World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multiplan Empreendimentos Imobiliarios S.A. and Renasce Rede Nacional de Shopping Centers LTDA v. Marcelo Marcelino / c/o BARRASHOPPING.COM

Case No. D2012-1239

1. The Parties

The Complainants are Multiplan Empreendimentos Imobiliarios S.A. and Renasce Rede Nacional de Shopping Centers LTDA of Rio de Janeiro, Brazil, represented by Silveiro Advogados, Brazil.

The Respondent is Marcelo Marcelino of Coconut Creek, Florida, United States of America / c/o BARRASHOPPING.COM, of Vancouver, Washington, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <barrashopping.com> is registered with Dotster, Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2012, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 3, 2012.

On June 20, 21, 22, 25, 26 and 28, 2012, and on July 3, 2012, the Respondent transmitted pre-commencement email communications to the Center. On June 22 and 27, 2012, the Complainant transmitted email communications to the Center.

On July 4, 2012, the Center sent a request for clarification to the Registrar, noting that, according to the public WhoIs database, the disputed domain name is registered with the Registrar “Domain.com, LLC” and the Registrant is “c/o BARRASHOPPING.COM P.O. Box [8----] Vancouver, WA 98682 US”. The Registrar replied, on July 5, 2012, stating: “The domain is registered by Domain.com for Dotster (Domain.com being a legal entity of Dotster). The registrant has WHOIS Privacy service and so both “Marcelo Marcelino” and “c/o BARRASHOPPING.COM” are accurate but Mr. Marcelino is the registrant on record”.

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 July 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2012. An informal Response was filed with the Center on July 6, 2012. On July 9, 11, 17, 20, and 25, 2012, the Respondent transmitted email communications to the Center.

On July 12, 2012, the Complainant filed a Supplemental Filing with the center. On July 28, 2012, the Respondent transmitted an email communication to the Center.

The Center appointed Luca Barbero as the sole panelist in this matter on August 6, 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 August 21, 2012, the Center notified to the parties that the deadline for the submission of the Decision by the Panel to the Center had been extended until August 27, 2012.

4. Factual Background

The first Complainant Multiplan Empreendimentos Imobiliarios S.A. (hereafter referred to as “Multiplan”) is one of the main companies in the shopping center industry in Latin America. The second Complainant, Renasce Rede Nacional de Shopping Centers LTDA (hereafter referred to as “Renasce”) belongs to the same group of Multiplan. Together, the group of companies owns 14 units of shopping centers, located in Brazil and abroad, including a shopping center in Portugal. The Complainants also operate a real estate enterprise located on Ocean Drive Avenue in Miami.

The Complainants are the owners of registered trademarks comprising BARRASHOPPING in Brazil, including the following:

No. 826919111 for logo, filed on September 23, 2004, in class 35 (registered in the name of Renasce);

No. 200033255 for CENTRO EMPRESARIAL BARRASHOPPING, filed on November 3, 1997, in class 36 (registered in the name of Renasce);

No. 819437840 for logo, filed on August 29, 1996, in class 35 (registered in the name of Renasce);

No. 830317694 for CENTRO DE CONVENÇÕES BARRASHOPPING, filed on June 23, 2009, in class 36 (registered in the name of Multiplan);

No. 830317848 for CENTRO DE EVENTOS BARRASHOPPING, filed on June 23, 2009, in class 35; (registered in the name of Multiplan);

No. 829577769 for BARRASHOPPINGSUL, filed on February 12, 2008, in class 35 (registered in the name of Multiplan);

No. 830317767 for CONDOMÍNIO BARRASHOPPINGSUL, filed on June 23, 2009, in class 35 (registered in the name of Multiplan);

No. 830317821 for CENTRO DE EVENTOS BARRASHOPPINGSUL, filed on June 23, 2009, in class 35 (registered in the name of Multiplan);

No. 830317724 for CENTRO DE CONVENÇÕES BARRASHOPPINGSUL, filed on June 23, 2009, in class 36 (registered in the name of Multiplan);

The Complainants operate their official web site at “www.barrashopping.com.br”. The domain name <barrashopping.com.br> was registered on April 10, 1996.

The disputed domain name <barrashopping.com> was registered on January 26, 2004 and is pointed, at the time of the drafting of the decision, to a web site offering for sale watches and mobile phones.

5. Parties’ Contentions

A. Complainant

The Complainants inform the Panel that their group of enterprises operates more than 3,800 stores in over 590,419 thousand square meters of gross leasable (GLA), reaching approximately 159 million consumers per year. With an experience spanning 37 years and a net profit of USD 298.2 million in 2011, the Complainants also operate in the residential and commercial real estate segment, investing in projects in line with the multi-use concept: enterprises that combine office buildings, residential towers, entertainment centers and hotels, right next door to shopping centers.

The first shopping center developed by the Complainants was opened to the public in 1979. In 1981, the Complainants launched a major shopping and entertainment compound – which is also the largest shopping center in Latin America – in Rio de Janeiro, named BARRASHOPPING.

The Complainants emphasize that, during the last decades, BARRASHOPPING has become well known in the field of shopping centers, having acquired “tremendous distinctiveness and notoriety in Brazil”. The Complainants opened several shopping centers and enterprises all over the country under the trademark BARRASHOPPING, including, in 2001, the “Centro empresarial BarraShopping” – an enterprise with 11 buildings over an area of 67 thousand square meters – and, in 2008, “BarraShoppingsul” - the largest shopping center in the South region of Brazil – with over 250 stores in a gross commercial area of 68,407 square meters.

The Complainants were awarded several prizes in recognition of their excellence also in the construction, management and operation of shopping centers and are committed to social causes, such as education, culture and environment.

The Complainants point out that the reputation of the trademark BARRASHOPPING is also highlighted by the results displayed for “barrashopping” on search engines such as Google, which returns over 307,000 items, including the Complainants’ official website “www.barrashopping.com.br” on the top of the first page and the links of the first three pages, at least, all related to the Complainants’ business, except for one shown in the second page of results, i.e., the disputed domain name <barrashopping.com>.

The Complainants further underline that the presence of <barrashopping.com> among the thirty top results is indicative of the audience that the website has acquired, as a result of the confusion with the Complainants’ official website by their customers.

On May 11, 2012, the Complainants sent a cease and desist letter to the Respondent. No response was received, but the Respondent temporarily suspended the website previously available at “www.barrashopping.com”.

The Complainants contend that the disputed domain name <barrashopping.com> reproduces the Complainants’ well-known and registered trademark BARRASHOPPING and is confusingly similar to several of Complainants’ trademark registrations comprising BARRASHOPPING. The Complainants also highlight that they have prior rights to BARRASHOPPING since the mark was massively used in Brazil since 1981, several years before the registration of the disputed domain name, dating back to 2004.

The Complainants explain that the word “Barra” derives from the name of a famous neighborhood of Rio de Janeiro (“Barra da Tijuca”), where the Complainants’ first enterprise named “BarraShopping” was established, and highlight that the combination of the terms “Barra” and “shopping” in the trademark BARRASHOPPING is original and distinctive.

The Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not affiliated with the Complainants and the Complainants have not licensed or otherwise permitted the use of any of their trademarks by the Respondent. The Complainants also contend that the Respondent is not commonly known as “Barrashopping”, that there is no evidence that he has any trademark registration or application corresponding to it and that, pursuant to their searches on the board of trade of Florida, it was not possible to trace any registration for the company Barrashopping.com, USA Inc.

The Complainants further state that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name was used in the past to promote pornographic content and for a pay-per-click landing page with several links directly related to the Complainants’ business and, just before the receipt of the Complainants’ cease and desist letter – after which the Respondent suspended the website temporarily – it was being used for commercial gain as an e-commerce website developed in order to misleadingly divert the Complainants’ customers and promote the Respondent’s business taking a ride on the Complainants’ renown in the market.

With reference to circumstances evidencing bad faith, the Complainants point out that the Respondent could not ignore their trademark at the time he registered the disputed domain name, since he is a Brazilian citizen and used to live in the neighborhood were the Complainants’ mall BarraShopping is established (as per information on the Respondent collected by the Complainants through various websites and documented to the Panel in the attachments to the Complaint), the website to which the disputed domain name resolves is in Portuguese, displayed sponsored links related to the Complainants in the early past and is used as an e-commerce website nowadays.

As additional evidence showing the Respondent’s knowledge of the Complainants’ trademark rights over BARRASHOPPING, the Complainants point out that the Respondent sent an email to the Complainants on December 28, 2011, where he stated that he owned the disputed domain name and, since he was living in the United States and was transferring his activities and the name of his company in the United States, he would have put the disputed domain name for sale. In said communication, the Respondent invited the Complainants to contact him should they have been interested in acquiring the disputed domain name.

The Complainants verified that the disputed domain name was pointed, in early February 2012, to a website which was used to promote pornography, as reported by one of their employees in an email attached to the Complaint. A few weeks later, the disputed domain name was pointed to a pay-per-click landing page with several links directly related to the Complainants’ business, such as “shopping tips”, “shopping offers”, “loja shopping” (“shopping store”, in English). There were also links to “barra shopping” and “boliche barra shopping” (“barra shopping bowling”, in English), relating to an entertainment service present only at “BarraShopping” malls and, thus, directly related to the Complainants’ business. While drafting the Complaint, the Complainants verified that the disputed domain name was pointed to the website currently online, where car DVD players, watches, cell phones and iPads are supposedly commercialized. Such website is oriented to Brazilian customers, since the language used is Portuguese and telephone contacts in Brazil are displayed.

The Complainants emphasize that the content of the website is in direct competition with the Complainant’s activities and was developed in order to divert the Complainants’ customers, mainly in Brazil. A link on the web site also directed users to a Facebook page showing the “very recent establishment of a ‘company’ Barrashopping.com. USA Inc. and the launching of the e-commerce website <barrashopping.com>, which dates no later than March 1st, 2012 […] – at least 31 years after the opening of the BARRASHOPPING mall by the Complainants (!)”.

As additional circumstances evidencing bad faith, the Complainants state that the Respondent also registered other domain names consisting of or comprising trademarks of third parties, such as <redetv.com>, which encompasses the mark REDE TV of one of the major Brazilian telecommunication companies and is offered for sale by the Respondent, and <oicelular.com>, comprising the mark OI, owned by another telecommunication company in Brazil. The Complainants also highlight that the famous Brazilian football player Neymar Jr. was targeted by the Respondent, since he registered the domain names <njr11.com> and <njr11.com.br> and made an offer of selling the domain names on the sportsman’s official profile on Facebook. The Complainants thus conclude that the Respondent has also engaged in a pattern of registering domain names in order to prevent the legitimate owners from reflecting their trademarks in the respective domain names.

The Complainant also states that, by using the Complainants’ trademark in his contact details, the Respondent is clearly tarnishing the Complainants’ reputation and image and is attempting to attract users, for commercial gain, to his or third party websites by creating the appearance of sponsorship and/or endorsement by the Complainants. Furthermore, the registration of the disputed domain name for the purpose of selling, renting, or otherwise transferring it to the Complainants or to their competitors also constitutes evidence of bad faith.

B. Respondent

In response to the Complainant, the Respondent sent the Center several email communications, in which he contests the Complainants’ allegations as to the Respondent’s lack of rights or legitimate interests in the disputed domain name, indicating that he registered <barrashopping.com> since it is identical to his company “Barrashopping.com, Inc.”, legally established in the United States. The Respondent has submitted evidence showing that a company named “Barrashopping.com, Inc.” was actually constituted. The filing date indicated in the documents submitted by the Respondent and made available on the online database of the Florida Department of State is April 12, 2011.

The Respondent also states that he was aware of similar cases in which decisions were issued in favor of a company that owned a contested domain name identical to its name. The Respondent also indicates that his company made many investments in relation to the disputed domain name.

In one of his emails, the Respondent points out that he did not originally register the disputed domain name but rather acquired it since the disputed domain name was offered for sale. As to the Complainants’ assertions on the results originated by a search on Google search engine, the Respondent contends that, if the search had been conducted from the United States, the results would have been different.

With reference to the Complainants’ allegations that the disputed domain name was used in connection with pornographic content, the Respondent asserts that such content was a result of his web site having been hacked.

As to the current use of the disputed domain name, the Respondent states that his company is reselling products worldwide though the website “www.barrashopping.com” and that he intends to improve it by creating a global website translated in over 10 languages.

The Respondent also states that the fact that the Complainants did not reply to the Respondent’s offer for sale of the disputed domain name shows that they had no interest in it.

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 and 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 Complainants must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainants have rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants have provided evidence of ownership of several trademark registrations in Brazil for BARRASHOPPING in combination with other generic words or design elements, including CENTRO EMPRESARIAL BARRASHOPPING (word mark), CENTRO DE EVENTOS BARRASHOPPING (word mark), BARRASHOPPINGSUL (word mark), CENTRO DE CONVENÇÕES BARRASHOPPING (word mark) and RETAIL CLUB BARRASHOPPING (figurative mark). The Complainants also rely on unregistered trademark rights on BARRASHOPPING.

The Panel is satisfied that, as a result of the long and extensive use of the mark BARRASHOPPING in connection with the Complainants’ shopping centers since 1981, documented by the media-recognition materials attached to the Complaint, the Complainants own unregistered rights in the trademark BARRASHOPPING, which enjoys a well-known status in Brazil.

In light of the above, the Panel finds that the Complainants have proven that the disputed domain name is both confusingly similar to the above-mentioned registered trademarks and identical to the unregistered trademark BARRASHOPPING, in which the Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name 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 Complainants. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name 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 prior UDRP decisions, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are 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. 852581).

In the case at hand, the Panel finds the Complainants have made a prima facie case and the Respondent has failed to raise convincing circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, his rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants’ trademarks.

The Panel also finds that the Respondent Marcelo Marcelino has not shown that he or his company are commonly known by the disputed domain name. The Respondent has, indeed, submitted documents showing the existence of a company named “Barrashopping.com, Inc.”, incorporated under the laws of Florida and of which the Respondent is Director. From the evidence on records, the Articles of Incorporation were filed before the Florida Department of State, Division of Incorporation, on April 12, 2011. However, evidence of the registration of a company is in itself not enough to demonstrate that the Respondent has been commonly known by that name. (See Bilfinger Berger AG v. Bilfinguer, S.A., WIPO Case No. D2004-1002; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672)

The Panel finds that the Respondent must also show that the company name coinciding with the registered trademark was adopted in good faith without intent to take advantage of the trademark at issue. In light of the circumstances of the present case, in particular the distinctiveness of the Complainants’ prior trademark, the evidence showing that the Respondent was certainly aware of the Complainants’ trademark rights when he acquired the disputed domain name, as detailed in the following paragraphs, the fact that the company named “Barrashopping.com, Inc.”, was established a few months before the unsolicited offer for sale of the disputed domain name to the Complainant, the Panel finds that this argument is not sufficient to demonstrate that the Respondent is commonly known by the disputed domain name or has rights or legitimate interests in it.

The Complainants have provided evidence of ownership of prior trademark rights on BARRASHOPPING, which is well-known in Brazil based on the long and extensive use of it since 1981 in connection with the Complainants’ shopping centers. The Complainants also demonstrated that the Respondent is a Brazilian native and that the Respondent’s website currently published at <barrashopping.com> is in the Portuguese language and displays also a telephone number in Brazil. Thus, despite the fact that the Respondent’s company “Barrashopping.com, Inc.” is located in the United States, the Respondent is clearly targeting Portuguese speaking users, especially Brazilian ones. Moreover, the Complainant has also submitted screenshots showing that the disputed domain name was previously redirected to a webpage displaying sponsored links relating to the Complainants’ shopping centers.

The Panel notes that the Respondent stated that he did not originally register the disputed domain name but acquired it as it was offered for sale. Based on the documents and statements submitted by the parties, it is unclear when the disputed domain name, which was registered in 2004, was actually acquired by the Respondent. However, from the Respondent’s assertions, it appears that the disputed domain name was already held by the Respondent when the disputed domain name was pointed to a pornographic site (a circumstance that the Respondent ascribes to the fact that the site was hacked) and, subsequently, to the mentioned pay-per-click landing page.

In addition, as mentioned above, on December 28, 2011, the Respondent wrote an email, in the Portuguese language, to the Complainants, indicating that, as he was living in the United States and was transferring his activities and the name of his company in the United States, he would have put the disputed domain name for sale. In said communication, the Respondent invited the Complainants to contact him should they have an interest in acquiring the disputed domain name.

In light of the above, as it will be stated also in the bad faith section, the Panel finds that the Respondent was aware of the Complainants’ prior rights in BARRASHOPPING when he acquired the disputed domain name and thus likely established a company in the United States with the exact name as the disputed domain name in order to evade formal enforcement of the Complainants’ trademark rights. Moreover, the Respondent himself stated that he was aware of prior decisions issued in favour of respondents who owned registered company names corresponding to the trademark at issue.

In addition, the Panel notes that, despite the company name registered in Florida is “Barrashopping.com, Inc.”, the Respondent indicated in the signature of all of his communications sent by email to the Complainants and to the Center a different name, i.e., “Barrashopping.com, USA Inc.”. The addition of the geographical indication “USA” is not irrelevant as it demonstrate that the Respondent presents his company in the correspondence with other parties with a different company name which does not match either his registered company name or the disputed domain name.

Moreover, the disputed domain name was redirected in the past to a website consisting in a page displaying sponsored links, which generate revenues via the pay-per-click system. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. See, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424.

Also the current use of the disputed domain name for a web site in the Portuguese language which promotes the sale of watches and mobile phones in direct competition with the Complainants’ activities is apt to divert and to generate confusion among Internet users (especially Brazilian ones), as to the source of the products and services provided by the Respondent.

The Panel also notes that, from the evidence on record, the use of the disputed domain name has been modified by the Respondent from a pay-per-click page to the current commercial website several weeks after he contacted the Complainants offering the disputed domain name for sale. Notwithstanding that the Panel finds that the Respondent was likely aware of the Complainants’ rights in BARRASHOPPING and could figure the possible likelihood of confusion between his website and the Complainants’ mark, he not only wrote his web site entirely in Portuguese, but also failed to put a disclaimer apt to exclude any association with the Complainants.

Therefore, the Panel finds that the Respondent has not proven that he, individually or through his company, is using the disputed domain name in connection with a bona fide offering of goods or services or 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 of the Complainants.

Furthermore, as mentioned above, the Complainants sent a cease and desist letter on May 11, 2012, to the Respondent, requesting the transfer of the disputed domain name based on the Complainants’ trademark rights on BARRASHOPPING, but the Respondent did not provide any answer to such communication.

The Panel shares the view expressed in The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218, in which it was found that: “By operation of a common sense evidentiary principle, the Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations.” Also in Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230, it was held that “since the Respondent was informed of the Complainant’s claims in relation to the trademark and made no attempt to offer any explanation for his adoption of so similar a domain name for use in relation to services of the same description, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name”.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, 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 disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, 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 Panel notes that, in light of i) the prior trademark rights of the Complainants for BARRASHOPPING, which has been used since 1981 in connection with the Complainants’ shopping centers in Brazil, ii) the notoriety of the Complainants’ trademark demonstrated by the media-recognition materials attached to the Complaint and by the prizes awarded to the Complainants detailed in the Complaint and iii) the fact that the Respondent is a Brazilian native and, from the evidence on record, used to live in the same neighbourhood where the first Barrashopping center was established, the Respondent was aware of the disputed domain name at the time he acquired it.

This conclusion is also supported by the fact that the Respondent pointed the disputed domain name to a pay-per-click landing page featuring several links which referred to the Complainants’ trademark and also by the Respondent’s unsolicited communication sent to the Complainants, in the Portuguese language, in which he indicated that he was going to offer the disputed domain name for sale and invited the Complainants to contact him should they be interested in the acquisition.

The Panel also finds that, in view of the contents displayed on the web site “www.barrashopping.com” both when it was redirected to a parking page with sponsored links and at the time of the drafting of the Decision (as described above), the Respondent’s use of the disputed domain name interferes with the Complainants’ business and Internet users were, and are, likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website (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). Moreover, in all likelihood, the Respondent has derived revenues from the pay-per-click links and/or from the sale of the products advertised through his web site.

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted (and probably succeeded) to attract Internet users to his web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.

Furthermore, the Panel also considers that the Respondent’s unsolicited offer for the sale of the disputed domain name to the Complainants and the evidence provided by the Complainants as to the Respondent’s familiarity with the registration and offer for sale of domain names corresponding to trademarks or names of third parties, are further circumstances evidencing the Respondent’s bad faith.

In addition, the Respondent failed to reply to the Complainants’ cease and desist letter. In accordance with prior UDRP decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all 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 <barrashopping.com> be transferred to the Complainant Multiplan Empreendimentos Imobiliários S.A.

Luca Barbero
Sole Panelist
Dated: August 27, 2012

 

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