World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Horizonte Administração e Comércio Ltda. v. Whois Privacy Protection Service, Inc./ Ehud Goldshmidt

Case No. D2012-1621

1. The Parties

The Complainant is Horizonte Administração e Comércio Ltda. of São Paulo, Brazil, represented by Carlos de Lena, Brazil.

The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America; Ehud Goldshmidt of Milan, Italy.

2. The Domain Name and Registrar

The disputed domain name <bingoaugustaonline.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 13, 2012. On August 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2012, the Registrar 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. The Center sent an email communication to the Complainant on August 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 16, 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 August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2012.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 20, 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.

The Panel issued a Procedural Order on October 1, 2012, requesting the submission of evidence of the existence of trademark registrations, searches showing that the Respondent does not hold any trademark registrations, and further evidence from the Complainant showing the Respondent’s bad faith.

4. Factual Background

The Complainant is the holder of the following trademark registrations:

TRADEMARK

REG. No.

SPECIFICATION OF GOOD /SERVICES

DATE OF REGISTRATION

OWNER

COUNTRY

BINGO AUGUSTA

81300590

Fun services, entertainment and auxiliary. Services draw, games and auxiliaries.

March 25, 1997

HORIZONTE ADMINISTRAÇÃO E COMÉRCIO LTDA.

Brazil

BINGO AUGUSTA (& Design)

825030552

Administration of lotteries, predictions electronic or mechanical, namely: Bingo, lottery number, Bingo permanent, electronic games.

November 8, 2002

HORIZONTE ADMINISTRAÇÃO E COMÉRCIO LTDA.

Brazil

BINGO AUGUSTA JARDINS (& Design)

825283124

Administration of lotteries, predictions electronic or mechanical, namely: Bingo, lottery number, Bingo permanent, electronic games.

February 26, 2003

HORIZONTE ADMINISTRAÇÃO E COMÉRCIO LTDA.

Brazil

BINGO AUGUSTA JARDINS (& Design)

825210461

Administration of lotteries, predictions electronic or mechanical, namely: Bingo, lottery number, Bingo permanent, electronic games.

January 31, 2003

HORIZONTE ADMINISTRAÇÃO E COMÉRCIO LTDA.

Brazil

The disputed domain name was registered on October 18, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

Confusing Similarity

- That it is the holder of trademark rights regarding the brand names BINGO AUGUSTA and BINGO AUGUSTA JARDINS, to cover different services.

- That customers may wrongfully associate the website of the Respondent with the Complainant.

- That the Respondent simply adds the expression “onlne” to the trademarks BINGO AUGUSTA owned by the Complainant.

Rights or Legitimate Interests

- That it is impossible to establish any bona fide reason for the Respondent to use the expression “bingoaugustaonline”.

- That the Respondent’s website features services regarding electronic games and bingo, and that the language used in said website is Portuguese.

Bad faith

- That the Respondent, by using the disputed domain name containing the expression “bingoaugustaonline” intentionally attempted to attract, for profit, Internet users seeking the Complainant and its services, because the target audiences are essentially the same.

- That the Respondent promotes the expression “bingo augusta online” on the following website: “www.google.com.br”.

- That said expression is confusingly similar to the Complainant’s trademarks BINGO AUGUSTA, and that the Respondent associates the use of said trademarks to the phrase "Bingo Augusta Reopened”, which constitutes false information that generates confusion among clients.

- That this conduct constitutes an act of unfair competition.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(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.

As Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The disputed domain name <bingoaugustaonline.com> is confusingly similar to the Complainant’s trademark BINGO AUGUSTA, because it entirely incorporates said trademark, with the addition of the term “online”, and the generic top-level domain (gTLD) “.com”.

The addition of the generic term “online” to the trademark BINGO AUGUSTA does not add a distinctive character to the disputed domain name, and it does not eliminate the confusing similarity between said trademark and the disputed domain name (see Broadcasting Inc. v. Forhart – Michael Engelhart, WIPO Case No. D2010-0284; see also Quixtar Investments, Inc. v. Scott A., Smithberger (a.k.a. Scott Smithy) and Quixtar-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424, PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).

The addition of the gTLD “.com” is irrelevant for the purposes of this analysis, as it does not add any distinctiveness to the disputed domain name (see Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760).

Therefore, the Complainant has met the first requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a domain name:

(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. (Policy, paragraph 4(c)).

The Respondent did not provide any evidence showing any use, or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, the evidence submitted by the Complainant suggests that the Respondent is taking active steps to divert traffic from the Complainant. Such steps include featuring a website written in Portuguese language, displaying the trademark BINGO AUGUSTA, and associating said website to activities like electronic games and bingo. In the Panel’s view, the use of the disputed domain name in association to these elements cannot be in good faith.

There is no evidence on record showing that the Respondent has been commonly known by the disputed domain name. In fact, the Complainant has proven to be known as BINGO AUGUSTA, through its trademarks.

The use of the disputed domain name made by the Respondent cannot be deemed to constitute legitimate, noncommercial or fair use. This Panel finds that the attempts of the Respondent to be falsely associated to the Complainant is illegitimate.

Therefore, the Complainant has met the second requirement under paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use 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 that 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.”

The Respondent has associated the disputed domain name to a website that is written in Portuguese. This fact, in addition to the fact that the Respondent’s website features electronic gaming and bingo activities, all of these being the same activities for which the trademark BINGO AUGUSTA is used, which is proprietary to the Complainant, lead the Panel to believe that this is not a coincidence.

The Respondent’s conduct shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark BINGO AUGUSTA as to the source, sponsorship, affiliation or endorsement of the website. This falls within paragraph 4(b)(iv) of the Policy. See e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Owens Corning v. NA, WIPO Case No. D2007-1143.

Therefore, the Complainant has met the third requirement according to Paragraph 4(b) of the Policy.

7. Decision

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 <bingoaugustaonline.com> be cancelled.

Kiyoshi Tsuru
Sole Panelist
Dated: October 11, 2012

 

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