WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saint-Gobain Distribuição Brasil Ltda v. Development Manager
Case No. D2014-2231
1. The Parties
The Complainant is Saint-Gobain Distribuição Brasil Ltda, City of Jundiai, São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Development Manager, Milpitas, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <telhanorte.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2014, 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 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2014.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on March 11, 2015. 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 a well-known Brazilian company, established for over 38 years, and one of the most important building distributors of Brazil. It was founded as a small business of wood and tiles distribution in City of São Paulo, Brazil, and in 2000 it was incorporated into Saint-Gobain Group. Saint-Gobain Group is present in 64 countries, employing over 190,000 people. It began its activities in Brazil in 1937 and nowadays has a USD 9 billion revenue, 53 manufactories, 42 distribution centers, 37 stores and 10 mining units and employing 17,000 employees (direct and indirect). The Complainant operates in Brazil through 37 physical stores, a telemarketing service and seven distribution centers. Its commitment, as part of a chain of stores with deep and expert knowledge on building products, is to provide the consumer with everything he needs for building, renovating or decorating, with high quality products and low price guarantee.
The Complainant has been using the sign “Telhanorte” for over 38 years as the main distinctive company’s element, as “Trademark”, “Trade name on stores front” and “Domain Name”. Therefore, TELHANORTE is a well-known trademark in Brazil, because has achieved notoriety with the consumers, in light of the huge investments made by Complainant. The TELHANORTE trademark is protected in Brazil by several registrations duly granted by the Brazilian Patent and Trademark Office – INPI. Among the several trademark registrations granted to the Complainant, the following registration certificates were enclosed in support of the Complaint (as annexes to the Complaint):
a) Trademark TELHANORTE (word) in BRAZIL (Registration No. 815.351.631, granted on April 21, 1992, in Brazilian Class BR 19/10.30.40), renewed and valid until April 21, 2022;
b) Trademark TELHANORTE PRO (word) in BRAZIL (Registration No. 826.926.665, granted on November 06, 2007, NCL 19), renewed and valid until November 6, 2017;
c) Trademark TELHANORTE CONSTRUTOR (word) in BRAZIL (Registration No. 826.940.471, granted on April 14, 2009, NCL 19), renewed and valid until April 14, 2019;
d) Trademark TELHANORTE (& device) in BRAZIL (Registration No. 901.358.630, granted on March 15, 2011, NCL 35), renewed and valid until March 15, 2021;
e) Trademark TELHANORTE (& device) in BRAZIL (Registration No. 901.358.169, granted on March 15, 2011, NCL 19), renewed and valid until March 15, 2021;
f) Trademark TELHANORTE (& device) in BRAZIL (Registration No. 901.365.351, granted on March 15, 2011, NCL 41), renewed and valid until March 15, 2021;
g) Trademark TELHANORTE CONCEITO (word) in BRAZIL (Registration No. 903.590.816, granted on October 7, 2014, NCL 35), renewed and valid until October 07, 2024;
h) Trademark PRO TELHANORTE (& device) in BRAZIL (Registration No. 901.511.366, granted on December 27, 2011, NCL 35), renewed and valid until December 27.
Besides the trademark registrations mentioned above, the Complainant is the owner of several domain names, which contain their trademark TELHANORTE, such as <telhanorte.com.br>; <telhanorte.com.br>; <telhanortepro.com.br>; <protelhanorte.com.br> and <telhanortedigital.com.br>.
The disputed domain name was registered on February 25, 2000. The site at the disputed domain name resolves to a pay-per-click website.
5. Parties’ Contentions
The Complainants states it is evident that the disputed domain name <telhanorte.com> consists in a reproduction of the Complainant’s well-known trademark and trade name TELHANORTE, which causes an undue association by the public in general, mainly in the Brazilian market (Internet consumers) and in countries of Portuguese language.
The Respondent has no rights or legitimate interests in respect of the disputed domain name <telhanorte.com>; neither has it prior rights in the TELHANORTE trademark nor legitimate interest in acquiring or maintenance of the disputed domain name. The Respondent is not a partner or a company controlled by the Complainant nor a consultant authorized to sell TELHANORTE products in Brazil or the United States and is not authorized to register domain names made up with trademark TELHANORTE.
Moreover, in this case the disputed domain name consists of a reproduction of the main distinctive element of the Complainant’s TELHANORTE mark, that causes an undue association by Internet consumers and the public in general, especially, considering all links are posted in Portuguese – the same language of the Complainant’s consumers.
The Complainant argues that the disputed domain name <telhanorte.com> has been used by the Respondent as demonstrated with the documents submitted in support of the Complaint on its website offering sponsored links, among them, are some links that direct the potential clients to the websites of the Complainant’s competitors. The Complainant did not execute any agreement with the Respondent authorizing it to use its TELHANORTE trademark.
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 must prove that each of the three elements is present:
(i) the 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 domain names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights
1. The Panel finds that the Complainant has established that it is the exclusive owner of the registered trademarks TELHANORTE based on the evidence provided by the Complainant.
2. The disputed domain name consists of the expression “telhanorte”
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii), the burden of production is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name “Telhanorte”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark TELHANORTE. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name consists in the expression “telhanorte” followed by “com”. It is understood that when proceeding to the registration of a domain name, paragraph 2 of the Policy implicitly requires a good faith effort to avoid registering and using domain names corresponding to third-party trademarks. The onus is on the respondent to make the appropriate enquiries to ensure that the registration of the domain name does not infringe or violate third party rights.
Therefore, in this particular case one could presume that the Respondent registered the disputed domain name with no exploration whatsoever of the possibility of third-party rights, and with apparent disregard to whether the domain name it was registering was a domain name which corresponded to the distinctive trademark rights of another.
However, it is inconceivable to conclude the above as it is difficult to believe that the Respondent came up with the same union of random words as did the Complainant. This fact on its own is enough to conclude bad faith registration.
Furthermore, it cannot be a simple coincidence that the disputed domain name, when accessed offers sponsored links, among which include some links tod potential Internet customers at websites of the Complainant’s direct competitors.
The Panel therefore considers that the Respondent’s aimwhen registering the disputed domain name <telhanorte.com> was precisely to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on the website.
Therefore, the disputed domain name as a whole can only create a likelihood of confusion with Internet users with the Complainants trademarks at least one of which predate the disputed domain name by eight years. Consequently, the Panel considers that by registering a domain name corresponding to a well known trademark, the Respondent has intentionally tried to divert Internet user’s to its webpage to generate revenue for commercial gain. This behavior constitutes registration and bad faith use and may tarnish the Complainant’s reputation (Policy paragraph 4(b)(iv).
Accordingly, for all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <telhanorte.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: March 20, 2015