The Complainants are Iguatemi Empresa de Shopping Centers S.A., Shopping Centers Reunidos Do Brasil Ltda., Condominio Shopping Center Iguatemi São Paulo of São Paulo, Brazil.
The Respondent is Isac Efraim of Florida, United States of America.
The Domain Name <shoppingiguatemi.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2009. On October 12, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name and, in absence of a reply from the registrar, a reminder was sent on October 19, 2009. On October 19, 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Response was filed with the Center on November 2, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on November 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.
Pursuant to paragraph 10 and 12 of the Rules, the Panel issued a Panel Order on December 7, 2009 requesting the Parties to provide further statements, explanations and any relevant evidence as to specific statements respectively in the Complaint and in the Response. The Complainants were thereby requested to provide the Panel with any additional evidence of the use of the Domain Name in the past as collected by the Complainants for the preparation of the Complaint; the Respondent was requested to provide explanations on the statements submitted in the Response with reference to the use of the Domain Name before the filing of the Complaint and to the Internet-related activities of the Respondent which had emerged through a routine preliminary verification conducted by the Panel while finalizing the draft decision. Both Parties were given 5 days to submit the documents and statements requested and additional 5 days to reply to the other Party's contentions. The date of decision was therefore postponed until December 22, 2009.
On December 8, 2009, the Respondent submitted a Response to the Panel Order, which was forwarded by the Center to the Complainant and to the Panel on the same day. On December 11, 2009 the Complainants submitted their Response to the Panel Order providing printouts of the web site “www.iguatemi.com”, which was mistakenly confused with the web site corresponding to the Domain Name. On the same day, the Respondent sent to the Center an additional communication indicating that the printouts provided by the Complainants were not of the web site corresponding to the Domain Name. On December 14, 2009 the Complainant submitted a supplemental communication indicating that wrong annexes had been attached to their previous reply and providing printouts of the web site “www.shoppinguatemi.com”, evidencing how it was used in the past.
The Complainants are Iguatemi Empresa De shopping Centers S.A., Shopping Centers Reunidos do Brasil Ltda. and Condominio Shopping Center Iguatemi São Paulo, established in São Paulo, Brazil. The three companies belong to the Brazilian Group Jereissati and represent the shopping centers of this economic group, which is among the 500 biggest companies of Latin America.
The Complainants are the owners of several trademarks registrations consisting of the mark SHOPPING CENTER IGUATEMI, such as the Brazilian Trademark Registration n. 811037533 registered on October 23, 1984 in the Brazilian class 11.10 (corresponding to the International Class 16); the Brazilian Trademark Registration n. 811037584 registered on September 20, 1988, in Brazilian classes 40.10, 15 and 20; and the Brazilian Trademark Registration n. 812288807 registered on August 19, 2003 in International Class 35.
The Complainants are also the owners of numerous Trademark Registrations for IGUATEMI, including the Brazilian Trademark Registration n. 811037576 registered on October 13, 1987, in Brazilian classes 40.10, 15 and 20 and the Brazilian Registration n. 822214300 filed on May 5, 2000, in International Class 35. The Complainant has also provided evidence of ownership of Trademark Registrations for IGUATEMI in Argentina and in Chile and of the Brazilian Trademark Registrations for IGUATEMI GIFT CARD, IGUATEMI.COM and IGUATEMI.COM.BR.
The Complainants are furthermore the registrants of several domain names consisting of or including the mark IGUATEMI such as <iguatemi.com.br>, registered on April 30, 1996, <shopping-iguatemi.com.br> registered on July 2, 1999;
<iguatemi-shopping.com.br> registered on July 2, 1999.
The Respondent registered the Domain Name <shoppingiguatemi.com> on March 14, 2000.
The Complainants point out that, at the time Shopping Iguatemi São Paulo was inaugurated in the centre of São Paulo in 1966, the concept of shopping centres was new in Brazil and Shopping Iguatemi rapidly became “a benchmark and a postcard of the biggest city of South America”.
The Complainants underline that the shopping centre hosts the most renowned national and international boutiques and is one of the most prestigious and valuable Brazilian brands according to several researches, having therefore developed substantial goodwill in South America and in many other countries around the world.
The Complainants reply to the Respondent's contentions about the absence of distinctiveness of the mark IGUATEMI (which has Indian origins and corresponds to a “Tupi-Guarani Indian word for thick, grassy river”, as indicated in the Response of the Respondent) stating - in their response to the Panel Order - that, in light of its use for almost four decades and of the considerable investments in promotion and marketing of their trademark, the mark IGUATEMI, has acquired a secondary meaning and is “internationally recognized as the name of the most famous shopping center business in Brazil”.
The Complainants contend that Domain Name <shoppingiguatemi.com> is confusingly similar to trademarks and domain names in which Complainants have rights as it contains the word IGUATEMI and it reproduces the name of the Complainants' major business. The Complainants highlight that an average Internet user is not likely to distinguish <shoppingiguatemi.com> and <iguatemi.com.br>, especially considering that the Complainants have already acquired significant fame and reputation in the Brazilian territory and abroad using such name and trademark.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainants state that the Respondent does not have any rights or legitimate interests in the Domain Name, since the Respondent is not known by such Domain Name and is not authorized by the Complainants or any of their associated companies to use the registered trademark SHOPPING IGUATEMI, nor any other trademarks belonging to the Complainants or any name confusingly similar thereto.
The Complainants also state that the Respondent has no trademark rights in respect of the Domain Name or any corresponding name and that therefore “there is no credible reason for the Respondents to choose the Domain Name <shoppingiguatemi.com>, especially because IGUATEMI is not a common name”.
The Complainants conclude with reference to the issue of the rights or legitimate interests that the Respondent has no rights or legitimate interests in the Domain Name.
With reference to the circumstances evidencing bad faith, the Complainants indicate that, in view of the fame and reputation of the Complainants' trademark, the amount of advertising and sales of the Complainant's services worldwide and, in particular, in the United States of America (where the Respondent is apparently based), the Respondent could not have possibly ignored the existence of the trademark registration.
The Complainants emphasize that the Respondent has not been using or prepared to use the Domain Name with bona fide offering of goods or services, since it has been used, since its registration in 2000, to redirect Internet users to commercial websites which have been frequently changed by the Respondent, including a web site dedicated to online poker games and a web site publishing banners and sponsored links generating revenues for the Respondent. The Complainants also inform the Panel that, at the time of the filing of the Complaint, the Domain Name was redirected to a web page displaying electronic games and that, in an ultimate attempt to legitimize its actions, as from the date of reception of the Complaint the Respondent pointed the Domain Name to the website of Prefeitura Municipal Iguatemi, this circumstance confirming, according to the Complainants, the Respondent's bad faith.
The Complainants also state that, few days after the notification of the Complaint, they had been informally contacted by the father of the Respondent, a Brazilian citizen who, in order to settle the matter, offered to sell the disputed Domain Name to the Complainants. The Complainants underline that they asked such person to present a written proposal, but no written communication was addressed to their attention.
The Respondent points out that the Complainants do not have any exclusive rights in the term “shopping iguatemi” since the trademark registrations owned by the Complainants and attached to the Complaint consist of the marks SHOPPING CENTER IGUATEMI, IGUATEMI and IGUATEMI GIFT CARD. Furthermore, the Respondent contends that the term “iguatemi” does not have a sufficient degree of distinctiveness, since it is “a common name” derived from Tupi-Guarani Indian language meaning “thick, grassy river” and is also the name of three Brazilian cities. The Respondent also highlights that IGUATEMI is registered as a trademark in Brazil for different products of other companies, including cigarettes, foods and heaters.
In light of the above, according to the Respondent, the Complainants do not have rights in the disputed Domain Name.
With reference to rights or legitimate interests in respect of the Domain Name, the Respondent states that the Domain Name was registered “with the sole intent of marketing Brazilian Native Handcrafts online (…) Due to health issues (...) which led to financial hardship, Respondent was forced to postpone his plans for the development of his online business. After a long and hard recovery, (...) Respondent had to dedicate his time and efforts to his sandwich business (…) Respondent has always retained his dream of owning an internet business and has tried to make a financial recovery so he can continue with his plans”.
With reference to the circumstances evidencing bad faith, the Respondent indicates that it“has never used the domain name www.shoppingiguatemi.com in bad faith” and that it has “never derived any benefit from the use of said domain name in almost ten years”. The Respondent also states that, in light of its health issues, the Domain Name was not redirected to any active web site for several years “during which Respondent never used it to re-direct users to any business related to the Complainants' business”. The Respondent adds that the Domain Name has never been offered for sale and that its intent is to use the Domain Name to open an Internet business. The Respondent also underlines that the Domain Name was recently redirected to a web page offering free online games for children and that, as a sign of good faith, it has redirected the Domain Name to the web site of the city of Iguatemi in the State of Mato Grosso do Sul.
Pursuant to the Panel's requests in the Panel Order, in which the Respondent was requested i) to further comment on its statements about the use of the Domain Name starting from the registration, since a preliminary verification conducted by the Panel on the web pages available at “www.archive.org”, highlighted that the Domain Name had been apparently also been used in the past in connection with poker games online and a web site with Brazilian flags and in the Portuguese language; and ii) to provide explanations of the Internet related activities in which the Respondent was found to be engaged, according to a simple verification conducted by the Panel, through the web site “www.bonzao.com”, the Respondent stated that, after its back surgery, he started to entertain himself by creating web sites, which now are meant mainly for the members of his family, and that the Domain Name had also been redirected to a poker site since poker had been one of his hobbies in the past. The Respondent also explains that the web site corresponding to the Domain Name was in the past years in the Portuguese language because it is his native language and he started to create web sites to show them to his friends in Brazil.
According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” 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 several Brazilian trademark registrations for IGUATEMI and SHOPPING CENTER IGUATEMI. The Complainants are also the owners of trademark registrations for IGUATEMI in Argentina and in Chile.
With reference to the Respondent's contentions on the validity and distinctiveness of the registered trademark IGUATEMI, the Panel finds that, for the purposes of paragraph 4(a)(i) of the Policy, it is sufficient that the Complainant provides appropriate documentation of valid intellectual property rights in any jurisdiction and in relation to any product or service. See along these lines, amongst others, TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216, concerning the domain names <yachtrader.com> and <yachtrader.net>, where it was stated “[w]hile this Administrative Panel accepts that the Respondent may have merit in the argument that the said trademark is descriptive and that there are other similar trademarks and that the trademark may not be registrable in certain jurisdictions, these are questions outside the scope of this Administrative Proceedings and it concludes that the Complainant has satisfied the first part of the test”.
In light of the above, the Panel finds that the Domain Name is confusingly similar to the trademarks in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy, since it includes the trademark IGUATEMI in its entirety with the addition of the word SHOPPING, which is i) the relevant part of the Complainants' registered trademark SHOPPING CENTER IGUATEMI and ii) a term referred to the Complainants' activity, therefore increasing the risk of confusion among Internet users.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent 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 previous UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof to the Respondent. If the Respondent fails to rebut the Complainant's prima facie showing, and 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 Complainant is 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).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name.
In the Response it is stated that the Domain Name was registered “with the sole intent of marketing Brazilian Native Handcrafts online” and that “Due to health issues (...) which led to financial hardship, Respondent was forced to postpone his plans for the development of his online business”.
Preliminary verifications conducted by the Panel and subsequent documents provided by the Complainants in their supplemental reply to the Panel Order have shown that, as indicated in the factual section, the Domain Name has been redirected since its registration in 2000 to different web sites. In particular, the Domain Name was pointing to the web site “www.bonzao.com” of the Respondent, which was in the past in the Portuguese language and displayed banners and sponsored links; the Domain Name was also used in connection with a web site dedicated to online poker games. In light of the above, the Panel finds that the Respondent has not made a noncommercial or fair use of the Domain Name.
Moreover, the Panel finds that the Respondent has not submitted relevant evidence supporting its statements that the Domain Name was registered and was meant to be used in connection with the above-mentioned online business project of the Respondent. The Respondent's conduct of changing the redirection of the Domain Name several times since its registration in 2000, and in particular redirecting it to websites displaying contents not related at all to handcrafts business online, supports instead the finding that the Respondent has not made, in several years, preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services. Additionally, the Panel finds no evidence in the present record to indicate that the Respondent has made any legitimate noncommercial or fair use of the Domain Name.
Thus on balance the Panel finds that the Respondent has 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 web site 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 web site or location or of a product or service on the holder's web site or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the Complainant's use of the trademarks IGUATEMI and SHOPPING CENTER IGUATEMI since 1966, the amount of advertising of Complainants' activities as a shopping Center both in South America and in the USA (where the Respondent is apparently based), and considering the Brazilian origins of the Respondent disclosed in the response to the Panel Order, the Respondent was more likely than not aware of the Complainants' trademarks.
The Panel shares the view of a number of panel findings regarding “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, see 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 “[i]t 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”.
With reference to the use of the Domain Name in bad faith, the Panel finds that in view of the contents of the web pages linked to the Domain Name, with specific reference to the redirection to the web site “www.bonzao.com” of the Respondent and to a web site hosting online poker games, Internet users might have been misled as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and that the Respondent is likely to profit from this confusion pursuant to paragraph 4(b)(iv) of the Policy. Along these lines 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, and Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286.
In view of the above, on balance, 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 <shoppingiguatemi.com> be transferred to the Complainants.
Dated: December 22, 2009