The Complainant is Webmotors S.A., of Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
The Respondent is Renato Guimaraes, of United States of America.
The disputed domain name <webmotors.mobi> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2008. On December 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 2, 2008, GoDaddy.com, 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2009.
The Center appointed David J.A. Cairns as the sole panelist in this matter on January 23, 2009. 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 Webmotors S.A., a company constituted under the laws of Brazil and involved in the automobile trade. The Complainant operates through web sites such as “www.webmotors.com.br”, registered by the Complainant on June 27, 1996.
The Complainant owns several WEBMOTORS trademarks in Brazil, such as the trademark WEBMOTORS filed on February 8, 2000 and granted on November 1, 2005 (registration number 821977717).
The Respondent registered the disputed domain name on October 31, 2006.
The Complainant sent an e-mail to the Respondent on May 21, 2008, in the Portuguese language requesting him to “immediately assign, the ownership of the ‘domain ‘www.webmotors.mobi' to the Notifying Company [Webmotors S.A.], therefore, refraining from using the registered trademark under discussion, informing us of your decision within a ten (10) day term, counted as of the receipt of this warning letter”. (English translation).
The Respondent replied in English on November 20, 2008 stating the following: “what are you talkin about? What you wanna know about my domain www.webmorts.mobi? This is my company name in the united states, and I have a web site that we'll be release in the next few months for this domain. [sic]”
The Complainant submitted a printout of the disputed domain name displaying the message “[t]his .MOBI domain is parked free, courtesy of GoDaddy.com” dated November 26, 2008. When the Panel tried to access the web page of the disputed domain name, it was no longer accessible.
The Complainant states that its WEBMOTORS trademark is well known in Brazil, and that its website is the largest Brazilian website in the automotive area.
The Complainant contends that it is evident that the disputed domain name is identical and confusingly similar to its WEBMOTORS trademark and domain names.
The Complainant contends that the Respondent lacks rights or legitimate interest in the disputed domain name since: (i) WEBMOTORS is not a generic or descriptive term, but a coined word created by the Complainant; (ii) the Respondent has no activity whatsoever under the disputed domain name; (iii) Webmotors does not appear in any activity related to the Respondent; (iv) there are no registrations or applications containing WEBMOTORS in the Brazilian Trademark Office or in the United States Patent and Trademark Office databases; (v) the Respondent never used the disputed domain name before any notice of this proceeding; (vi) the commercial interest of the Respondent is obvious; (vii) the Respondent knew or should have known of the existence of the Complainant's trademarks and domain names before registering the disputed domain name and, if he did not, then he did not fulfill his responsibility under the Policy and under the Domain Name Registration Agreement with GoDaddy; and (viii) there are indications that the Respondent is a Brazilian national.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith because: (i) the Complainant's trademark WEBMOTORS and its domain names are so widely used and known that it would be almost impossible for a Brazilian national not to have been aware of them at the time of registration; (ii) the Respondent can only be seeking an undue advantage either by attempting to sell the disputed domain name or by trying to divert the legitimate owner's clientele; (iii) the Respondent does not have any relationship with WEBMOTORS, and it is not part of his name, surname or nickname; (iv) all these facts analyzed together or separately lead to the conclusion that the bad faith of the Respondent is incontestable; (v) the incorporation of a well-known mark into a domain name, coupled with an inactive website associated to the domain name may be evidence of bad faith registration and use; (vi) it is impossible to imagine any future active use of the disputed domain name that would be legitimate; and (vii) bad faith use is indicated through the failure to develop the website.
The sole communication of the Respondent is set out in full above (under Factual Background).
The Panel is required 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 appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel accepts that the Complainant owns the WEBMOTORS trademark registrations referred to above.
In determining whether a disputed domain name is identical or confusingly similar to the Complainant's trademark, the relevant comparison involves the second-level portion of the domain name only (here, “webmotors”). A trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, “.mobi”) that is a functional element of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Sidestep, Inc. v. Anna Valdieri/Marco Ferro WIPO Case No. D2007-0212; Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-1431).
On this basis, the Panel finds that the disputed domain name is identical with the Complainant's WEBMOTORS trademark. Accordingly, the first element required by the Policy is satisfied.
While the overall burden of proof that the respondent lacks rights or legitimate interests in the disputed domain name rests with the complainant, panels have recognized that this can involve proving a negative. Therefore 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 (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”)).
The Complainant has argued that the Respondent has no activity under the disputed domain name and that the Respondent never used the disputed domain name before any notice of this proceeding. As stated above, the Complainant submitted a printout of the disputed domain name displaying the message “[t]his .MOBI domain is parked free, courtesy of GoDaddy.com” dated November 26, 2008. This web page is no longer accessible.
On November 20, 2008, before these proceedings were commenced, the Respondent stated that he intended to release a web page “in the next few months” (vid supra, Factual Background). The Panel notes that the disputed domain name was registered more than two years ago, on October 31, 2006 and accepts that the disputed domain name has not been used prior to the commencement of these proceedings. In these circumstances, the Panel concludes that the Respondent's declaration of intention is does not show “preparations to use” the disputed domain name, and in any event the Panel is satisfied, for the reasons set out below, that any intention to offer goods or services under this domain name is not bona fide. Further, no “legitimate noncommercial or fair use” is being made by the Respondent.
On the November 20, 2008 communication, the Respondent stated that the disputed domain name corresponded to his “company name” in the United States. There is no evidence to support this statement and the Complainant puts its veracity in doubt by referring to a printout of the Internet Yellow Pages for locating businesses online with the keyword “webmotors” that retrieved the result “[w]e could not find any matches for your criteria” in Bethel, Connecticut. The Complainant also submitted a printout of the Brazilian Trademark Office (Instituto Nacional da Propiedade Industrial, Consulta à Base de Marcas) and of the United States Patent and Trademark Office showing no registration or application by the Respondent for the keyword “webmotors”. Therefore, the Panel is satisfied that the Respondent, as an individual, business or other organization, has not been commonly known by the disputed domain name.
For the above reasons, the Panel concludes that the Complainant has satisfied its burden of proving, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name.
Therefore, the second element of the Policy is satisfied.
The Panel notes that the Respondent has not used the disputed domain name for any purpose.
According to the WIPO Overview “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa”.
The Respondent in his reply to the Complainant's communication did not deny knowledge of the Complainant's trademark or business. Rather he asserted a right to the disputed domain name based on an alleged corporate name and also indicated that he intended to establish a website at the disputed domain name. There was no attempt to address the Complainant's concerns, such as a proposal of a disclaimer or other assurances that the new website would not confuse Internet users searching for the Complainant's website. This was an uncooperative response that paid no regard to the Complainant's rights.
The Panel finds that the character of this response, together with the fact that the Respondent has been passively holding the disputed domain name for more than two years, demonstrate bad faith. In particular, the Respondent did not deny knowledge of the Complainant's rights, was indifferent to those rights (from which it can be inferred that he would be prepared to profit from confusion by Internet users), and alleged a company name that, according to the evidence submitted by the Complainant and accepted by the Panel, does not seem to correspond to any actual business.
The following circumstances are also corroborative of this finding of bad faith: (i) the Complainant's trademark WEBMOTORS is well-known in Brazil and there are indications (the Respondent's surname Guimaraes, and his rapid response to the Complainant's email in Portuguese) that he understands Portuguese, and is therefore more likely to be familiar with the Complainant's trademark, website and business; and (ii) the first result retrieved when introducing the keywords “webmotors” and “web motors” in Internet search engines is the web page of the Complainant <webmotors.com.br>, meaning that even the most basic search by the Respondent would have revealed the existence of the Complainant's website.
For the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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, <webmotors.mobi> be transferred to the Complainant.
David J.A. Cairns
Dated: February 6, 2009