WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barcelona Comercio Varejista e Atacadista SA v. Terra Serve Domain Administrator
Case No. D2011-2205
1. The Parties
The Complainant is Barcelona Comercio Varejista e Atacadista SA of São Paulo, Brazil represented by Ricci Advogados Associados, Brazil.
The Respondent is Terra Serve, Domain Administrator of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <assai.com> is registered with Rebel.com Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2011. On December 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2011, the Registrar 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 December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2012.
The Center appointed Angela Fox as the sole panelist in this matter on January 18, 2012. 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 operates a chain of wholesale and retail stores in Brazil under the name ASSAI. It has been trading under this name in Brazil for over 35 years, having first used it in 1974. Currently, the Complainant operates more than 50 stores in Brazil under the ASSAI branding.
The word “assai” is a distinctive word in relation to retail and wholesale services and the Complainant is the proprietor of numerous Brazilian trademark registrations and applications for ASSAI and marks incorporating it. Details of some of these were annexed to the Complaint, the most relevant of which are Brazilian trademark registration nos. 800102177, 800102193 and 800102207 for ASSAI, all filed on April 25, 1980, and Brazilian registration no. 820136735 for ASSAI, filed on July 21, 1997, all of which predate the filing of the disputed domain name.
The Complainant also has an online presence at its website, “www.assaiatacadista.com.br”. The word “atacadista” means “wholesaler” in Portuguese.
The disputed domain name was registered on December 1, 1998. Screen shots of the website linked to the disputed domain name were annexed to the Complaint, showing use in relation to what appears to be a pay-per-click landing site hosting links to commercial websites of third parties operating in the field of supermarkets, hypermarkets and food wholesale in Brazil, including links to websites operated by competitors of the Complainant. There were also links entitled “Supermercado Assai” and “Assai” which may have linked to websites of the Complainant, but that cannot be confirmed because the point was not addressed in the Complaint and all the links shown on the annexed screenshots have now been removed from the Respondent’s website and replaced with a variety of generic third-party links, mostly in Portuguese.
The Complainant sent a demand letter to the Respondent in July 2011, seeking the transfer of the disputed domain name. Reminders were sent, but no reply was received. This action was brought on December 8, 2011.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to its registered ASSAI trademark, which it claims is not only a registered trademark in Brazil, but is also well-known there within the meaning of Article 6bis of the Paris Convention.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name, and has only adopted it for use in order to promote the businesses of the Complainant’s competitors and to create thereby a likelihood of confusion with the Complainant and its ASSAI store chain.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complaint argues that by its registration and use of the disputed domain name, the Respondent has sought to take advantage of the fame of the Complainant’s ASSAI trademark in order to attract visitors to a website offering links to websites of the Complainant’s competitors. The Complainant contends, moreover, that the Respondent is no stranger to UDRP proceedings, having been found to have registered and used other domain names incorporating third-party trademarks in bad faith (the Complainant referred, in particular, to the domain names <atlasdesign.com>, <disctronics.com> and <janecorkin.com>).
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it owns registered trademark rights in Brazil in the word mark ASSAI.
The disputed domain name consists of the word ASSAI and the non-distinctive domain name suffix “.com”.
The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name, nor has the Respondent made any effort to prove that it has any. The Complainant has not authorised the Respondent to use the disputed domain name, and there is no evidence that the Respondent has been commonly known by a name corresponding to it.
The print-outs annexed to the Complaint show that the Respondent has used the disputed domain name in respect of a website displaying links to commercial websites, including to websites of competitors of the Complainant. This appears to be a standard pay-per-click landing site from which the Respondent is likely to have been deriving click-through income.
The disputed domain name consists essentially of the distinctive word ASSAI, which appears to have no relevant descriptive meaning in Portuguese, and which the Complainant has protected as a registered trademark and has used in Brazil for over 35 years in the wholesale and retail business. The use of the disputed domain name to host links to competitors of the Complainant shows that its attractiveness as an address for a pay-per-click landing page is based on the inclusion of the Complainant’s distinctive ASSAI trademark. The Respondent’s use of the disputed domain name to host pay-per-click links to the Complainants’ competitors in Brazil shows, moreover, that the Respondent has sought to gain financially from the confusing similarity of the disputed domain name with the ASSAI trademark. Such activities do not, in the Panel’s view, amount to bona fide commercial use (see, inter alia, ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649, “linking to competitive third-party websites shows that Respondent is well aware of Complainant as well as of its products and activities, and, [that] instead of making a bona fide use of the domain name, [the Respondent] rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. See also mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141, “If the links on a given landing page [...] are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally […] constitute abusive cybersquatting”. See, similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; and Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-0353.
The disputed domain name is inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could realistically argue, that it has been making a legitimate noncommercial or fair use given the presence on the linked website of pay-per-click links to the Complainant’s competitors.
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of respondents (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not attempted to refute the Complainant’s assertions.
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that it has none.
C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
The disputed domain name was registered in 1998 and the Complainant does not address why it only appears to have taken action against it in July 2011, when the demand letter referred to in the Complaint was sent. There is no evidence as to when the disputed domain name was first used, nor when the Complainant first learned about its existence or use. Nor has the Complainant provided evidence to show that its ASSAI trademark was well-known in Brazil, or at least likely to have been known to the Respondent in 1998, when the disputed domain name was registered. Given that the disputed domain name was registered some 14 years ago, this Panel is of the view that these points should have been addressed in the Complaint.
Having said that, the Complainant’s evidence, uncontested by the Respondent, is that it had been using the ASSAI trademark in Brazil since 1974 in relation to a chain of wholesale and retail stores, and that the ASSAI trademark had therefore been in use for nearly 25 years when the disputed domain name was registered. By that time, the ASSAI word had also been protected by the Complainant as a registered trademark in Brazil, as noted above. The disputed domain name has, moreover, been used to host what appear to be pay-per-click links to commercial websites of the Complainant’s competitors in Brazil, as well as including links entitled “Assai” and “Supermercado Assai”, which indicates an awareness of the Complainant’s business on the Respondent’s part. In the Panel’s view, all of these factors make it more likely than not that the Respondent registered the disputed domain name in, and most likely prompted by, the knowledge of the Complainant’s ASSAI store chain, and with the intention to gain commercially by hosting pay-per-click links whose success depended on the ability of the disputed domain name to attract Internet users seeking information on the Complainant’s ASSAI store chain.
The Respondent made no effort to refute the Complainant’s allegations in this regard. In the light of the findings above, the Panel concludes that the disputed domain name was registered and has been used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <assai.com>, be transferred to the Complainant.
Dated: February 15, 2012