WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Portucel, S.A. v. PrivacyProtect.org / John Smith
Case No. D2013-0654
1. The Parties
The Complainant is Portucel, S.A. of Setubal, Portugal, represented by CMS Rui Pena & Arnaut, Portugal.
The Respondent is PrivacyProtect.org / John Smith of Nobby Beach, Queensland, Australia, and Caracas, Puerto Rico, respectively.
2. The Domain Name and Registrar
The disputed domain name <portucel.net> 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 April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 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 April 15, 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 April 18, 2013.
The Center verified that the Complaint together with the amendment 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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 22, 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 the leading companies in the pulp and paper production.
The Complainant owns dozens of PORTUCEL trademark registrations in numerous countries, since at least 2003.
The disputed domain name was registered on January 5, 2013.
The Panel tried to access the disputed domain name on June 3, 2013, when no webpage was published there.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The Complainant is the creator of the word PORTUCEL, which is a fantasy expression that brings together the words “Portugal” and “celulose”. The Complainant’s PORTUCEL trademark was ranked as Portugal’s 14th most important brand in 2012. The Complainant holds a lot of trademark registrations and domain names including the word PORTUCEL. There is a clear identity between the Complainant and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered and left unused. The Respondent has not participated in the creation of the original expression PORTUCEL. The Respondent was in no way authorized or licensed by the Complainant to register or use the disputed domain name. The disputed domain name is not being – and never was – used by the Respondent, in the scope of its commercial activity. The Respondent registered the disputed domain name with no reason other than the objective of eventually selling it to the Complainant. The Respondent was aware and could in no way ignore that the Complainant is one of the largest pulp and paper producers in the world; and
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name is not being used by the Respondent. It is widely known that the protection of the identity of the owners of domain names is mostly connected to illicit or dishonest behavior, ranging from child pornography to cybersquatting. The disputed domain name was registered on January 5, 2013 and hasn’t being used since. The Respondent has no relation with the designation “portucel.net” since such expression is not part of its company name, nor does it correspond to its trade name, trademarks or any other intellectual property rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark 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.
A. Identical or Confusingly Similar
The Panel has no doubt that “Portucel” is a term directly connected with the Complainant’s activities in the pulp and paper (cellulose) business.
Annexes 6 to 15 to the Complaint show registrations and applications of PORTUCEL trademarks by the Complainant in several countries since at least 2003.
The trademark PORTUCEL is wholly encompassed within the disputed domain name.
It is already well established that the mere addition of a generic Top-Level Domain (gTLD) extension such as “.net” is generally irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in 2013, the trademark PORTUCEL was already tightly connected to the Complainant’s enterprise.
Furthermore, the word “Portucel” was originally created by the Complainant, bringing together the initial letters of “PORTUgal” and “CELulose”.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could not have been aware of the Complainant’s trademark, as well as that that the use of the expression “Portucel” could be a mere coincidence.
The Respondent had the opportunity to justify why it has chosen the peculiar term “Portucel” to register as the disputed domain name, but it preferred to keep silent.
It is true that at least presently the disputed domain name does not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
In the Panel’s view, the passive and non-collaborative posture of the Respondent, (a) not using the disputed domain name, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party trademark that is registered in several countries, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with (d) the use of privacy services and (e) the lack of any plausible interpretation for the adoption of the expression “Portucel” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <portucel.net> be transferred to the Complainant.
Dated: June 8, 2013