WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Companhia Brasileira de Distribuição v. Private Registrations Aktien Gesellschaft
Case No. D2014-1551
1. The Parties
The Complainant is Companhia Brasileira de Distribuição of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and The Grenadines.
2. The Domain Name and Registrar
The disputed domain name <extrahipermercado.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 September 10, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2014, 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 September 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 18, 2014.
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 September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2014.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 27, 2014. 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.
The proceedings are conducted in English since this is the language of the registration agreement for the disputed domain name as confirmed by the Registrar.
4. Factual Background
The Complainant is a leading retailer in Brazil1 trading as GPA (Grupo Pão de Açúcar) that was founded in 1948.
The Complainant owns numerous registrations in Brazil for the mark EXTRA, the earliest of which dates back to 1991, and is associated with supermarkets, minimarkets, drugstores, and gas stations.
The Complainant is also the owner, as of 1995, of the mark EXTRA HIPERMERCADOS in Brazil for its hypermarket chain.
The Respondent registered the disputed domain name on October 31, 2006. The disputed domain name resolves to a landing page at “ww5.extrahipermercado.com” showing sponsored links related to the Respondent’s hypermarket business. At the pay-per-click’s (PPC) parking page, the disputed domain name has also been put up for sale.
5. Parties’ Contentions
The Complainant’s main submissions are as follows:
(i) The disputed domain name consists in a total reproduction of the Complainant’s famous trademark EXTRA, which causes an undue association by the public in general, and especially the Portuguese-speaking consumer;
(ii) The Respondent’s acts violate articles 1, 3, 6 BIS, 6 QUINQUIES, 8, and 10 BIS of the Paris Convention for the Protection of Industrial Property;
(iii) The Complainant’s famous mark is being used without its permission as a domain name, which unauthorized use is likely to cause serious damage to the reputation, image, and fame of the Complainant and its mark;
(iv) As the disputed domain name is being offered for sale, there is a risk that same be acquired by the Complainant’s competitors;
(v) Because the website at the disputed domain name is being offered for sale, it is clear that the disputed domain name was registered in bad faith under paragraph 4(b)(i) of the Policy;
(vi) Since the website at the disputed domain name includes sponsored links to competing websites, the Respondent is using the disputed domain name in bad faith in the sense of paragraph 4(b)(iv) of the Policy as held in numerous UDRP decisions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name is registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
As explained in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
The Complainant has proven to hold registered trademark rights in Brazil since 1991 over the mark EXTRA, and since 1995 over the mark EXTRA HIPERMERCADOS.
To the Panel’s eye, “extra” is readily recognized within the disputed domain name as the Complainant’s well-known mark since it is conjoined with “hipermercado”, a term with which the Complainant’s mark is actually associated in the Brazilian market.
Similarly, the Panel observes that the mark EXTRA HIPERMERCADOS is almost entirely included in the disputed domain name, save for the letter “s” in “hipermercados”, which omission makes no difference with “hipermercado” from a conceptual standpoint since both terms refer to the same noun, one in plural form and the other in singular2 .
In comparing the marks EXTRA and EXTRA HIPERMERCADOS to <hipermercado.com>, it is well established that a gTLD such as “.com” may be excluded from the comparison as being generic to all Internet domain names, as well as the spacing between words forming the mark or its font size, which visual aspects are not technically reproducible in Internet domain names at large.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EXTRA and EXTRA HIPERMERCADOS marks.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant represents that it did not authorize incorporation of its EXTRA and EXTRA HIPERMERCADOS marks, or any variation thereof, into the disputed domain name. Further, it is contends that the Respondent’s standing offer to sell the disputed domain name results in the possibility of said domain name being purchased by a competitor of the Complainant. Finally, the Complainant submits that its EXTRA mark is famous, and consequently, that Respondent’s use of the disputed domain name harms the reputation, image, and fame of the Complainant and its marks.
The Panel has carefully reviewed the printouts of the Respondent’s website submitted by the Complainant and has come to the conclusion that the Respondent’s use of the disputed domain name in connection with a website showing PPC links to other supermarket chains, such as Wal-Mart and Carrefour, does not constitute a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy.
Nor can the Panel infer any rights or legitimate interests within the meaning of Policy paragraph 4(a)(ii) from the Respondent’s continuing actions to profit from the registration and use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests for the purposes of the Policy.
This conclusion is only reinforced by the Respondent’s default in the instant proceedings. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Consequently, the Complainant has satisfied the second prong of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
Because the mark EXTRA is well known in the Brazilian supermarket industry3 , the Panel has no difficulty in inferring that Respondent’s deliberate selection of a domain name combining the terms “extra” and “hipermercado” evidences bad faith registration under the Policy. See Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well-known trademark, its very use by someone with no connection with the complainant suggests opportunistic bad faith).
The finding of bad faith registration is reinforced by the fact that the disputed domain name is being publicly offered for sale at the Respondent’s website. This conduct squarely falls under paragraph 4(b)(i) of the Policy.
Similarly, the Panel finds that the Respondent’s use of the disputed domain name in connection with a PPC page showing links to the Complainant’s competitors, constitutes evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel holds that the disputed domain name was registered and is being used in bad faith within the purview of the Policy.
The Complainant has therefore discharged its burden in connection with 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 <extrahipermercado.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: November 10, 2014
1 According to the Indo-Brazil Chamber of Commerce, the Complainant operates the largest supermarket chain in Brazil with 1,999 stores by the close of 2013. See http://www.indobrazilchamber.com/supermarket-industry-in-brazil/
2 Hipermercado is the Portuguese word for hypermarket, which according to Wikipedia, is a superstore combining a supermarket and a department store.
3 The Complainant reportedly operates 138 hypermarkets and 213 supermarkets under the mark EXTRA. See http://www.groupe-casino.fr/en/activities/latin-america-2/