WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casa Bahia Comercial Ltda. v. Unitedeurope Consulting / Casas Bahia
Case No. D2010-1660
1. The Parties
Complainant is Casa Bahia Comercial Ltda. of Brazil, represented by Newton Silveira, Wilson Silveira e Associados - Advogados, Brazil.
Respondent is Unitedeurope Consulting of Republic of Korea (“Unitedeurope”) / Casas Bahia of Brazil.
2. The Domain Name and Registrar
The disputed domain name <casasbahia.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2010. On October 1 and 5, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 7, 2010, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Disputed Domain Name to be Casas Bahia, which differed from Unitedeurope and its contact information as set forth in the Complaint. The Center sent an email communication to Complainant on October 7, 2010, providing the registrant and contact information for Casas Bahia as disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant replied to the Center’s email on October 8, 2010, indicating its intent not to amend its Complaint.
On October 7, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceeding on October 8, 2010. Neither Unitedeurope nor Casas Bahia responded to the Center’s Language of Proceeding notification. On October 14, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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 Unitedeurope and Casas Bahia of the Complaint, and the proceedings commenced on October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. Neither Unitedeurope nor Casas Bahia submitted a Response. Accordingly, the Center notified Unitedeurope’s and Casas Bahia’s default on November 4, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 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.
4. Factual Background
Complainant is the owner of Casas Bahia, a Brazilian retail store first established in 1966 and now having over 500 branch locations and operating in ten Brazilian states and the Federal District. Between 2003 and 2008, Casas Bahia was ranked as the 39th fastest growing company according to a study conducted by Deloitte Touche. Complainant is the owner of over 90 trademark registrations for the CASAS BAHIA mark and related marks, the earliest of which was filed with the Brazilian trademark office on March 11, 1999 and registered on October 21, 2003. In addition, Complainant is the registrant of the domain name <casasbahia.com.br> since August 24, 2000.
5. Parties’ Contentions
Complainant argues that: (i) the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights; (ii) Unitedeurope has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name is identical to Complainant’s CASAS BAHIA trademark, and thus, the Disputed Domain Name is confusingly similar to its trademark. Complainant also contends that its use and registration of the CASAS BAHIA mark predates Unitedeurope’s registration of the Disputed Domain Name.
Regarding the second element, Complainant contends that Unitedeurope has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that it has exclusive rights for the CASAS BAHIA mark and that it did not grant Unitedeurope any license nor authorization to use the said marks in a domain name. Complainant also contends that Unitedeurope is using the Disputed Domain Name for commercial gain and for the purpose of capitalizing on the fame of Complainant’s mark.
Regarding the third element, Complainant argues that Unitedeurope registered the Disputed Domain Name in bad faith because it had knowledge of Complainant’s CASAS BAHIA mark at the time it registered the Disputed Domain Name with the intention of selling, renting, or otherwise transferring it to Complainant for valuable consideration in excess of Unitedeurope’s out-of-pocket costs directly related to the Disputed Domain Name. Further, Complainant argues that Unitedeurope intended to use the Disputed Domain Name to attract, for commercial gain, Internet users to the website to which this domain name resolves, and ultimately to use Complainant’s trademark to mislead Internet users.
Neither Unitedeurope nor Casas Bahia replied to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, Complainant submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the fact that the Disputed Domain Name displays content that is in English and the fact that neither Unitedeurope nor Casas Bahia chose to participate or submit any reply to this proceeding either in English or Korean, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
As noted in Paragraph No. 3 above, the Center informed Complainant that Casas Bahia is the registrant of the Disputed Domain Name, as disclosed by the Registrar, and invited Complainant to amend its Complaint.
In response, Complainant informed the Center that the information on Casas Bahia was defective because the address and telephone number provided were not valid. Complainant also argued that the Registrar failed to comply with its obligation to provide the name and valid postal address of the registered domain name holder and the name, address, email address, and the telephone number of the technical contact for the registered name pursuant to Clause 3 of ICANN’s Registrar Accreditation Agreement. Based on the foregoing, Complainant advised the Center of its intent not to amend its Complaint.
The available information and evidence of record clearly shows that (1) Complainant confirmed that according to the WhoIs search conducted on August 16, 2010 Unitedeurope was the registrant of the Disputed Domain Name; (2) sometime following this date, the name and contact details of the registrant had changed to the information for Casas Bahia, including what appears to be a fictitious company name, address and telephone number; (3) the Center, in an effort to inform all known potential parties in interest, notified the Complaint not only to Unitedeurope, the named Respondent in the Complaint, but also to Casas Bahia, the registrant of the Disputed Domain Name as disclosed by the Registrar; (4) the Complaint could not be delivered to Casas Bahia using the postal address and telephone number provided by the Registrar; and (5) no Response was filed by neither Unitedeurope nor Casas Bahia.
In view of these facts, as well as the absence of information to the contrary, it is the decision of this Panel that the change of the registrant information constitutes a form of “cyberflight” designed to frustrate third-party attempts to challenge the validity of the ownership rights to the Disputed Domain Name and that it amounts to bad faith. Accordingly, for purposes of this decision, the Panel treats both Unitedeurope and Casas Bahia as one, and will therefore use the term “Respondent” to refer to either or both.
6.3 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a 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 Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in the registered CASAS BAHIA trademark. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant’s CASAS BAHIA mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, it is clear that the Disputed Domain Name is composed entirely of Complainant’s CASAS BAHIA mark. Additionally, the Panel notes that it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identity or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its CASAS BAHIA trademark in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to sponsor links is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of the Disputed Domain Name, but is using the domain name to attract Internet users to Respondent’s website and then providing links to other sites, some of which have little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or legitimate interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant has argued that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant. Complainant attempts to support the claim through conjecture, but the record is void of any definitive supporting evidence. Notwithstanding, the Panel finds that Respondent is presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore accepts that Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Further, Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant’s websites to its own website and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.
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 <casasbahia.com> be transferred to Complainant.
Andrew J. Park
Dated: December 1, 2010