The Complainant is Crediare S/A of Rio Grande do Sul, Brazil, represented by Martinelli Advocacia Empresarial, Brazil.
The Respondent is Ramon Oliveira of Rio Grande do Sul, Brazil.
The disputed domain name <crediare.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2010. On May 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 5, 2010, GoDaddy.com, 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 May 5, 2010 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 May 10, 2010. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Response was filed with the Center on June 1, 2010.
The Center appointed Luis Larramendi as the sole panelist in this matter on June 11, 2010. 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 facts that are most relevant to this proceeding are as follows:
- The domain name <crediare.com> was registered on March 8, 2008.
- The Complainant, Credifar, changed its corporate name to Crediare S/A. on November 27, 2008, and filed a trademark application for CREDIARE at the National Industrial Property Institute of Brazil on January 6, 2009.
- On accessing the website identified under the domain name <crediare.com>, it is relevant to note that none of the links, mostly relating to software products, are active. It is stated at the center of the page that the website is under construction.
In its brief of complaint the Complainant contends that:
- It has been active in the credit market, financing and investments sector in Brazil for over six years, and changed its corporate name from Credifar to Crediare S/A on November 27, 2008.
- On January 6, 2009, the Complainant filed a trademark application for CREDIARE at the National Industrial Property Institute of Brazil. This application was published in the Institute's Official Industrial Property Bulletin on March 3, 2009.
- The domain name <crediare.com> is identical to the trademark application in which it has rights.
- The Respondent acquired the domain name <crediare.com> from a website specializing in the sale of domain names with a view to securing an easy profit, having grasped the importance of the trademark in the local market.
- A party that acquires a domain name knowing that it cannot be used (given the existence of the corresponding trademark filed at the National Industrial Property Institute of Brazil) is clearly acting in bad faith.
On the basis thereof, the Complainant requests that the disputed domain name be transferred to Crediare S/A.
In his Response to the Complainant's contentions, the Respondent states that:
- The disputed domain name was registered in March 2008, before the Complainant changed its corporate name to Crediare A/S.
- The disputed domain name is used to promote the services offered by the Respondent, and that the adoption of the name “Crediare” was not opportunistic, but a name created for one of his products, bearing in mind that, according to the Respondent, a Google search run prior to the registration of said domain name did not disclose any companies using the trademark CREDIARE in Brazil or anywhere else.
Although not expressly stated in his Response, it is to be understood that on the basis of said allegations the Respondent requests that he be permitted to maintain the ownership of the disputed domain name.
The Panel will now proceed to consider whether or not the three requirements of paragraph 4(a) of the UDRP have been met.
First of all the Panel should clarify that in relation to this first requirement the fact that the trademark application in which the Complainant claims to have rights was filed after the date of registration of the domain name <crediare.com> is not relevant, since the Policy simply requires that the domain name be identical or similar to a trademark or service mark in which the Complainant has rights at the time of the filing of the Complaint.
The Complainant has a pending trademark application for CREDIARE at the National Industry Property Institute of Brazil. The Complainant has not provided much evidence of the reputation of its unregistered trademark. However, on balance, the Panel finds that the Complainant has relevant unregistered trademark rights for purposes of the UDRP.
In terms of the similarity of the trademark rights in question and the disputed domain name, there is no doubt that CREDIARE and <crediare.com> are identical. The presence of the “.com” suffix is of course irrelevant to this comparison, since it simply identifies the top-level domain. The irrelevance of the suffix when comparing domain names and trademarks in disputes of this nature has been stressed in numerous decisions issued by the Center.
Consequently, the Panel considers that the Complainant has duly proven that the first requirement of paragraph 4(a) of the UDRP is fulfilled.
After having examined the cursory allegations submitted by the parties, the Panel wishes to state that none of the Respondent's allegations have been fully evidenced and that, as a result, none of the circumstances attesting to rights and legitimate interests in the domain name set out in paragraph 4(c) of the Policy have been attested to. In other words, the Respondent has provided no documentary proof whatsoever that:
- use, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services had been made prior to receiving any notice of the dispute.
- he had been commonly known by the domain name, even if he had acquired no trademark or service mark rights.
- he had been 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.
However, given that the third requirement of paragraph 4(a) of the UDRP has not been fulfilled, there is no need to consider the second of those requirements.
There are a number of facts that are clearly relevant to determining whether or not the Respondent has registered the disputed domain name in bad faith, namely:
- the disputed domain name was registered in March 2008.
- the Complainant did not change its corporate name, incorporating the term “Crediare”, until November of that same year.
- the Complainant filed the application for the trademark on which the Complaint is based in January 2009.
It is also relevant to state that the Complaint simply alleges that the domain name <crediare.com> was acquired with a view to obtaining an “easy profit”, since the disputed domain name was purchased from a website specializing in the sale of domain names and that the Respondent only acquired it because he was already aware of the importance of the trademark in the local market. However, the Complainant does not clearly set out the grounds for such an allegation, nor does it provide any proof that this was how the Respondent had in fact proceeded.
Consequently, it is difficult to conclude that the disputed domain name was registered with this intention, that is, on the basis of prior knowledge of the value of CREDIARE as a trademark, given that the registration of the domain name took place several months before the Complainant's change of corporate name (when its relationship with “Crediare” can first be attested to) and the filing of the trademark application.
Similarly, the Complainant's allegation that the disputed domain name was acquired via the website GoDaddy.com, Inc. instead of being registered via the service that said entity offers is also rather unclear. The Complainant may have intended to allege that the Respondent had acquired this domain name having learned of the Complainant's change of corporate name and filing of a corresponding trademark application. However, no documentation has been submitted to prove that this was the sequence of events and that the Respondent did indeed acquire the disputed domain name for the reasons given by the Complainant.
The fact is that the disputed domain name was registered on March 8, 2008, prior to any of the proof submitted to attest to the Complainant's ownership of earlier rights in CREDIARE, so there is no reason to infer bad faith on the part of the Respondent at the time of registration of the disputed domain name.
It should be briefly stated that the Complaint contains no evidence whatsoever that the Respondent:
- acquired the domain name for the purpose of selling it to the Complainant, or to any of its competitors, for an amount exceeding the amount disbursed in the registration thereof. In fact the Respondent categorically denies that he has any intention of selling the domain name in his Response.
- registered the domain name <crediare.com> with the sole purpose of preventing the legitimate owner of the earlier rights from reflecting said rights in a corresponding domain name or that, if this occurred, it was a genuine intention of the Respondent.
- registered the domain name for the purpose of intentionally disrupting the business of a competitor since no evidence was provided that the parties can be considered competitors within the same area of trade.
- the contested domain name was registered by the Respondent in an attempt to attract, for commercial gain, Internet users to <crediare.com> by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the corresponding website or location or of a product or service on the website or location.
Not only has no evidence been submitted to attest to the presence of any of the above circumstances, the Complainant has also failed to submit proof of the existence of the CREDIARE mark at the time of the registration of the disputed domain name, or that the Respondent's intention was to take unfair advantage of that any future reputation in that mark, notwithstanding the fact that the most relevant fact is that the domain name was registered several months before the Complainant changed its corporate name to Crediare S/A and filed its application for the CREDIARE mark.
In the circumstances the Panel has no choice but to find that the third requirement of paragraph 4(a) of the UDRP has not been fulfilled in this case.
For all of the foregoing reasons, the Complaint is denied.
Dated: June 25, 2010