WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anbima - Associação Brasileira das Entidades dos Mercados Financeiro e de Capitais v. Pedro Andrade Santos
Case No. D2010-1938
1. The Parties
The Complainant is Anbima - Associação Brasileira das Entidades dos Mercados Financeiro e de Capitais of Rio de Janeiro, Brazil, represented by Ricci Advogados Associados of Brazil.
The Respondent is Pedro Andrade Santos of Houston, United States of America, represented by Internet Lawyers USA, P.C. of United States of America.
2. The Domain Names and Registrar
The Domain Names <anbima.net> and <anbima.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2010. On November 11, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On November 11, 2010, 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 November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2010.
On December 14, 2010, the Respondent filed a late response by email to the Center copied to the attorneys of the Complainant.
The Center appointed Luca Barbero as the sole panelist in this matter on December 16, 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
The Complainant is ANBIMA, the Brazilian Association of Financial and Capital Markets which was constituted on October 21, 2009 as a result of the union of the two Brazilian Associations ANBID and ANDIMA. The Complainant is a certifying entity authorized by the Brazilian National Monetary Council and promotes the improvement of capital and financial market professionals, by certifying the professionals’ technical and ethical requirements in the relationship with clients and investors.
The Complainant represents commercial banks, multiple and investment banks, asset managements, brokers, securities dealers and investment advisers before competent national authorities, public powers and governmental bodies. Numerous national and international institutions are currently associated with the Complainant, such as HSBC Bank Brasil, Goldman Sachs, Banco Barclays, Banco de Tokyo·Mitsubishi, Banco Honda, Banco John Deere, Banco Morgan Stanley, Deutsche Bank, Abn Amro Real, Citibank, Banco de La Nacion Argentina, Banco de La Provincia de Buenos Aires, Banco de La Republica Oriental Del Uruguay, Banco J.P. Morgan, Banco Banif, Banco Santander and ltau Unibanco.
The Complainant filed several trademark applications before the Brazilian Institute of Industrial Property for ANBIMA, including the following: No. 830381163 (word mark) filed on September 17, 2009, in class 35; No. 830390723 (word mark), filed on September 23, 2009, in class 41; No. 830390715 (word mark), filed on September 23, 2009, in class 45, No. 830390731 (word mark), filed on September 23, 2009, in class 42. The Complainant also filed several Brazilian trademark applications for ANBIMA Word and Design on February 25, 2010 and other Brazilian trademark applications including the mark ANBIMA, such as ÍNDlCE DE MERCADO ANBIMA – IMA (word mark), IHFA - ÍNDlCE DE HEDGE FUNDS ANBIMA (word mark), IDkA - ÍNDlCE DE DURAÇÃO CONSTANTE ANBIMA (word mark), PCA - PROGRAMA DE CERTIFICAÇÃO ANBIMA (word mark), CPA - CERTIFICAÇÃO PROFISSIONAL ANBIMA (word mark), all filed on March 2010.
The Complainant is the registrant of several domain names identical to or containing the mark ANBIMA, including <anbima.com>, registered on September 23, 2009, <anbima.com.br>, <anbima.org.br>, <anbima.net.br>,<anbimaeducacao.com.br>, <certificacaoanbima.com.br> and <congressoanbima.com.br>.
The Respondent registered <anbima.net> on February 19, 2010 and <anbima.org> on April 19, 2010.
The Complainant informs the Panel that the Domain Name <anbima.net> was initially registered in the name of Mr. Ribeiro Silva, a Brazilian citizen resident and domiciled in Brazil. The Complainant addressed to the prior owner a cease and desist letter on March 11, 2010 requesting the transfer of the Domain Name. After having received such letter, Mr. Ribeiro Silva registered the Domain Name <anbima.org> and after ten days sent a letter via e-mail to the Complainant, on April 29, 2010, offering for sale the two Domain Names for the amount of BRR 80,000.00 (eighty thousand Brazilian Reais), equivalent to USD 48,000.00 (forty-eight thousand dollars). The Complainant brought a lawsuit against Mr. Ribeiro Silva before the State Justice of Sao Paulo, which is still pending at the 39th Civil Court of the Central Forum of the Circuit Court of Sao Paulo. The appointed judge issued a preliminary order favorable to the Complainant on June 18, 2010, ordering to cease any use of the Domain Names.
After Mr. Ribeiro Silva was summoned and notified of such judicial order, on July 2, 2010, the Domain Names were assigned to the Respondent. As highlighted by the Complainant, the pending lawsuit before the Brazilian Court is aimed at obtaining an indemnization from Mr. Ribeiro Silva and other defendants, while the Respondent in the present proceeding is not involved in the mentioned lawsuit.
5. Parties’ Contentions
The Complainant points out that the mark ANBIMA is a very famous mark in Brazil in the financial and capital market and that it is highly distinctive since the term “anbima” has no meaning in any language whatsoever. The Complainant has submitted several articles on ANBIMA activity published on Brazilian and International newspapers, such as Bloomberg BusinessWeek, Estadão, IG, O Globo, Reuters, Fox Business, UOL and Veja. Attached to the Complaint are also bulletin boards, informative papers, presentations and magazines edited by the Complainant describing the Complainant’s services and its Continued Certification Program.
The Complainant contends that that the Domain Names <anbima.net> and <anbima.org> are identical to the trademark and to domain names in which the Complainant has rights as they reproduce the trademark ANBIMA in its entirety.
With reference to rights or legitimate interests in respect of the Domain Names, the Complainant states that the Respondent has no rights in the ANBIMA trademark, denomination, and in corresponding domain names and that that the Respondent has not been in any way authorized to use the ANBIMA trademark. The Complainant emphasizes that the Respondent intends to profit from the good fame and prestige of the Complainant’s trademark and that the Respondent’s registration of the Domain Names can be qualified as cybersquatting activity.
The Complainant concludes that the Respondent has no rights or legitimate interests in the Domain Names.
With reference to the circumstances evidencing bad faith, the Complainant points out that both the prior owner and the Respondent in the present proceeding could not have ignored the Complainant’s rights over the trademark ANBIMA, since they appear to be both Brazilian, despite the fact that the Respondent is listed as being based in the United States. The Complainant points out that the fact that the Domain Names have been transferred to the Respondent after notification of the judicial preliminary order is a further evidence of the Respondent’s bad faith.
With reference to the use of the Domain Names, the Complainant states that the Respondent intends to lead the consumer public into confusion, making them believe that the ads, publicity, products or services exposed on the correspondent web sites are somehow related to the professional activities of the Complainant, thus leading them to error, doubts, confusion and inappropriate association.
The Respondent submitted its Response after the notification of the Respondent’s default. The admission of a late response falls within the general discretion of the Panel under paragraph 10(a) of the Rules to conduct the administrative proceeding in the manner it considers appropriate in accordance with the Policy and Rules. In order to ensure that the parties are treated equally and that each has a fair opportunity to present its case under paragraph 10(b) of the Rules, the Panel has decided to consider the Respondent's late response.
The Respondent states that the present case is not a clear case of cybersquatting. The Respondent also states that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent is trying to attract consumers who may have any interest in finding the Complainant’s organization.
The Respondent also points out that the Respondent in this proceeding has been the registrant of the Domain Names for a short period of time and that the Complainant has not proved the Respondent’s bad faith in the registration and in the use of the Domain Names.
6. Discussion and Findings
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, these 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 Names registered by the Respondent are 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 Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the trademark ANBIMA. As mentioned above, the Complainant has filed several Brazilian applications for the mark ANBIMA, including the following: No. 830381163 (word mark) filed on September 17, 2009, in class 35; No. 830390723 (word mark), filed on September 23, 2009, in class 41; No. 830390715 (word mark), filed on September 23, 2009, in class 45, No. 830390731 (word mark), filed on September 23, 2009, in class 42.
In comparing the Complainant’s marks to the Domain Names with reference to ANBIMA, 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 Complainant has proven that the Domain Names are identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Names 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 Names according to paragraph 4(a)(ii) 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 Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names 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; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the documents submitted, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Names and the Respondent has not provided in the Response any convincing evidence to the contrary.
The Panel finds that, under the circumstances, the use of the Domain Names merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Names 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.”
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
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 Names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 names; or
(ii) the holder has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, 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.
The Complainant has provided evidence that the Domain Names were transferred to the Respondent after the notification to the prior owner of the preliminary order issued by the Brazilian Court which forbade any use of the Domain Names. Evidence has also been provided that the Domain Names were registered by the prior owner in bad faith, also taking into account that the previous holder, who is a Brazilian individual, likely was aware of the existence of the mark ANBIMA when he registered <anbima.net> and he registered the Domain Name <anbima.org> after receiving the cease and desist letter from the Complainant, also requesting of the Complainant an amount well in excess of the out of pocket costs directly related to the Domain Names for the transfer of both Domain Names.
The situation in the case at hand is very similar to the one examined in Natura Cosméticos S/A, Indústria e Comércio de Cosméticos, Natura Ltda. v. Pedro Andrade Santos, WIPO Case No. D2010-1690 (<perfumenatura.com>) in which the disputed domain name was initially registered by Mr. Riberio and offered for sale to the trademark owner for an amount of R30,000 along with another domain name <perfumesnatura.com> offered for R25,000. The previous registrant subsequently transferred the domain name <perfumenatura.com> to Pedro Andrade Santos, who is the Respondent in the present proceeding.
Along the lines of the above-mentioned case and of Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406, and taking into account the pay-per-click use of the Domain Names related to the trademark value of ANBIMA, and the particular circumstances of this case, the Panel finds that the Domain Names were registered by the Respondent in bad faith. Moreover, in light of the identity between the Domain Names and the Complainant's mark and of the degree of fame of the Complainant's mark, it is difficult to believe that the Respondent was unaware of the Complainant's mark when he acquired the Domain Names.
The Panel notes that the Domain Names have been and currently are linked to web pages where Internet users can find a number of sponsored links to various third parties’ web sites. As a result, Internet users might be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites. Furthermore, in all likelihood, the Respondent is profiting 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).
In light of the above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web sites corresponding to the Domain Names, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web sites or of products or services advertised therein, according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the Domain Names were registered and are 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 Names <anbima.net> and <anbima.org> be transferred to the Complainant.
Dated: December 30, 2010