The Complainant is No Zebra Network Ltda. of Curitiba, Paraná, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Baixaki.com, Inc. of Upton, Barbados, represented by Rome & Associates, A.P.C., United States of America.
The disputed domain name <baixaki.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2009. On August 11, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On August 11, 2009, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 17, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 17, 2009. The Center verified that the Complaint together with the amended 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 19, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 8, 2009. The Response was filed with the Center on September 8, 2009.
The Center appointed Brigitte Joppich, Alvaro Loureiro Oliveira and David H. Bernstein as panelists in this matter on October 1, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Pursuant to Rule 10(c), the Panel extended the date for decision to October 27, 2009.
The Complainant is a Brazilian company that operates a website at <baixaki.com.br>, at which the Complainant offers downloads of programs and information on the Internet and on technology issues. According to the Brazilian Institute of Public Opinion and Statistics, the website at “www.baixaki.com.br” is the largest technology site in Brazil; according to Google Analytic, 6 million home users and more than 20 million unique users accessed the website at “www.baixaki.com.br” in August 2008.
The Complainant owns a Brazilian trademark registration and two pending trademark applications for the BAIXAKI Mark in international class 42:
- Brazilian trademark no. 827710291 (word and device) with a priority of August 4, 2005, registered on October 30, 2007 (the “BAIXAKI Mark”),
- Community Trademark application no. 007468192 (word and device) with a priority of December 16, 2008, and
- United States trademark application no. 77631241 (word and device) with a priority of December 11, 2008.
The Complainant owns the domain name <baixaki.com.br>, which it first registered on August 2, 2000. The Complainant launched its website at that domain name on October 1, 2000.
The disputed domain name <baixaki.com> was first registered on September 3, 2001. It was transferred from the prior registrant, White & Case Ltd. (“White & Case”), to the current registrant, Baixaki.com, Inc., a company related to White & Case, on or shortly after August 11, 2009, apparently after White & Case's receipt of the Complaint but before the register lock was implemented.
On April 28, 2009, the Complainant contacted the prior registrant, White & Case, asking for a transfer of the disputed domain name. The prior registrant denied such request on May 7, 2009.
The Complainant contends that it has acquired a strong reputation with Internet users in Brazil and in other countries. Based on its extensive use of the BAIXAKI Mark, the Complainant claims substantial goodwill and brand recognition in the name BAIXAKI. The Complainant states that the word and trademark BAIXAKI are automatically considered as a reference to the Complainant's services.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case:
(1) The disputed domain name is both identical and confusingly similar to the BAIXAKI Mark because it illegally reproduces the Complainant's trademark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name because the Respondent and the prior registrant White & Case did not run any business under the name BAIXAKI, never used the Baixaki name to identify its products or services and, as far as the Complainant is aware, did not own any trademark application or registration for the word BAIXAKI. Further, the Complainant has never authorized the Respondent to use its BAIXAKI Mark, and the Respondent is not using the disputed domain name to offer bona fide goods or services (but rather is providing sponsored links in Portuguese for computer anti-virus programs, ringtones, games that can be downloaded, software, translation and other programs, thereby creating a likelihood of confusion among Internet users with the Complainant's services). The Respondent is thus not making any legitimate use of the disputed domain name, because it is attracting Internet users to its website and diverting them to third parties' products and services. The registration of the disputed domain name is also preventing the Complainant from registering such name and obtaining economical advantages from the use of the Complainant's BAIXAKI Mark on the Respondent's website.
(3) The disputed domain name was registered and is being used in bad faith. Among other things, the Respondent has engaged in cyberflight: The registrant of the disputed domain name until August 10, 2009, when the Complaint was submitted by email to the Center, was White & Case; upon learning of the filing of the Complaint, White & Case modified the WHOIS data reflecting the owner of the domain name and effectively transferred ownership to the current registrant Baixaki.com, Inc. Although the new owner has a different email address, the mail address, telephone and fax numbers, and IP address and location all remained unchanged. By modifying the former registrant's name to Baixaki.com, Inc., the Respondent is allegedly faking a business purpose. The Complainant notes that the current registrant appears not to have registered other domain names, while the prior registrant owns about 870 other domains and is clearly engaged in the business of registering and profiting from domain names containing third parties' trademarks. By using the website at the disputed domain name for sponsored links that advertise products and services similar to those offered by the Complainant, the Respondent is free-riding on the Complainant's goodwill and trademark. Given the reputation of the Complainant's business, it is difficult to believe that the Respondent did not have actual knowledge of the Complainant's activities and of the term “baixaki” when registering the disputed domain name. Accordingly, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site or location of a product or service on its website.
The Respondent claims that the term “baixaki,” is a contraction of the common Portuguese phrase “baixar aqui,” and as such is a slang term for “download here” in Portuguese. It is a generic expression indicating a source for downloadable material (rather than identifying the Complainant as the origin of such material) and widely used by individuals and businesses alike to refer to the act of downloading content from the offered source. As a result, the Complainant allegedly takes a descriptive term out of circulation by asserting a mark in a slang/colloquial term. The disputed domain name was registered seven-and-a-half years prior to the Complainant's assertion of any rights thereto, and has been used since its registration for a website advertising downloads.
The Respondent contends that none of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, mainly for the following reasons:
(1) The disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant enjoys rights. The Complainant mainly relies on its BAIXAKI Mark, a composite mark consisting of a graphic and the term “baixaki.” However, the term “baixaki” is generic and not independently protectable without the corresponding image. As the disputed domain name cannot incorporate the graphic part of the Complainant's composite mark, it does not illegally reproduce the BAIXAKI Mark, as the generic portion, “baixaki,” cannot be protected as a trademark under paragraph 4(a) of the Policy.
(2) The Respondent has a legitimate interest in the disputed domain name, which the prior registrant used in connection with a bona fide offering of services for over seven years prior to the Complainant's notice. The Respondent is engaged in the business of registering and reselling domain names, and makes good faith efforts to avoid registering domain names that are confusingly similar to marks held by others. Using a generic domain name to advertise relevant products offered by third parties is a legitimate commercial use of a domain name.
(3) The disputed domain name was not registered and is not being used in bad faith. The Complainant has not demonstrated the presence of any factors substantiating claims of bad faith, as it does not hold rights in the term “baixaki” alone (but only in a composite mark), did not establish a pattern of conduct by the Respondent preventing the Complainant from reflecting its mark in a corresponding domain name, and there is no evidence of registration of the disputed domain name for the purpose of disrupting the Complainant's business. The Complainant's notoriety post-dates the first registration of the disputed domain name, and the respective domain names of the Parties have co-existed for many years. In fact, the Complainant cannot meet its burden of proof regarding bad faith registration of a domain name which was first registered over four years prior to the Complainant's application of its (composite) BAIXAKI Mark. Moreover, the Respondent contends that the Complainant's cyberflight arguments are misleading. The modification of the registrant information of the disputed domain name was a business decision to transfer such name to a limited liability subsidiary created for its administration, and the Respondent did not attempt to transfer the disputed domain name to a different registrar. Finally, all evidence concerning the secondary meaning of the term “baixaki” submitted by the Complainant post-dates the registration of the disputed domain name by the former registrant.
The first point to be dealt with is the Complainant's allegation that the Respondent has engaged in a “cyberflight,” i.e., attempting to avoid or delay an imminent administrative proceeding by changing details of the WhoIs data of the disputed domain name after notice that a Complaint has been filed. Such an action would contravene paragraph 8(a) of the Policy, which prohibits a respondent from transferring a domain name registration to another during a pending administrative proceeding.
The disputed domain name was transferred from the prior registrant to the Respondent shortly after the Complainant served the Complaint on the prior registrant. The Respondent claims that the modification of the registrant information of the disputed domain name was a business decision to transfer the disputed domain name from the prior registrant to a limited liability subsidiary of the prior registrant created for administration of the <baixaki.com> domain name. Consequently, the new owner, Baixaki.com, Inc., acknowledges responsibility for the prior registration of the domain name and at the same time acts as Respondent in the present administrative proceedings brought under the Policy.
Given that the current registrant is a subsidiary of the former registrant, has acknowledged responsibility for the disputed domain name, and has agreed to act as the Respondent, the typical concerns attendant to cyberflight are not implicated. Nevertheless, the Panel notes that any transfer of a domain name is inappropriate during a pending proceeding, and as such, the prior registrant's modification of the WhoIs data was a violation of paragraph 8(a) of the Policy. In any event, under the circumstances of this case, and because the Panel does not need to rely on the prior registrant's conduct for purposes of resolving this Complaint, the Panel will treat Baixaki.com, Inc. as the sole Respondent in this case and will not consider the prior registrant, White & Case, as an additional respondent.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a 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.
As the Respondent correctly points out, in order to show a violation of paragraph 4(a)(1) of the Policy, the disputed domain name must be identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent argues that the Complainant does not have such rights because the word “baixaki” is not protectable as a trademark due to its generic nature. The Complainant, though, has submitted a copy of a Brazilian trademark registration, which notably contains no disclaimer indicating that the Trademark Office considered the word “baixaki” to be generic (i.e., stating that the owner cannot claim exclusive rights in a certain portion of that mark). The Brazilian trademark registration is thus prima facie evidence that “baixaki” is protectable as a trademark, separate and apart from the graphic elements of the registration. (The Complainant's trademark applications in the United States and OHIM, by comparison, do not provide any evidence of trademark validity because those applications have not yet been approved and have not matured into registrations.)
The Respondent nevertheless argues that “baixaki” should be treated by the Panel as being generic. In support, the Respondent has submitted examples of appearances of the word “baixaki” on the Internet and a copy of online dictionary entries showing the meaning of the Portuguese words “baixar” and “aqui.” Although a respondent might be able to overcome the presumption of validity that attached to a registered trademark if it submits compelling evidence that a registration was improvidently granted or a mark has become generic since its registration, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No., D2007-1141 (requiring “compelling evidence” that registration was improperly granted or likely to be cancelled), the evidence submitted by the Respondent does not come close to showing that “baixaki” is now a generic reference or a common phrase meaning “download here” in Portuguese. To the contrary, the Respondent's submission of dictionary entries for “baixar” and “aqui,” and its failure to submit any dictionary entry for “baixaki,” tends to support, rather than undermine, the Complainant's contention that “baixaki” is a trademark and not a dictionary word or a generic reference.
Having determined, on the limited record presented in this proceeding, that BAIXAKI appears to be a mark in which the Complainant has rights, the Panel must next assess whether the domain name is identical or confusingly similar to that trademark. The disputed domain name fully incorporates the word element of the Complainant's BAIXAKI Mark. The Respondent's argument that the disputed domain name is not identical or confusingly similar to the Complainant's BAIXAKI Mark because the domain name does not incorporate the design elements of Complaint's trademark is unavailing, as it is well established that the similarity between a trademark and a disputed domain name is not eliminated by the mere fact that the trademark includes additional graphical elements. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932. Furthermore, it is well established that the specific top level domain (here, “.com”) generally is not considered as a distinguishing element when evaluating the identity or confusing similarity between a complainant's trademark and a disputed domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374. With these principles in mind, it is clear that the dispute domain name is identical to the Complainant's trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's BAIXAKI Mark and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out the following three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although these examples are presented in terms of a showing that could be made by the Respondent, the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the consensus among panels is that a complainant need only show a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy, after which the burden of production shifts to the respondent to rebut complainant's prima facie case. At all times, though, the burden of proof remains on the complainant. mVisible Technologies, Inc., supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Here, the Complainant has made the necessary prima facie showing. In particular, the Complainant alleges that the Respondent is using the disputed domain name to divert, for commercial gain, Internet users to its website which displays sponsored links in Portuguese to products and services similar to those offered by the Complainant. Policy 4(c)(iii). In response, the Respondent claims a legitimate interest in the disputed domain name because “baixaki” is generic and merely descriptive of the bona fide goods and services offered on the Respondent's website at the disputed domain name.
The Panel accepts that the use of a domain name consisting of a dictionary term, when used for a website containing advertising related only to the generic meaning of that word, may in principle constitute a legitimate interest. See, e.g., Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445 (noting that “it may be legitimate for a respondent to register a domain name consisting of dictionary words (so long as they do not constitute a well known trademark) and to use the website to which the domain name resolves to provide content that is relevant to the common meaning of the dictionary words”); The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459; see also Asian World of Martial Arts Inc., supra (“It is true that, if the links on a landing page are genuinely based on the generic value of a domain name, that generally would be a fair use because there are no trademark rights implicated by the landing page.”). However, these principles do not apply when the value of the domain name and/or of the advertising displayed on the website to which it resolves is based on the trademark value of the domain name rather than its generic value. Thus, while Respondent might have a legitimate interest in using <baixaraqui.com> for a PPC page at which downloads are advertised, it cannot have a legitimate interest in using the disputed domain name <baixaki.com> for such advertising (which, the Panel notes, is in direct competition with the Complainant's website and services) because that use takes advantage of the trademark value of the BAIXAKI trademark. See, e.g., Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 (finding that respondent's PPC website premised on a trademark rather than a generic word does “not constitute a bona fide offering of goods or services . . . nor . . . a legitimate non-commercial or fair use”); Asian World of Martial Arts Inc., supra. (“[W]hen the links on the PPC landing page ‘are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting['].”). For these reasons, the Respondent's use of the disputed domain name cannot constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which the Policy states that “shall be [accepted by the Panel as] evidence of the registration and use of a domain name in bad faith” for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 trade mark 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 trade mark 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 its 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 its website or location.
The Complainant has demonstrated that the Respondent registered the disputed domain name in bad faith. As noted above, this Respondent registered the disputed domain name on or about August 11, 2009, by virtue of an acquisition from its parent company. It is well established that a transfer of a domain name to a third party amounts to a new registration under the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; see, e.g., Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782; PAA Laboratories GmbH, WIPO Case No. D2004-0338 supra. At the time of registration, the prior registrant had actual knowledge of the Complainant's first notice and the Complaint, and it is a fair inference to assume that the Respondent also knew of the Complainant and accordingly of the Complainant's Brazilian trademark registration. Moreover, the Complainant has provided evidence that its BAIXAKI Mark had acquired substantial goodwill and was widely known at the moment of the transfer of the disputed domain name. The Respondent's registration of the domain name for its continued use as a PPC parking page thus constitutes bad faith registration.
As to bad faith use, by fully incorporating the BAIXAKI Mark into the disputed domain name and by using the website at such domain name for sponsored links in Portuguese language linking to products and services similar to those offered by the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <baixaki.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
David H. Bernstein
Dated: October 26, 2009