The Complainant is Vicunha Textil S.A., of Fortaleza, Brazil, represented by Kicker & Co Ltd., Switzerland.
The Respondent is J. Almeida, of Porto, Portugal.
The disputed domain name <vicunha.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2008. On September 16, 2008, the Center transmitted by email to eNom Inc., a request for registrar verification in connection with the disputed domain name. On September 16, 2008, eNom Inc., 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”), 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 the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2008.
The Center appointed The Honorable Neil Anthony Brown QC as the sole panelist in this matter on October 14, 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.
The Complainant is a Brazilian company operating in the field of textile manufacturing.
The Complainant is the registered owner of a series of Brazilian and international trademarks incorporating the word VICUNHA, including Registered Trademark No. 002420520, registered with the Institutor National ad Proprieties Industrial of Brazil on October 4, 1968 for VICUNHA (with design) (“the VICUNHA trademark”).
On December 12, 1996, the Complainant registered the domain name <vicunha.com.br> which resolves to a website that is used by the Complainant to promote its products and activities.
The Respondent registered the disputed domain name <vicunha.com> on April 18, 2002. The domain name resolves to an active website consisting of links promoting textiles, clothing and related products including products described as “vicunha textil”.
The Complainant alleges that the disputed domain name <vicunha.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4(a) of the Policy, the domain name is identical to the Complainant's registered trademark, the Respondent has no rights or legitimate interests in the domain name, and the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered VICUNHA trademark to which reference has already been made. It then says that it is self-evident that the domain name <vicunha.com> is identical to the VICUNHA mark as it incorporates the trademark without any change to its spelling.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show that the Respondent is not connected with a company or trademark incorporating the word “Vicunha” and that the probability is that the Respondent registered the disputed domain name to divert Internet users who are looking for the Complainant and its textile products to other websites promoting competing goods.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent's deceptive conduct shows bad faith registration and use and in particular comes within paragraph 4(b)(iv) of the Policy, for it must be inferred from all of the facts and circumstances that the Respondent intended to create confusion in the public mind and among the Complainant's customers as to whether or not the domain name led to the Complainant's website and was being used to promote the Complainant's products, which it was not.
Moreover, the Complainant contends, the conclusion that the domain name was registered and has been used in bad faith can also be drawn from the fact that the domain name is identical to the Complainant's own domain name registered in the Brazilian country code and the fact that the disputed domain name originally resolved to an Internet gambling site.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel finds that the domain name <vicunha.com> is identical to the VICUNHA trademark. That is so because the domain name consist of the totality of the trademark without any changes or additions.
It is true that the VICUNHA trademark includes a design as well as the word “Vicunha”, but it is clear that the purpose of the trademark is to promote the word itself, which is also the name of the Complainant and the name under which it makes and sells its products. Moreover, the evidence shows that other trademarks of the Complainant consist solely of the word VICUNHA.
It is also now well established that if it is found, as in this case, that a domain name is identical to a trademark, that finding is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
As the Complainant clearly has rights in the VICUNHA trademark as its registered owner, the Panel finds that the domain name is identical to the trademark and that the Complainant has accordingly established the first of the three elements that it must prove.
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that he or she has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that he or she had until October 9, 2008 to send in a Response, that the Respondent would be in default if the Response were not received by that date and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <vicunha.com>. That prima facie case is made out from the following considerations.
The Respondent chose for the domain name, without the Complainant's authorization, the Complainant's prominent trademark VICUNHA which had been used by the Complainant since 1968 in its business as a textile manufacturer in the Brazilian and worldwide market. Moreover, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name “Vicunha”. In addition, the facts show that it is more probable than not that the Respondent took note of and used opportunistically the fact that the Complainant had registered the Brazilian domain name <vicunha.com.br>, but not <vicunha.com>. Having registered the disputed domain name, the Respondent then linked it to an Internet gambling site and subsequently to businesses other than the Complainant providing textiles and other goods, in direct competition to the Complainant, including a link described as “vicunha textil.”
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line 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 site or location.”
The Panel finds that the Complainant has shown that the Respondent registered and used the domain name in bad faith and that in particular the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) of the Policy.
The reasons why the Complainant's case has been made out are as follows.
First, by registering a domain name in the same name as the Complainant's prominent trademark and without any legitimate reason for doing so, it is more probable than not that the Respondent's intention in registering it was to create confusion with the VICUNHA trademark and also the Complainant's name and domain name.
Secondly, the Respondent has undoubtedly been attempting to attract Internet users to the website “www.vicunha.com” within the meaning of paragraph 4(b)(iv) of the Policy, for the domain name has been used and is currently being used for an active website.
Thirdly, the confusion likely to be created is confusion with the VICUNHA trademark about the affiliation of the textile products being promoted on the Respondent's website and the websites to which it is linked, in one case specifically describing them as “vicunha textil” and as to whether those products are the Complainant's products or in some way associated with it. The Panel has been able to verify this matter itself by visiting the website “www.vicunha.com”, where a large range of textile products of suppliers other than the Complainant are currently being displayed. Examining the website, it is apparent that there will be confusion in the mind of the visitor as to whether the textile products being promoted are those of the Complainant or endorsed by it.
Clearly, in those circumstances, consumers who are using the disputed domain name would have arrived at the website because they were seeking specific products named Vicunha, the company producing them, also named Vicunha or products produced under the VICUNHA trademark. When the websites promote goods of the same genre as Vicunha, described in one case as “vicunha textil”, consumers are entitled to believe that the products are genuine VICUNHA products, when in fact they are not.
There is, therefore, clear scope for confusion as to whether the goods and services being promoted on the websites are associated with the VICUNHA trademark and hence with the Complainant.
The Panel finds that these circumstances create confusion with the Complainant's trademark as to the sponsorship, affiliation and endorsement of the Respondent's sites and the products and services on them and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The website also promotes goods and services other than textile products, ranging from online shopping stores to credit cards and telephone services. Again, it is more probable than not that Internet users would be confused as to whether those goods and services are endorsed by or affiliated with the Complainant.
Finally, it also appears from the evidence that the Respondent has used the Complainant's trademark in its domain name to promote an online gambling service. The Complainant alleges that the disputed domain name was linked to the Internet address “www.888casino.com”. By using the Wayback Machine at “www.archive.org”, the Panel has been able to verify for itself that at least from September 4, 2004 until February 10, 2005, the domain name resolved to “www.888casino.com”, which was actively promoting gambling services.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000-1100; MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank, F.S.B. v. Jim Kato, FA 190366 (Nat. Arbitration Forum). In this regard, the comments of the panelist in Identigene, Inc., supra are apposite:
“Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc v. Cyber Network LLP, WIPO Case No. D2000-0977.”
Accordingly, the Complainant has made out the third of the three elements that it must establish.
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 <vicunha.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: October 28, 2008