Complainant is Bolsa de Valores de São Paulo S.A. - BVSP, São Paulo, Brazil, represented by Felsberg e Associados, Brazil.
Respondent is Robert Takovich, Columbia, Maryland, United States of America.
The disputed domain name <bovespa.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2008. On September 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on September 17, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 14, 2008.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 27, 2008. 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.
Complainant is the only stock trade center in Brazil as well as Latin America's largest stock exchange, accounting for nearly 70% of the region's trade volume. Complainant owns over 90 trademark applications and registrations in Brazil consisting of or containing the word “Bovespa”, including a number of registrations in class 36 in respect of financial services. In addition, the various trademark registrations and applications cover many goods and services in International Classes 16, 35, 38, 41 and 42. Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word BOVESPA in France, Hong Kong SAR of China, Japan, Republic of Korea, Taiwan, Province of China, United Kingdom of Great Britain and Northern Ireland, United States of America, Argentina, Paraguay, Uruguay, Chile, Spain, Portugal, Sweden, Mexico, Canada, Singapore and European Union.
Respondent registered the domain name at issue on May 6, 2002.
In its complaint, Complainant contends the following:
- The domain name is identical to trademarks and service marks in which Complainant has rights. The relevant part of the domain name in issue is clearly identical with the various trademarks, corporate name and domain names for the word “Bovespa” which are registered and owned by Complainant. Respondent has registered the domain name <www.bovespa.com> on May 06, 2002 whereas Complainant had registered the domain name <www.bovespa.com.br> almost seven years earlier, on November 29, 1995.
- Respondent has no rights or legitimate interests in respect of the domain name. The word “Bovespa” is an invented word, and as such, is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of those marks. There is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name <bovespa.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Moreover, there is no evidence that Respondent is or has been commonly known by the domain name, nor there is evidence that Respondent has acquired trademark or service mark rights to use the “Bovespa” expression. Accordingly, Respondent has no rights or legitimate interests in respect of the domain name in issue.
- The domain name was registered and is being used in bad faith. Respondent does not conduct any legitimate commercial or non-commercial business activity through the web site identified by the domain name. Given Complainant's numerous trademark registrations for the word “Bovespa” or consisting of the word “Bovespa”, and its wide reputation in the Brazilian financial market and worldwide, it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name, or that Respondent would have been unaware of this fact at the time of registration. These findings demonstrate that the domain name has been registered by Respondent in bad faith for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, owner of several trademarks and domain names using the word “Bovespa” previously to the registration of the domain name in issue, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name. Although the domain name resolves to a web site there is no evidence that the web site actually offers services, although it refers to financial services, products and using the formal language of the financial market which is the market in which Complainant offers its services. There is no positive action being undertaken by Respondent in relation to the domain name. However, the relevant issue is not whether Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith. The concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. It is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith. In this case and due to the fact that by the time of registration of the domain in issue an Complaint had already gained evidence in the financial market worldwide which would be impossible for Respondent not to know, added by the fact that Respondent does not have any apparent activity on the web site identified by the domain name, there is evidence of Respondent bad faith in registering and using the domain name.
Respondent did not reply to Complainant's contentions, and is in default.
UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:
(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.
According to a list of marks containing the word “Bovespa” submitted by Complainant, Complainant owns the service mark BOVESPA (and design) (Reg. No. 813878128, Reg. Date February 06, 1990), for International Class 36 (auxiliary services connected to financial activities; brokerage and distribution of securities). The Panel has visited the database of the Brazilian PTO at http://pesquisa.inpi.gov.br/MarcaPatente/servlet/MarcasServletController?action=detail&codProcesso=388632, and noticed that this mark is in force. Accordingly, Complainant has evidenced that it has rights in the BOVESPA mark.
Since the disputed domain name contains Complainant's mark the Panel finds that the domain name at issue is identical to Complainant's mark. Thus, the first element of the Policy is met.
Complainant contends that “Bovespa” is an invented word, and not one that traders would legitimately choose unless for seeking to create an impression of an association with Complainant. It also alleges that it has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of Complainant's marks, and that there is no evidence of Respondent's use of, or demonstrable preparations to use, the domain name <bovespa.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Complainant adds that there is no evidence that Respondent is commonly known by the domain name, or that Respondent has acquired trademark or service mark rights to use the Bovespa expression. Taken together, in absence of any evidence in favor of Respondent, these contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain name at issue.
Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied the Policy paragraph 4(a)(ii). See “WIPO Overview of WIPO Panel Views” at http://www.wipo.int/amc/en/domains/search/overview/index.html.
Respondent is in default, and has not provided any evidence in its own favor.
Accordingly, the Panel finds that the second element of the Policy is met.
Contrary to Complainant's allegation, there is no evidence on the record that Respondent registered the domain name in dispute primarily with the purpose of offering it for sale to Complainant or any other person, a circumstance of registration in bad faith pursuant to Policy paragraph 4(b)(i). However, given that the domain name is practically identical to Complainant's highly reputed mark for financial services, and that the website at the domain name contains a list of financial services similar to those offered by or related to Complainant, Respondent could not have ignored the existence of such mark at the time of registration. Further, Respondent does not offer the slightest explanation for having chosen precisely a domain name that univocally refers to Complainant and its activities as a stock market. The Panel concludes that Respondent registered the domain name in bad faith.
As to use of the domain name, on November 10, 2008, the Panel visited Respondent's website corresponding to the domain name, and noted that the website main page contains several links titled “Market Analysis”, “Investing Online”, “Stock Market”, “Investing”, “Stock Certificate”, “Bond”, “Stock Trading”, “Stock Investing”, “Stocks Bonds”, “Free Stock Market”, “Market Share”, “Online Brokerage”, etc. The Panel agrees with Complainant that such titles correspond to services provided by or related to a stock market such as Complainant's, and offered under its mark BOVESPA.
Since each of these links redirects Internet users, including those looking for Complainant or its mark BOVESPA, to commercial websites, Respondent is likely using such redirections to obtain profits, big or small, from click-through or pay-per-click systems. Respondent's silence in this proceeding cannot but confirm this impression of the Panel. The Panel concludes that Respondent, by using the domain name at issue, has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or of the products or services listed on his web site, which is a circumstance of bad faith registration and use of the domain name pursuant to Policy paragraph 4(b)(iv).
The Panel finds that the third element of the Policy is also met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bovespa.com> be transferred to Complainant.
Dated: November 10, 2008