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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lojas Renner S.A. v. Carmen Brown

Case No. D2016-2386

1. The Parties

The Complainant is Lojas Renner S.A. of Porto Alegre, Brazil, represented by Silveiro Advogados, Brazil.

The Respondent is Carmen Brown of Kansas, Montana, United States of America.

2. The Disputed Domain Name and Registrar

The disputed domain name <lojasrenner.xyz> (the “Disputed Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2016. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 28, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2017.

The Center appointed Michael D. Cover as the sole panelist in this matter on January 18, 2017. 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 in this administrative proceeding is Lojas Renner S.A., a Brazilian company, headquartered in the city of Porto Alegre, State of Rio Grande do Sul, Brazil.

The Complainant is the largest fashion retailer in Brazil. It has been active in the retail market in Brazil since 1965 and now operates more than 350 units in Brazil and elsewhere and has more than 17,000 employees.

The Complainant filed its first application for its trademark LOJAS RENNER in Brazil in 1986 and is the proprietor of various registered trademarks consisting of or incorporating the name “Lojas Renner” in Brazil and elsewhere since at least April 29, 2008. The Complainant is also the proprietor of numerous domain names which incorporate the name “Lojas Renner”, including <lojasrenner.com.br> and <lojasrenner.com>.

All that is known of the Respondent is that the Respondent is listed in the WhoIs database as Carmen Brown of Kansas, Montana, United States of America.

The Disputed Domain Name was registered on June 2, 2016. It resolves to what is sometimes called a “domain name parking scheme” website, which contains pay-per-click advertising for links which redirect Internet users to websites or companies which are in the same or similar areas to the business of the Complainant.

The Complainant sent a cease and desist letter to the Respondent on November 11, 2016 but, despite confirmation of receipt, no substantive response has ever been received by the Complainant.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s trademark LOJAS RENNER. The Complainant notes that the Disputed Domain Name reproduces the Complainant’s trademark LOJAS RENNER in its entirety. It also notes that such trademark has been used by the Complainant for decades and registered as a trademark in Brazil and elsewhere since 1986.

The Complainant also notes that it is already well-established that a generic Top-Level Domain (“gTLD”), such as “.xyz”, is typically disregarded under the confusing similarity test and draws the Panel’s attention to WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”)at paragraph 1.2 and also to XS4ALL Internet B.V. v. Safwan Ramadhan, Company, WIPO Case No. D2016-1044.

The Complainant concludes that the Disputed Domain Name is confusingly similar to its trademark LOJAS RENNER and the requirement of the Policy’s first point is met.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent is not affiliated to the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use the trademark LOJAS RENNER.

The Complainant also points out that the Disputed Domain Name is being used by the Respondent as part of a “pay-per-click” marketing scheme, targeting the Complainant’s customers. The Complainant maintains that this does not constitute a bona fide offering of goods or services and, indeed, that the use by the Respondent of the Disputed Domain Name is, as the Complainant describes it, “parasitary”.

The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith.

It draws the attention of the Panel to the “domain name parking” position already mentioned in this Decision and also that the Disputed Domain Name is being offered for sale, which the Complainant submits makes clear the Respondent’s intent to obtain profits from the Complainant’s intellectual property assets. The Complainant also submits that the Respondent has attempted to attract Internet users to the Disputed Domain Name for commercial gain by creating a likelihood of confusion with the Complainant’s renowned trademark LOJAS RENNER.

Remedy Requested

The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark, in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established that it has rights in its trademark LOJAS RENNER. The Complainant has registered rights in its trademark and unregistered rights as well, established through extensive use of that trademark in connection with its business.

The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to its trademark LOJAS RENNER. “Lojas Renner” is the dominant part of the Disputed Domain Name and, as noted in the decisions cited by the Complainant, it is well established that the addition of a gTLD is not sufficient to avoid confusing similarity.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark LOJAS RENNER, in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Panel accepts that the Complainant has not authorized or licensed the Respondent to use its trademark and that the Respondent is not affiliated to the Complainant.

It is a reasonable inference that the Respondent was aware of the existence of the Complainant when it registered the Disputed Domain Name. This is because the Complainant is very well known and also because the “domain name parking” website to which the Disputed Domain Name resolves targets the Complainant and its customers. Such use of the Disputed Domain Name as has taken place cannot be described as legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Name for a bona fide offering of goods or services before this dispute arose and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Name and so those two gateways are denied to the Respondent.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that element 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel accepts the submissions of the Complainant on this aspect and finds that the Disputed Domain Name has been registered and is being used in bad faith. Whilst the fact that the Disputed Domain Name is for sale is not conclusive evidence that the Respondent registered the Disputed Domain Name primarily for the purpose of selling the Disputed Domain Name, it certainly points in that direction.

However, the conduct of the Respondent in setting up the Disputed Domain Name does fall squarely within paragraph 4(b)(iv) of the Policy, in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the parking website by creating a likelihood of confusion with the Complainant’s trademark as to the source and the like of the products and links offered on that website.

The Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and the element 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <lojasrenner.xyz>, be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: January 23, 2017

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