WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VIA VAREJO S/A, v. Domain Admin
Case No. D2015-1304
1. The Parties
The Complainant is VIA VAREJO S/A of São Caetano do Sul, São Paulo, Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is Domain Admin of Pompano Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <casasbahia.com> is registered with DropCatch.com 373 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2015. On July 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2015, 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 August 6, 2015 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 amended Complaint on August 11, 2015.
The Center verified that the Complaint together with the amended 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 August 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on October 5, 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 the owner of one of the largest retail stores in Brazil, “Casas Bahia”.
The Complainant operates in 20 states (more than 400 cities), in the Brazilian territory, with more than 1000 retail stores and around 66,000 employees.
The Complainant is the owner of more than 100 trademarks that incorporate the term CASAS BAHIA, both in Brazil as well as around the globe, dating back to March 10, 1980, as evidenced in exhibit 9 and 10.
The Complainant is the owner of an extensive list of domain names referring to the CASAS BAHIA brand, <casasbahia.com.br> and <novacasasbahia.com> among many others.
The disputed domain name was registered on June 10, 2015.
5. Parties’ Contentions
The Complainant states that the disputed domain name <casasbahia.com> is identical to the trademark CASAS BAHIA. The disputed domain name incorporates in its entirety the CASAS BAHIA trademark.
The Complainant states that the Respondent does not operate a business or other organization known as CASAS BAHIA and, therefore, it is not commonly known by these terms. The Respondent does not own any trademark registration for CASAS BAHIA nor has it ever used or demonstrated any intention of using trademark CASAS BAHIA or the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further indicates that the Respondent does not have any kind of relationship with the Complainant nor has it been authorized to use CASAS BAHIA mark or any domain name which includes such mark.
The Complainant adds that the Respondent is not making a legitimate noncommercial or fair use of domain name since, when accessing the disputed domain name website, the Internet user is automatically redirected to a webpage where he finds several categories of sponsored links.
The Complainant then states that there is no doubt that the Respondent is using the disputed domain name to misleadingly divert consumers and attract them to its webpage in order to obtain commercial gain from it, which, consequently, tarnishes the trademark at issue, demonstrating the illegitimate use of the disputed domain name.
The Complainant asserts that the Respondent has been using the disputed domain name as a parking page for sponsored links in the same language as the Complainant’s website, enabling Internet users to access websites that are not connected to the Complainant. In most cases, Internet users are directed to competing websites that commercialize home appliances, electronics, furniture and housewares, same products sold by the Complainant.
The Complainant then indicates that by using the Complainant’s mark as a domain name, the Respondent creates a likelihood of confusion which leads the Complainant’s target consumers to believe that the Respondent’s site or the links displayed thereof are somehow sponsored, affiliated or endorsed by the Complainant. The result is that consumers seeking for the Complainant’s mark will inadvertently access the Respondent’s website and will eventually click on one of the several sponsored links there available which are not in any way related to the Complainant and its activities.
The Complainant finally concludes that due to the renowned CASAS BAHIA mark and also due to the absolute lack of rights and legitimate interests of the Respondent in respect of the disputed domain name, one can conclude that the domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(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 Complainant has been able to demonstrate that it has rights to the trademark CASAS BAHIA.
The disputed domain name consists of the term “casasbahia”, plus generic Top-Level Domain (gTLD) “.com” which is generally disregarded since it is a technical requirement of registration,
Furthermore, the Complainant is the owner of the domain name <casasbahia.com.br>, the only difference with the disputed domain name being the addition of the country code Top-Level Domain “.br” in the Complainant’s domain name.
For the above-cited reasons, the Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark or service mark corresponding to the disputed domain name. That the Respondent is not commonly known by the terms “Casas Bahia”, is not in any way affiliated with the Complainant, nor authorized or licensed to use the CASAS BAHIA trademark, nor authorized to seek registration of any domain name incorporating said trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleadingly consumers to its website for commercial gain.
The Panel has reviewed the evidence provided by the Complainant and can conclude that the Respondent was not making a legitimate use of the disputed domain name since when this Panel accessed the disputed domain name website it effectively contained a list of hyperlinks which redirected the users to other sites presumably for commercial gain. As indicated by the Complainant, the Internet user is automatically redirected to a webpage where he finds several categories of sponsored links. When clicking on such subcategories such the Internet user faces a list of sponsored links of products and services which directly compete with the Complainant’s goods sold on Complainant’s website and retail stores. Such use cannot be said to be bona fide.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well-known throughout the world; therefore, in the Panel’s assessment, it is unlikely to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.
The Complainant also provided evidence that it is the owner of a number of domain names that incorporate the CASAS BAHIA trademark. The Complainants domain names are easily found through Internet searches under the terms “Casa Bahia”. Therefore, the Respondent will have been aware, or should have been aware, of the Complainant due to its extensive use in connection with the trademark CASA BAHIA.
In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel was able to personally asses that the Respondent uses the disputed domain name to direct Internet users to a website which contains a pay per click (PPC) website. The Internet user is automatically redirected to a webpage where you find several categories of sponsored links. When clicking on any subcategory the Internet user faces a list of sponsored links of products and services which compete with the Complainant’s goods sold on the Complainant’s website and retail stores.
These PPC links are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <casasbahia.com> be transferred to the Complainant.
Date: October 17, 2015