law Academy