WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VRG Linhas Aéreas S/A v. PrivacyProtect.org/ Evanilson Nunes

Case No. D2013-1774

1. The Parties

The Complainant is VRG Linhas Aéreas S/A of São Paulo, Brazil, represented by Kasznar Leonardos Advogados, Brazil.

The Respondent is PrivacyProtect.org of Nobby Beach, Queensland, Australia/ Evanilson Nunes of Bananeiras, Paraíba, Brazil.

2. The Domain Name and Registrar

The disputed domain name <voegolv.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2013, 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 October 18, 2013 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 amendment to the Complaint on October 21, 2013. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 22, 2013.

The Center verified that the Complaint together with the amendments to 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 October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 21, 2013. 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 one of Brazil’s leading airlines, having been founded in 2006 as the result of a merger between the traditional companies VARIG and GOL LINHAS AÉREAS.

The Complainant is the owner of the Brazilian trademark registration No. 822757214 for GOL, granted on December 16, 2008, and of the Brazilian trademark application No. 905675177, for VOEGOL, filed on December 12, 2012. Additionally, the Complainant is the owner of more than 30 other registrations incorporating the GOL mark in Brazil and 20 other registrations in other countries (Annex 3 to the Complaint), as well as of several domain names including <voegol.com>, registered on March 24, 2003 and <voegol.com.br> registered on November 23, 2000 (Annex 4 to the Complaint).

The disputed domain name, registered on April 11, 2012, resolves to an active webpage in which “aviation enthusiasts” may simulate the Complainant’s flights seeking to reproduce as closely as possible the Complainant’s “way of flying”. The Complainant’s logo, images of the Complainant’s airplanes and information on the Complainant and its flight records are reproduced in such webpage (Annex 5 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it noticed that the disputed domain name had been registered and resolved to a webpage which reproduced the Complainant’s logo, images of its airplanes, information and flight records.

On August 8, 2013 the Complainant sent a warning letter to the Respondent requiring it to refrain from infringing the Complainant’s trademarks and requesting the transfer of the disputed domain name to the Complainant (Annex 6 to the Complaint).

On August 10, 2013, the Respondent replied the warning letter by e-mail stating that (i) it did not want to “fraud” the Complainant’s trademark since it uses the trademark “GOL VIRTUAL” (and not “GOL”); (ii) the website interface is not that similar to the Complainant’s website and that (iii) all images used in its website were available on the Internet (Annex 7 to the Complaint).

The Complainant then replied to the Respondent reiterating that the website violated the Complainant’s trademark rights and that measures would be taken if an amicable settlement was not reached. No further reply was received and the Complainant initiated the present UDRP procedure based on the following grounds:

The disputed domain name is, according to the Complainant, confusingly similar to the Complainant’s VOEGOL trademark, reproducing it in its entirety with the addition of the generic letter “v” what characterizes this case as one of typosquatting.

More especially, the Complainant asserts that Internet users are likely to think that the disputed domain name is owned by the Complainant or that there may exist some kind of relationship between the Complainant and the Respondent in view of the use of the disputed domain name which is almost identical to the Complainant’s interface using the same colors (orange, white and grey).

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:

a) the Respondent is not commonly known as GOL or VOEGOL, nor does it own any registered trademarks or trade names corresponding to the disputed domain name;

b) the Complainant has not found anything that would suggest that the Respondent has been using the GOL or VOEGOL trademarks in any form that would justify rights or legitimate interests;

c) the Respondent has not been authorized by the Complainant to register and use the GOL or VOEGOL trademarks in the disputed domain name;

d) the Respondent is not authorized to promote the Complainant’s services and has never been in a business relationship with the Complainant;

e) the Respondent cannot claim that it was not aware of the Complainant’s trademarks at the time of registration of the domain name considering that the Complainant’s trademarks and airline services are vastly displayed at the website resolving to the disputed domain name without any authorization; and

f) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since it has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a commercial site.

As to the registration of the disputed domain name in bad faith, the Complainant asserts that it is implausible that the Respondent would be unaware of the Complainant at the time of registration of the disputed domain name, given that the Complainant’s trademarks and airline services are vastly displayed at the website resolving to the disputed domain name without any authorization.

Moreover, according to the Complainant, it is evident that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement.

Lastly, also according to the Complainant, the fact that the Respondent initially chose to register the disputed domain name with the services of a privacy shield to hide its true identity and prevent contact from the Complainant is also an indicative of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name 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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name cancelled or transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide based upon the Complainant’s allegations and evidence.

A. Identical or Confusingly Similar

The Complainant has established its rights in the GOL and VOEGOL trademarks according to the several registrations and applications owned by it in Brazil and 20 other countries (Annex 3 to the Complaint).

The Complainant’s mark is entirely reproduced in the disputed domain name and the addition to it of the letter “v”, in this Panel’s view, does not sufficiently distinguish the disputed domain name from the Complainant’s trademarks.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent 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 or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that no authorization to register or use the GOL and VOEGOL trademarks in the disputed domain name was given to the Respondent, nor has it been in a business relationship with the Complainant. Moreover, the Respondent is clearly aware of the Complainant’s trademarks and services which are vastly depicted in the website resolving to the disputed domain name without any authorization from the Complainant.

Also, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, further demonstrate the absence of rights or legitimate interests in the disputed domain name.

The question then falls as to whether the use of the disputed domain name characterizes a legitimate noncommercial or fair use. Again, the lack of any reply by the Respondent impedes the Panel to better assess what was the clear intention of the Respondent. It is abundantly clear, however, that the Respondent was undoubtedly aware of the Complainant and tried to mimic it on the website associated to the disputed domain name. The difficult question that is posed is whether or not such use could characterize a legitimate “fan site” or, as Complainant asserts, an unfair use or commercial site.

This Panel notes that a disclaimer is made at the bottom of the initial page relating to the disputed domain name, stating that the website seeks to gather “aviation enthusiasts” to simulate the Complainant’s flights seeking to reproduce as closely as possible the Complainant’s “way of flying”.

However, the Respondent does not clearly differentiate itself from the Complainant, making it indeed plausible for an Internet user to imagine that the webpage is endorsed, sponsored, maintained or affiliated with the Complainant to this Panel’s view. The following reasons corroborate with this finding:

- the first reason is the reproduction of the Complainant’s trademark logo throughout the entire webpage and its subsections. In some parts the expression “Virtual” is added to Complainant’s logo, what could lead Internet users to imagine that “GOL Virtual” is part of the Complainant’s group or associated with it;

- secondly, the images depicted in the webpage are all of the Complainant’s airplanes;

- the “company profile” and “company history” sections of the website clearly allow someone to conclude that the “company” that owns the disputed domain name is the Complainant and not the Respondent for all the information relates to the Complainant (furthermore not a single line is dedicated to the Respondent);

- all flights, all routes, all destinations are clearly the Complainant’s ones;

- the domain name chosen by the Respondent does not clearly indicate as such that this website is not the Complainant’s official webpage (Respondent in this case might have chosen a generic or unrelated to the Complainant’s domain name, such as “virtualflightsimulator.com”);

- lastly, it is not clear from the website to this Panel whether or not users have to pay to enroll and take advantage of the services being provided.

Previous UDRP panels have dealt with similar cases in which the respondent lacked rights or legitimate interests in the domain name in spite of whether or not the use of the domain name was clearly commercial. See paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In Xuxa Promoções e Produções Artísticas Ltda. v. BlessHost Internet, WIPO Case No. D2007-0979, <clickxuxa.com>, for instance, the panel declared that it was “convinced that the Complainant had done enough to establish a prima facie case and [was] not convinced that Respondent [was] making a legitimate or fair use of the disputed domain name. By failing to reply to Complainant’s allegations, Respondent did not bring any evidence or argument which could clearly justify why Respondent chose <clickxuxa> for its domain name. Particularly in the context of a domain name that has such an evident prospect for confusion with the Complainant’s mark, and in the particular circumstances of this case, in the Panel’s view, something more by way of explanation from Respondent would be required in order to justify a finding in its favour. In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.”

In view of the above, this Panel concludes that the Respondent is intentionally misrepresenting itself as being (or as in some way associated with) the Complainant and it is not clear whether this fan site is indeed noncommercial. The Panel finds therefore that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of a domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the use of the disputed domain name in connection with a webpage containing the reproduction of the Complainant’s logo, images of its airplanes and information of the Complainant and its flight records, in addition to the uncertainty left to Internet users as to whether or not the entity in charge or responsible for the website is the Complainant, lead to the conclusion that the Respondent is intentionally misrepresenting itself as being (or as in some way associated with) the Complainant. Such use can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s trademarks.

Additionally, as pointed out in Xuxa Promoções e Produções Artísticas Ltda. v. BlessHost Internet, WIPO Case No. D2007-0979, when dealing with the question as to whether the respondent’s site is actually “non-commercial”, the degree of sophistication and professionalism on the website allows to the conclusion that respondent “had primarily in mind the possibilities of obtaining a commercial benefit from the disputed domain name. Contrary to what some of the visible content of the website at “www.clickxuxa.com” may suggest, Respondent’s intentions do not seem to be non-commercial.”

The same rationale is applicable to this case in which the degree of sophistication and professionalism on the website made available by the Respondent allows the conclusion that it intends to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

The Panel also notes that the Respondent did not respond to this Complaint.

Lastly, the Respondent’s use of a “privacy protection” service and the provision of seemingly false addresses in its WhoIs details further corroborate the finding of bad faith in the Respondent’s conduct.

For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <voegolv.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: December 4, 2013