ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION UNIVERSO ONLINE S/A v. dafu zhang, Case No. D2024-3862 1. The Parties The Complainant is Universo Online S/A, Brazil, represented by Dannemann Siemsen, Brazil. The Respondent is dafu zhang, China. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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, GoDaddy.com, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 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 26, 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 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2024.
page 2 The Center appointed Nayiri Boghossian as the sole panelist in this matter on November 1, 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. 4. Factual Background The Complainant, founded in 1996, is a Brazilian company which provides content, services and products on the Internet. It uses the trademark UOL to provide its services and owns trademark registrations for UOL worldwide such as the following: 1. Brazil Trademark Registration No. 819851434, registered on October 13, 1999; 2. Brazil Trademark Registration No. 819851426, registered on July 18, 2000. The Complainant is the owner of the domain name since 1996, when the company was founded. The disputed domain name was registered on September 8, 2023, and resolves to a website for online casino. 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 disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant’ trademark UOL has been recognized as highly renowned in Brazil. The Complainant has a well-established right over the trademark UOL which it has registered and used since 1996. The distinctive part of the disputed domain name is identical to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not own any application or registration for UOL nor has it ever used or demonstrated any intention to use UOL or the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by UOL. The Complainant did not authorize the Respondent to use its trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as it resolves to an online casino and reproduces the Complainant’s trademark and uses the white and orange colors, traditionally used by the Complainant. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have had knowledge of the Complainant’s trademark as the Complainant’s trademark is renowned and registered in many countries. The disputed domain name resolves to an online casino and reproduces the Complainant’s trademark, using the white and orange colors and offers its services in Portuguese language, the same as used by the Complainant in its main country of operation (Brazil). The Complainant tried to acquire the disputed domain name amicably but received no response. There is an affirmative obligation prior to registering a domain name to conduct an Internet search on the trademark. The Respondent registered the disputed domain name in order to profit from it. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings 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 UOL mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “bet” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 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 not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The composition of the disputed domain name, associated with the use on the website of a similar design trademark as the one used by the Complainant, under the same color combination traditionally used by the Complainant, indicates a risk of user confusion. 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.
page 4 In the present case, the Panel notes that the Respondent, more likely than not, was aware of the Complainant’s trademark when registering the disputed domain name as the disputed domain name was registered more than 20 years after the registration of the Complainant’s trademark and it is used in connection with a website not only displaying a similar logo to the Complainant’s design trademark, uses the color orange which is traditionally used in connection with the Complainant’s trademark, and the website is also in Portuguese language, language of Complainant’s main country of operation (Brazil) and where the Complainant is well-known. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. According to the evidence submitted by the Complainant, the disputed domain name redirects to a website for online casino. In light of the lack of any rights or legitimate interests in the disputed domain name by the Respondent and in the absence of a reply from the Respondent in these proceedings with an explanation for the registration and use of the disputed domain name, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. 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. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: November 8, 2024
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