WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Júlio Bogoricin Imóveis S/A v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2013-1045
1. The Parties
The Complainant is Júlio Bogoricin Imóveis S/A of São Paulo, Brazil, represented by De Lena Advogados Associados, Brazil.
The Respondent is Above.com Domain Privacy / Host Master, Transure Enterprise Ltd of Victoria, Australia and Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Name and Registrar
The disputed domain name <juliobogoricim.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2013. On June 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 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 June 14, 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 June 18 and June 19, 2019, as well as a clarification regarding the amended Complaint on June 26, 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 June 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2013.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 8, 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 part of a group of companies of Mr. Bogoricin, whose companies are active in real estate services.
The Complainant holds the Brazilian trademark JULIO BOGORICIN with registration numbers 006.116.639 and 720029449 for different real estate services. The first registration of the trademark JULIO BOGORICIN was granted on July 25, 1975 (hereinafter the “Trademarks”).
The Complainant has registered the domain names <juliobogoricin.br.com> and <juliobogoricin.com>.
The disputed domain name <juliobogoricim.com> was registered by the Respondent on April 27, 2012.
The disputed domain name currently does not resolve to any website.
5. Parties’ Contentions
The Complainant states that:
The Respondent caused serious confusion between the Trademarks and the disputed domain name as the Respondent just replaced the last letter “n” of the Trademarks by an “m”.
The Respondent has no rights or legitimate interests regarding the disputed domain name. The Complainant conducted a search at the National Institute of Industrial Property in Brazil and United States Patent and Trademark Office (“USPTO”) in the United States of America, and found no registered trademark or trademark application for the disputed domain name. Consequently, the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent uses the disputed domain name to redirect Internet users, in particular the Complainant's clients, to advertisements for real estate services, thereby demonstrating bad faith in reproducing the Trademarks, which are highly renowned in the real estate industry, in the disputed domain name. According to the Complainant, it is clear that when the Respondent used the disputed domain name, it intentionally attempted to attract, for financial gain, Internet users from the website of the Complainant, because the target audience is the same people who access the sites, they are Internet users seeking real estate services for properties located in Brazil, thereby creating a likelihood of confusion with the Trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has requested the Panel to issue a decision that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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 disputed domain name contains the Complainant’s Trademarks in their entirety, albeit that the last letter “n” has been replaced by an “m”. This alteration is an obvious misspelling and the Trademarks are still very recognizable within the disputed domain name. The Panel is therefore satisfied that the disputed domain name is confusingly similar to the Trademarks and that the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant implied that it did not authorize the use of the Trademarks to the Respondent, and performed trademark searches to establish that the Respondent has no rights in the disputed domain name. Furthermore, the Complainant states that the Respondent offered advertisement to services which directly compete with the services offered by the Complainant under the Trademarks. The Panel is satisfied that there is no indication that the Respondent has rights in or has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services.
In absence of a reply from the Respondent, the Panel finds that the Complainant has made a prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
The Complaint states that the Respondent has registered and uses the disputed domain name in bad faith. As mentioned above under Section B, the Complainant alleges that the Respondent offered advertisement to services which directly compete with the services offered by the Complainant under the Trademarks. Thereby, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks, apparently by taking advantage of the Internet users who make a typographical error by confusing the last letter of the disputed domain name. The Panel considers the fact that the disputed domain name contains such a typographical error, without any obvious reason and in absence of an explanation from the Respondent, additional evidence of the Respondent’s bad faith registration and use of the disputed domain name.
The fact that the disputed domain name currently does not resolve to an active website does not change the Panel’s findings.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met.
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 <juliobogoricim.com> be cancelled.
Date: August 9, 2013