The Complainant is Nu Pagamentos S.A. of Sao Paulo, Brazil, represented by Pinheiro Neto Advogados, Brazil.
The Respondent is Pague Nu of Niteroi, Brazil / Pague Números Soluções e Agenciamento Ltda., from Belo Horizonte, Brazil, represented by José Domingues da Fonseca Neto, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2018. On March 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. After a request from the Respondent, the Center extended the due date for the Response to May 10, 2018, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on May 10, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 17, 2018. 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 May 28, 2018 the Complainant sent a message requesting the Panel to grant an additional period of time to file a Supplemental Filing, in light of the documents submitted by the Respondent in its Response. On May 29, 2018, the Respondent replied requesting, in the event such request be accepted by the Panel, that an additional period of time to reply on the Complainant's Supplemental Filing also be granted to it.
The Panel, on May 29, 2018, issued Procedural Order No. 1 whereby 5 days were granted to Complainant to comment on the Respondent's assertions and a subsequent 5 days period of time for the Respondent to respond thereto.
The Complainant therefore submitted Supplemental Filings and documents, on June 4, 2018, to which the Respondent replied on June 9, 2018 also submitting documents. 4. Factual Background
The Complainant was established in 2013 "seeking to develop simple solutions for customers to control their money" and issuing credit cards managed through a mobile app.
It is the owner, amongst others, of the following trademark registrations in Brazil, covering financial services in international class 36:
- Reg. No. 907207103 for the word and device mark NU, filed on January 10, 2014 and registered on September 27, 2016;
- Reg. No. 907206638 for the word and device mark NU BANK, filed on January 10, 2014 and registered on September 27, 2016, and
- Reg. No. 908121695 for the word mark NU BANK, filed on August 14, 2014 and registered on January 24, 2017.
The disputed domain name was registered on June 3, 2016, and currently resolves to a webpage where the payment of banking slips can be done with bitcoins and altcoins. At the bottom of said webpage a disclaimer is made stating that "A P não possui nenhuma parceria, ligação ou joint-venture with NU Pagamentos S.A. (NUBANK)" [Panel's English translation: "P does not have a partnership, connection or a joint-venture with NU Pagamentos S.A. (NUBANK)."]. 5. Parties' Contentions A. Complainant
In its Complaint, the Complainant claims to be a Brazilian financial institution which initiated its activities in 2013, issuing and administering "MasterCard" credit cards through a smartphone app, having earned recognition in the market and becoming one of the most renowned companies in Brazil.
As to its trademarks the Complainant asserts to be the owner of several registrations and applications for NU and NUBANK trademarks, as well as domain names incorporating NU and terms used in connection with financial services such as , , , etc.
According to the Complainant, the disputed domain name consists of the generic term "pague" in Portuguese, which corresponds to "pay", in English, and the country code Top-Level Domain ("ccTLD") ".nu" which, in the context of the present case characterizes a violation of the Complainant's trademark, also creating a likelihood of confusion and association amongst the Complainant's clientele in Brazil. Such confusion is enhanced by the use of the "purple" color in the Respondent's website.
The Complainant further states that Mr. Juhasc, CEO and founder of the Respondent, had contacted the Complainant in 2016 proposing a commercial partnership, which was expressly refused by the Complainant at that time, having the Complainant sent a cease-and-desist letter to the Respondent on January 30, 2018, which remains unanswered.
Under the Complainant's view, the Respondent's conduct, associating its website with the purple color for similar services, may lead Internet users into believing that there might be a relationship between the Parties, what is not true and constitutes trademark counterfeiting and unfair competition practice according to Brazilian Law.
In its Supplemental Filing the Complainant reinstates its initial allegations that the disputed domain name is confusingly similar to the Complainant's NU and NUBANK trademarks, as well as argues that the Respondent must be considered as having no rights or legitimate interests in respect of the disputed domain name since the disputed domain name was intentionally and unexplainably registered under the ".nu" ccTLD which prima facie relates to Niue Island but is used to provide services (similar to the ones provided by the Complainant), in Portuguese, only to Brazilian customers, in Brazil.
The Complainant further states that the disputed domain name was registered by Mr. Juhasc who has no connection with the Complainant and only incorporated "Pague Números" on May 2018 seeking to justify the choice for "nu" as an abbreviation for "numbers" ("números" in Portuguese) which, in the Complainant's view, is pretextual since the word "números" is not commonly referred to as "nu", in Portuguese.
Lastly, the disputed domain name has been used with the clear intention of creating a likelihood of confusion between consumers in view of the Parties' similar services and especially in view of the possible association with the purple color, also used by the Respondent and the express mention to the Complainant in the Respondent's website.
The Complainant further rebuts the Respondent's claim that the NU trademark should be considered null, since it was granted with no challenges and in accordance with the Brazilian Law.
As to the relevance of the Complainant and its mark, the Complainant annexes evidence in the sense that more than eight million people have requested its credit card; the Complainant was the third Brazilian startup company to be worth one billion dollars; the Complainant earned BRL 567 million in 2017; the Complainant was ranked No. 3 in the "World's Most Innovative Companies 2018", etc.
As to the Respondent's claim that Complainant should not be considered a financial institution but a payment arrangement institution, the Complainant states that on January 22, 2018 an Official Decree by the Brazilian President was signed authorizing the Complainant to become a financial institution through the creation of a bank. In addition to that, the Complainant insists that the activities performed by both Parties are very similar, both of them providing financial services, at a clear risk of creating confusion amongst consumers. Furthermore, the Complainant asserts that it is lauching new services such as NUCONTA.
The Complainant further states that Mr. Juhasc mentioned the Complainant's and the Respondent's services in connection with social media, in a clear attempt to cause confusion amongst consumers and transmit the idea that the Parties had a partnership or some sort of association or connection, what is also not true.
Moreover, according to the Complainant, the Respondent, being based in Brazil, solely addressing a Brazilian clientele, in Portuguese, has no obvious or legitimate interest in holding a ".nu" domain name, having, quite to the contrary, deliberately targeted the Complainant and its NU trademark what can be corroborated by the use of the same purple color that characterizes the Complainant's trademark and website.
Lastly, the change in the Respondent's website to include a disclaimer stating that there is no connection between the Parties, in the Complainant's view is insufficient to make the Respondent's conduct legitimate or acceptable given that the risk of undue association persists in view of the use of the purple color, similar services, and predominant use of the NU trademark. B. Respondent
In its Response, the Respondent claims to be Pague Números Soluções e Agenciamento Ltda., from Belo Horizonte, Brazil, in charge of managing the disputed domain name, used in connection with its bank slips payment platform using cryptocurrencies (bitcoin and other altcoins).
The Respondent states that it acquired, through its owner, Mr. Dias, the disputed domain name from Mr. Juhasc on October 29, 2017 (Annex 1 to the Response), to assume operation of the Platform.
The Respondent further asserts that the Complainant made a false statement posing itself as the owner of the domain names , , and which belong to third parties and were registered well before 2013.
As to the Complainant's assertions that the previous owner of the disputed domain name had offered it to the Complainant, the Respondent states that the Complainant failed to prove such allegation.
Moreover, according to the Respondent, the platform available at the disputed domain name clearly indicates that there is no relationship between the Respondent and the Complainant, as well as the same disclaimer is also made in the Respondent's social media networks and email signatures (Annexes 5 – 8).
In what it relates to the Complainant's trademarks, the Respondent contends that the Complainant should not be considered to hold exclusive rights over the individual terms "nu" and "bank" since such should be considered not registrable according to item VI of article 124 of the Brazilian Industrial Property Law. More specially, the Complainant's NU word mark registration should be considered null since it relates to a Top-Level Domain name extension.
Regarding the use of the purple color, the Respondent asserts that the Brazilian Industrial Property Law forbids its exclusive appropriation and, furthermore, the trade dresses of the Parties websites are completely different and distinguishable, counting both its old layout as well as new one with iconic graphic distinctive elements highlighting the Respondent's business - payment of bank slips with bitcoins, whereas the Complainant's webpage refers to credit cards.
In addition to that, the Respondent states that it cannot be considered as a financial institution under Brazilian Law since it is solely a "payment arrangement institution" whereas the Complainant is a credit card administrator, not a bank, leading different businesses which are unrelated.
As to the choice of the disputed domain name, the Respondent claims that it relates to an abbreviation of Pague Números ("pay numbers", in English) since that, in order to operate its business model, the Respondent requires the bank slip numbers to be sent by the platform users.
The Respondent further indicates that there was a telephone call between the Parties' representatives on April 4, 2018 whereby the Respondent undertook to alter its website's layout and indicated that it would like to enter into a coexistence agreement with the Complainant since they are not competitors.
Lastly, the Respondent claims to have already obtained awareness in the Brazilian cryptocurrency market.
In its June 9, 2018 submission, the Respondent states that it is considering challenging the Complainant's NU trademark registration.
It further states that since the purchase of the disputed domain name, in October 2017, the company Pague Números Soluções e Agenciamento Ltda. was expected to have been incorporated, what only took place in 2018 due to the "redesign of the business that will be undertaken by Respondent".
As to the Complainant's reference toWIPO Case No. DBR2012-0001 andWIPO Case No. DCO2011-0034, the Respondent argues that those cases had different underlying facts (identical copy of the Complainant's website, in the first case and parked page plus confusingly similar domain name in the second).
The Respondent further rebuts the Complainant's assertion in its supplemental filing that the mention by Mr. Juhasc in his social media of the names of the Parties would be likely to cause consumer confusion and states that nothing prevents anyone from making compositions with their names so as to attract customers or make their domain names more knowable.
As to the Complainant's alleged new services, NUCONTA, the Respondent contends that it is still in its beta phase and not widely advertised in the market and that the Complainant's alleged financial company does not exist and could not be located.
In what it regards the media reports presented by the Complainant, the Respondent contends that NUBANK is not a well-known mark in the Brazilian market and that an Alexa search conducted by it the Complainant's domain name only ranked 599 in the Brazilian rank, having other financial companies a much better position.
Lastly, the Respondent reaffirms that it has never sought to (i) sell the disputed domain name to the Complainant; (ii) use the disputed domain name to obstruct the Complainant from registering a domain name corresponding to its trademarks; (iii) attempt to interfere with the Complainant's business; and (iv) has always disclosed the lack of relationship with the Complainant, acting in good faith and not in competition with the Complainant. 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 cancellation of the disputed domain name:
(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 aforesaid three elements is present so as to have the disputed domain name cancelled, according to paragraph 4(i) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the NU and NUBANK trademarks, registered in connection with financial services in international class 36, as set out in section 4 above.
The Panel finds that the disputed domain name is confusingly similar therewith, in view of the combination of the generic term "pague", which in Portuguese corresponds to "pay", with the ".nu" ccTLD and the Complainant's NU mark which, in this case, can be considered as the dominant recognizable portion of the relevant trademark, used in connection with financial services, what is corroborated by the use made of the disputed domain name in connection with payment services of bank slips. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.15.
While the test for confusing similarity under the first element of the UDRP typically sees that the TLD be disregarded, UDRP panels have recognized that where the applicable TLD and the second-level portion of the domain name in combination reflect the relevant trademark, such in so-called "spanning the dot" cases, panels may consider the domain name in its entirety for purposes of assessing confusing similarity. See WIPO Overview 3.0, section 1.11.3.
The standing test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual component of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, and in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7, WIPO Overview 3.0.
Moreover, wherein the Complainant's NU trademark is reflected by the top-level portion of the disputed domain name, the Panel sees no reason to set aside the general "recognizability" approach recorded at sections 1.7 and 1.11.3 of the WIPO Overview 3.0. The Complainant's trademark is clearly recognizable within the disputed domain name, with the placement of the dot ultimately having no bearing on this assessment. The Panel notes that with the addition of the new gTLDs it is indeed common to encounter a range of terms as TLDs, and so to consider the co-existence of the Complainant's mark with the TLD should not be unprecedented.
The Panel further considers its finding corroborated by the use made of the disputed domain name in connection with payment services of bank slips, being in the category of financial services and utilizing similar color schemes to the Complainant. See section 1.15, WIPO Overview 3.0.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may indicate the Respondent's rights to or legitimate interests in the 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, despite 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 Complainant's trademark or service.
The Respondent states that it operates a bank slips payment platform with cryptocurrency. Such business, under this Panel's view falls within what can be considered the provision of a financial service, similar to the Complainant's credit card activities.
In addition to that, according to Annex 6 to the Complaint, the Respondent's website at the disputed domain name and Facebook page depicts as relevant image the same purple layout which characterizes the Complainant's own color scheme and the message which in English roughly translates to "Paying all your payment slips with Bitcoin or Altcoin has never been so easy" ("Pagar todos os seus boletos com Bitcoin ou Altcoin nunca foi tão fácil"). Similarly, the Respondent's Twitter account is also characterized by the predominant use of the purple color.
As the evidence suggests, the Panel finds that the Respondent (and its predecessor in interest) targeted the Complainant and its webpage when registering and using the disputed domain name, specifically when tweeting on July 1, 2016 "Paying your Nubank card with Bitcoin has never been so easy" ("Pagar seu cartão Nubank with Bitcoin nunca foi tão fácil") and clearly seeking to associate with the Complainant as per its August 24, 2016 retweeting of a Complainant's tweet with the hashtag "#sounu" (roughly "I am NU") (Annex 25 of the Complainant's Supplemental Filings). In this context, the predominant use of the purple color, characteristic of the Complainant's trademark, by the Respondent does not indicate a bona fide offering of services by the Respondent; to the contrary, the Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name since it was used to target the Complainant's trademark, in an attempt to create confusion with the Complainant's trademark and disputed domain name.
The later inclusion of a disclaimer at the bottom of its webpage stating that the Parties are unrelated, after the beginning of this procedure without further changes in its conduct (same images and predominant use of the purple color) does not convince this Panel that the Respondent is no longer targeting the Complainant, nor provides the Respondent with a defense under the Policy.
In that sense, the Respondent's assertion in its supplemental filing that "nothing prevents anyone from making compositions with their names so as to attract customers or make their domain names more knowable" shows that the Respondent misinterprets the requirement under the Policy not to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a product or service in its legitimate course of business.
In light of its bad faith attempts to confuse Internet users with the association or endorsement of its website, the Panel also finds that the Respondent should not be considered as "commonly known by" the disputed domain name for purposes of the Policy. See Neteller plc v. Prostoprom,WIPO Case No. D2007-1713.
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. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The Panel finds paragraph 4(6)(iv) applicable in the present circumstances.
While noting the Respondent's assertion that it acquired the disputed domain name in 2017, the Panel finds the Respondent's registration to be in bad faith no matter whether applied at the creation date on June 3, 2016 or in 2017. The Respondent's knowledge of the Complainant's trademark appears to be evident from the referred tweets of July 1, 2016 "Paying your Nubank card with Bitcoin has never been so easy" ("Pagar seu cartão Nubank with Bitcoin nunca foi tão fácil") and retweeting of a Complainant's tweet with the hashtag "#sounu" (roughly "I am NU" on August 24, 2016, and places in discredit the Respondent's assertion that it has always disclosed the lack of relationship with the Complainant, acting in good faith and not in competition with the Complainant. This falls into the general exception that bad faith registration may be found prior to the registration of the Complainant's trademarks, as the circumstances establish that the Respondent was aware of and targeting the Complainant's nascent rights. See section 3.8.2 of the WIPO Overview 3.0.
If 2017 is taken as the relevant date for purposes of the Policy, the Complainant, "the third Brazilian unicorn" as depicted in one of the annexes filed with the Complainant's Supplemental Filings appears to have already obtained a large clientele base (in the ten-figure range) and considerable success in the Brazilian market, having earned considerable revenues (BRL 567 million) in 2017, prizes and recognitions. It is not possible in these circumstances that the Respondent was unaware of the Complainant.
The Respondent, who clearly targeted the Complainant has had opportunities to change its conduct (ever since the warning letter sent by the Complainant, without any reply) but choose to maintain a likelihood of association of Internet users between the disputed domain name and the Complainant's services.
The attempt to associate itself with the Complainant and the likelihood of undue association overrides the Respondent's feeble attempt to cure bad faith, with the small disclaimer at the bottom of the Respondent's website being insufficient to change such determination. See section 3.7 of the WIPO Overview 3.0.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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 cancelled.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 26, 2018
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