WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CircuitCity.com Inc. v. Andersen Ferreira Braga, None
Case No. D2012-0055
1. The Parties
The Complainant is CircuitCity.com Inc. of Miami, Florida, United States of America, represented internally by Christian Fong, United States of America.
The Respondent is Andersen Ferreira Braga, None of Duque de Caxias, Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <circuitcitybrasil.com> is registered with Everyones Internet, Ltd. dba resellone.net.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2012. On January 13, 2012, the Center transmitted by email to Everyones Internet, Ltd. dba resellone.net a request for registrar verification in connection with the disputed domain name. On January 14, 2012, Everyones Internet, Ltd. dba resellone.net. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 19, 2012.
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 January 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on February 22, 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.
On February 24, 2012, the Panel issued the Administrative Panel Procedural Order No. 1 requesting documentary evidence in respect of a) alleged confusing similarity between the goods of the Complainant and those on the website of the Respondent at the address of the disputed domain name, b) copies of some email of Internet users to the website of the Respondent inquiring about its legitimacy and c) a copy of the letter sent by the Complainant to the Respondent advising the latter about its trademarks rights and their violation by the Respondent. The Complainant was given 4 working days to provide the documentation requested and the Respondent was given 4 working days to comment on the new evidence from the Complainant. On February 28, 2012 the Complainant provided a Reply with the evidence in the form of 6 additional exhibits (Exhibits 1 to 6 to the Reply). The Respondent did not provide any comments within the stipulated delay.
4. Factual Background
The Complainant is a global online retailer of computers, computer supplies, and electronics and is a subsidiary of Systemax Inc., a corporation listed on the New York Stock Exchange. The Complainant has been selling and delivering its products to customers all over the world including Brazil since 1949. It is the owner of five registered trademarks for CIRCUIT CITY. The first registration was obtained in 1979, by Wards Company, Inc., subsequent ones in 1985 by Circuit City Stores Inc., then in 1996 and 1998 by Circuit City Stores West Coast, Inc. and, in May 2010 by the Complainant (Annexes D to H to the Complaint ) (herein the “CIRCUIT CITY Trademarks”). All the previous registrations are now in effect in the name of the Complainant.1 Several of the CIRCUIT CITY Trademark registrations disclose May 1, 1977, as a date of first use and this being the earliest date of use disclosed in the evidence.
The said CIRCUIT CITY Trademarks are registered in association with various classes of goods and services namely in class 42 for mail order services for the sale of audio components, televisions, radios, recorders and the like, as well as in class 35 for online retail store services in the fields of consumer electronics, computers and numerous wares accessories, musical instruments, video games, recorders and the like.
The Complainant has not authorized or licensed the Respondent to use any of its CIRCUIT CITY Trademarks and there is no business contract between the Complainant and the Respondent.
The disputed domain name was registered on September 9, 2011.
The Complainant, on September 22, 2011, sent to the Respondent a cease and desist letter in which it informed the Respondent of its rights in the CIRCUIT CITY Trademarks and rights in the disputed domain name and requested the transfer thereof and also calling upon the Respondent to permanently cease and refrain from all future use of the trademarks SYSTEMAX, CIRCUIT CITY, CIRCUITCITY.COM and the disputed domain name <circuitcitybrasil.com>. The Respondent did not reply.
Upon comparing pages of the website of the Respondent and the products in respect of which the CIRCUIT CITY Trademarks are registered, one observes the presence of same or similar goods namely laptops and camcorders with a sale price for each item.
Furthermore pursuant to the Administrative Panel Procedural Order No. 1 and the request for evidence, an examination of Exhibit 3 to the Reply and the way in which the Respondent presents itself under the section “Quem Somos”, the wording used in this section of more than one page, on the website at the disputed domain name of the Respondent, is an exact duplication or reproduction, word for word, including telephone numbers and addresses, of the same section of the Complainant’s website under “About Us” in Exhibit 4.
Within the requested documentation, the Complainant has produced, as Exhibit 5 to the Reply to the Administrative Panel Procedural Order No. 1, several emails from Internet visitors which were questioning the authenticity of the party upon visiting the website of the Respondent, wondering whether they had initially reached the website of the Complainant and were inquiring if it was a reliable rather than a fraudulent website. One such message sent on October 12, 2011 under the subject “Web Site Problems” reads: “hey guys, I just find a eCommerce in Brazil try to pass like you guys’ the call themselves circuit city Brazil, but they website have you guys info’ please they a doing scam using your company name’ that is the link to the part where they using ur guys information, is in English […].”
In a second email, dated December 13, 2011, Juliana said: “My sister that lived in Brazil sent me this link. www.circuitcitybrazil.com/interna.php?cod=63696. I don’t think this is us, right? If not, they are using Systemax’s name.”
A third message was received on January 20, 2012, under the subject “Comments and Suggestions” and it reads: “Good afternoon, my name is Daniel and I wonder if you know about this site here in Brazil, if it is reliable and not a fraud. I ask this because, as it is here in Brazil, would it be easier for me to buy her products. Thank you, Daniel.”
5. Parties’ Contentions
The disputed domain name is confusingly similar to the CIRCUIT CITY Trademarks in which the Complainant has rights.
The Complainant represents that it has used the CIRCUIT CITY Trademarks for many years and that it owns several registrations of these trademarks in the United States as well as in many other countries in the world.
The Complainant further represents that the disputed domain name comprises its CIRCUIT CITY Trademarks to which a country designation has been added along with a top level suffix “.com” and that such additions do not take away the confusing similarity. See Dell Computer Corporation, Inc. v. MTO C.A. and Diabetes Education Long Life Case, WIPO Case No. D2002-0363; America Online, Inc. v. Asian On-Line This Domain for Sale, NAF Claim No. 94636 and Bloomberg L.P. v. Sein M.D., NAF Claim No. 96487.
According to the Complainant, it has spent million of dollars protecting its brand name over the Internet in the United States and in other countries and it has recovered thousands of domain names from domain name cybersquatters.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant states that the Respondent is not authorized or licensed to use the CIRCUIT CITY Trademarks and that there is no business relationship between the Complainant and the Respondent and according to the Complainant’s best knowledge, the Respondent does not own any trademark or other rights in the CIRCUIT CITY Trademark nor is the Respondent commonly known by the disputed domain name.
The Complainant further represents that the disputed domain name is currently used for commercial purposes to mislead and divert customers from the Complainant’s domain name <circuitcity.com> and to profit from the use and reknown of the CIRCUIT CITY Trademarks and brand names which has caused consumers to be confused or mislead into believing that the disputed domain name belongs to the Complainant.
The disputed domain name was registered and is being used in bad faith.
The Complainant claims that the disputed domain name was registered in bad faith by the Respondent with knowledge of the Complainant’s rights in its well known CIRCUIT CITY Trademarks and the obvious similarity between the Complainant <circuitcity.com> domain name and the disputed domain name.
The Complainant further claims that the confusing similarity of the disputed domain name which wholly incorporates the CIRCUIT CITY Trademarks is so obviously indicative of the Complainant’s products and services, as it appears from the similarity of products and presentation between the Complainant’s website and the Respondent’s use of the disputed domain name “inevitably lead to confusion of some kind”. See AT & T Corporation v. Fred Rice, WIPO Case No. D2000-1276.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established in its documentary evidence that it has rights in one of the five registrations for the CIRCUIT CITY Trademarks, namely the one identified in Annex H and that its predecessors had rights in the four other registrations (Annex D to G) and as noted herein, the Panel verified with the United States Patent and Trademark Office and confirmed that the Complainant is presently the owner of those four registrations pursuant to some assignments of rights from the predecessor registrants. It is therefore clear that the Complainant is the exclusive owner and user of the CIRCUIT CITY Trademarks in which it has rights.
The disputed domain name includes the CIRCUIT CITY Trademarks in its entirety to which the geographical country name “Brazil”2 has been added along with the domain name suffix “.com”. As it has been determined in earlier panel decisions cited by the Complainant, which this Panel adopts and applies herein, such an addition does not eliminate nor diminish the similarity of confusion between the disputed domain name and the CIRCUIT CITY Trademarks.
The Panel finds that the disputed domain is confusingly similar with the CIRCUIT CITY Trademarks in which the Complainant has rights.
The first criterion under paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant has stated that it has not authorized nor licensed the Respondent to use any of the CIRCUIT CITY Trademarks and that furthermore there is no contractual business relationship between the Complainant and the Respondent. It also contends that the Respondent does not own any trademarks or other rights in any of the CIRCUIT CITY Trademarks the registration and use of which predate the date of registration of the disputed domain name. The Complainant has thus established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
It is clear from the additional evidence submitted by the Complainant in reply to the Administrative Panel Procedural Order No. 1 that the Respondent is offering for sale the same products or similar to the Complainant’s and that thus the Respondent is using the disputed domain name for commercial purposes. It does so to mislead and divert Internet customers from the Complainant’s website to that of the Respondent, a confusion situation that has been brought to the attention of the Complainant by Internet users via email. Relevant emails directed to the Complainant were also brought in as evidence as an additional exhibit (exhibit 5) in reply to the Administrative Panel Procedural Order No. 1. The Respondent did not bring any evidence to rebut this prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion under paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
It should be noted that the circumstances of bad faith are not limited to the above.
The disputed domain name was registered more than 30 years after the first and continuous use and first registration of the CIRCUIT CITY Trademarks. According to the evidence, the Complainant is in business under its CIRCUIT CITY Trademarks in Brazil where the Respondent is located. Furthermore, as noted herein by the Panel and established in Exhibits 3 and 4 to the Reply submitted by the Complainant to the Panel Order, the Respondent was clearly aware of the Complainant activities and the latter’s website content. The Panel observes that the entire section “About Circuit City” of the Complainant’s “About Us” page is reproduced on the website to which the disputed domain name resolves in English under the heading “Quem Somos“. The Panel further observes that the logo on the upper left side of the website shown in Exhibit 2 of the Complainant which consist of the trademark CIRCUIT CITY written at a slightly angled position within a circle is exactly reproduced on the Respondent’s website shown in Exhibit 3 which shows the Respondent website logo with the sole difference of the addition of the term “brazil” under city and the trademark registration sign ® above the letter “y” in the word “city”.
On the basis of these facts and observations the Panel is convinced that the Respondent was aware of the existence of the CIRCUIT CITY Trademarks and logo of the Complainant and without authorization from the Complainant registered the disputed domain name. On this clear basis the Panel finds that said registration of the disputed domain name by the Respondent was done in bad faith.
The evidence adduced by the Complainant also shows a deliberate use of the Complainant’s CIRCUIT CITY Trademarks by the Respondent in order to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s CIRCUIT CITY Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website as per paragraph 4(b)(iv) of the Policy. This is clearly demonstrated by the email communications of Internet users in Brazil to the Complainant inquiring about the legitimate or fraudulent character of Respondent’s use of the disputed domain name and the website to which it resolves.
The Panel has a strong belief that other Internet users have most likely been confused by the Respondent’s use of the disputed domain name, which is strengthened given the identical content of the “Quem Somos” part of the Respondent’s website and the “About Us” section on the Complainant’s website.
The Panel finds that the disputed domain name has been used and is still used in bad faith by the Respondent and it is no surprise to this Panel that the Respondent did not reply to the cease and desist letter of September 22, 2011 of the Complainant nor to its Complaint and the current administrative proceedings.
The third criterion under paragraph 4(a) of the Policy has been met.
The Panel concludes that:
(a) the disputed domain name <circuitcitybrasil.com> is confusingly similar to the Complainant’s CIRCUIT CITY Trademark; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name <circuitcitybrasil.com>; and
(c) the disputed domain name <circuitcitybrasil.com> has been registered and is being used in bad faith.
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, <circuitcitybrasil.com>, be transferred to the Complainant.
J. Nelson Landry
Dated: March 7, 2012
1 Subsequent to the reception of the Reply and the additional evidence, exhibits 1 to 6 to the Reply from the Complainant as requested in the Administrative Panel Procedural Order No. 1, the Panel in reviewing all the evidence was surprised to note that only the latest registration of the CIRCUIT CITY Trademarks (Annex G) was registered with the name of the Complainant as owner. Instead of issuing another procedural order, the Panel, in order to avoid another delay, exceptionally opted to visit an official and reliable source, the website of the United States Patent and Trademark Office (USPTO) to verify on the Registry of Trademarks the identity of the current owner of the five registrations initially put in evidence by the Complainant. It was thus possible to ascertain that the five registrations corresponding to Annexes D to H, pursuant to assignments subsequently filed, are now all in the name of the Complainant.
2 The Panel notes that “Brazil” is written with an “s” instead of a “z” in the disputed domain name, “Brasil”.