The Complainants are Bombril Mercosul S.A. and Bombril S.A., São Bernardo do Campo, São Paulo, Brazil represented by Gusmão & Labrunie Advogados, Brazil.
The Respondents are Av. Madrid, 85 and ITnet Consulting Business SL, Barcelona, Spain.
The disputed Domain Name <bombril.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009. On March 20, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 20, 2009, 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 March 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on April 24, 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 Complainants belong to the Brazilian Group Bombril, which is, since 1948, specialized in the manufacturing, commercialization and distribution of a great number of home care products.
The Complainants are the owners of several trademark registrations in numerous countries consisting in the sign BOMBRIL, inter alia the Brazilian Trademark No 003340406 registered on November 14, 1956 in the class 8.10 and the Brazilian Trademark No 825086604 registered on March 25, 2008 in class 16.
The Complainants are also the owners of, inter alia, the Community Trademark registration BOM BRIL FÁCIL, No. 004875845, registered on February 16, 2007 in class 21, as well as of several registrations for BOM BRIL such as the Brazilian Trademark No 002914239 registered on April 16, 1963 in classes 3.10, the Community Trademark No 001856434 registered on January 29, 2007 in class 21 and the Spanish trademark No 1664563 registered on June 6, 1996 in class 21, where the Respondents are based.
The Complainants are furthermore the registrants of the Domain Name <bombril.com.br>, registered on June 28, 1996, and of a number of other Domain Names consisting in or including the sign “bombril”, inter alia <acceptbombril.com.br>, <prontobombril.com.br > and <tantobombril.com.br>.
The Respondents registered the Domain Name <bombril.com> on June 14, 1998.
In order to settle the issue amicably, on November 18, 2008, the Complainants sent a Cease and Desist letter to the Respondents, warning them on the non-authorized use of BOMBRIL's trademarks and on the infringement of the Complainants' intellectual property rights. The Respondents never replied.
The Complainants point out that Bombril is a leading Group in the production of home care products and steel wool for cleaning and that the Group makes significant investments in promotion and marketing related to its trademark BOMBRIL.
The Complainants contend that the Domain Name <bombril.com> is identical to trademarks and domain names in which Complainants have rights as it reproduces the well-known trademark BOMBRIL in its entirety.
The Complainants highlight that the captioned Domain Name is completely indistinguishable from the Complainants' registered trademarks and domain names, since the word “bombril” is identical in appearance, pronunciation and sound to the Complainants' trademark.
The Complainants underline that the Group Bombril has already acquired significant “fame and reputation” through the use of the sign BOMBRIL as a trade name and as a trademark, with trademark registrations, in Brazil and in other countries, since 1953. Therefore, according to the Complainants, the expression “bombril” has no other meaning or significance than identifying the Complainants' products.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainants state that the Respondents are not known by such Domain Name nor authorized by the Complainants or any of their associated companies to use the sign and registered trademark BOMBRIL, as well as any other trademarks belonging to the Complainants or any name confusingly similar thereto.
The Complainants emphasize that the Respondents do not have any registered trademark or registered service mark rights related to the Domain Name.
The Complainants also state that the Respondents are not making a legitimate non-commercial or fair use of the Domain Name, since the Domain Name is redirected to a website with sponsored links connected to various commercial activities, also related to competitors' activities in manufacturing of steel wool.
The Complainants conclude with reference to the issue of the rights or legitimate interest that there is no credible reason for the Respondents to choose the Domain Name <bombril.com>.
With reference to the circumstances evidencing bad faith the Complainants point out that the Respondents have registered several domain names, also corresponding to third parties' trademarks, and that the pattern of preventing trademark holders from reflecting their mark on the Internet is the evidence of bad faith use and registration pursuant to Policy 4(b)(ii).
The Complainants also emphasize that the Respondents must have been aware of the Complainants' famous products and their trademarks when deciding to register the Domain Name <bombril.com> and that they have taken unfair advantage of the Complainants' good reputation to attract more Internet users to their website.
The Respondents did not reply to the Complainant's contentions and are in default.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainants have provided evidence of ownership of a number of trademark registrations such as BOMBRIL.
The Complainants have provided evidence of ownership of, inter alia, the Brazilian Trademark No 003340406 registered on November 14, 1956 in classes 8.10 and other valid trademark registrations, including in the country of the Respondents.
The Panel finds that the Domain Name is therefore identical to the trademarks owned by the Complainants.
In comparing the Complainants' marks to the Domain Name with reference to “bombril” it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainants have proven that the Domain Name is identical to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainants must show that the Respondents have no rights or legitimate interests in respect of the Domain Name. The Respondents may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondents lack rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondents have failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainants. The Respondents are not licensees of the Complainants, nor have the Respondents otherwise obtained an authorization to use the Complainants' trademarks.
Furthermore, there is no indication before the Panel that the Respondents are commonly known by the Domain Name, have made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that they are making a legitimate, noncommercial or fair use of the Domain Name.
The Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click website mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites do not constitute a legitimate, noncommercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent's use of the Domain Name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent's website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed that respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
In light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that in light of the use of the trademark since 1953, the registration and use also in Spain, where the Respondents are based, and the amount of advertising and sales of Complainants' products worldwide, the Respondents were more likely than not well aware of the Complainants' trademark when they registered the Domain Name identical to the Complainants' trademark BOMBRIL.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
As mentioned in the paragraph above, the Panel notes that the Respondents have been using the Domain Name for a website in which were published, at the time of the filing of the Complaint, different sponsored links for competitors' products (i.a.. a link for Colgate-Palmolive products and a sponsored link for a company producing steel wool for cleaning).
In light of the contents of the web pages linked to the Domain Name internet users may well be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondents profit by earning pay per click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
Therefore the Panel finds that, by using the disputed Domain Name, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of their web site, according to paragraph 4 (b)(iv) of the Policy.
The Panel deems also paragraph 4(b)(ii) applicable in this case since the Respondents have registered the Domain Name in order to prevent the Complainants from using the mark and have clearly engaged in a pattern of such conduct since they appear to have registered other domain names incorporating registered trademarks.
The Panel concurs with the views expressed in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044 and Carte Blanche Greetings Limited v. metoyou, WIPO Case No. D2004-0946, where the panel stated that “it is clear that [the Respondent] is heavily involved in cybersquatting activities in relation to many domain names relating to well known names and trademarks. [Such] behavior corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.”
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same line is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent's website for commercial gain based on confusion with the Complainant's mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”
In view of the above, the Panel finds that the Domain Name was registered and is being used 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 <bombril.com>, be transferred to the Complainants.
Dated: May 8, 2009