WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grendene S.A. v. Mr. Edison Luiz Goncalez / Domains by Proxy, LLC
Case No. D2015-1835
1. The Parties
The Complainant is Grendene S.A. of Ceará, Brazil, represented by Gusmão & Labrunie Advogados, Brazil.
The Respondent is Mr. Edison Luiz Goncalez of Guarulhos, Brazil / Domains by Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <myfirstminimelissa.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 October 20, 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 October 23, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2015.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on November 20, 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 a Brazilian company with a prestigious reputation and known among consumers, with global presence in over 80 countries and with more than 3,000 points of sales. According to the Trademarks Certificates attached to the Complaint, the Complainant is the owner of the MELISSA mark in classes 03, 09, 12, 14, 25 and 28 before the Brazilian Patent and Trademark Office since at least June 10, 1980 and also in countries like Mexico, Canada, United States of America and Bolivia. In addition, the Complainant is the owner of the Community trademark MINI MELISSA in the International Class 25.
The Complainant is the registrant of several domain names encompassing the trademark MELISSA, including the domain names <myfirstminimelissa.com.br>, <myfirstminimelissa.net>, <myfirstminimelissa.net.br>, <minimelissa.com.br>, <minimelissa.com >, <miniminimelissa.com.br> and <miniminimelissa.com>.
The Complainant has a line of products called "My first mini Melissa" with products developed for children.
The Complainant sent a cease and desist letter to the Respondent, but did not receive any response.
The disputed domain name was registered on April 6, 2015. The Complainant has submitted evidence that at least until August 19, 2015 the disputed domain name was used to host a website of a company named NTS SERVIÇOS and to advertise its services. Currently, the disputed domain name is not being used to host any website.
5. Parties' Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant's trademarks MELISSA and MINI MELISSA. Also, the Complainant informs that the disputed domain name was registered by it in the past but it was mistakenly not renewed.
The Complainant also alleges that the consumers may be confused since the disputed domain name is highly similar to its trademark but it was used to host a website with no connection whatsoever with the Complainant's field of action. The Complainant states that this confusion can also lead to the dilution of the trademark MELISSA.
The Complainant argues that the Respondent should be considered as having no rights or legitimate interests in respect to the disputed domain name because he has no rights over the MELISSA and MINI MELISSA trademarks and has never been known for the disputed domain name.
According to the Complainant, all attempts to solve the matter amicably were avoided by the Respondent and unsuccessful. The Complainant informs that the Respondent responded to one of the emails sent by the Complainant informing that he registered the disputed domain name because of a problem he had in consequence of a service he provided for an agency that works directly with the Complainant. The Complainant informs that it is not related to this issue between the Respondent and this agency.
The Complainant concludes that the Respondent registered the disputed domain name in dispute with the mere purpose of selling or otherwise transferring it to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's MELISSA and MINI MELISSA trademark. The Panel finds that the addition of the expression "my first" is not enough to escape a finding of confusing similarity, on the contrary, only contributes to the confusion as the expression is used by the Complainant to identify a specific line of products.
The Panel, therefore, finds that the Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interest with respect to the disputed domain name.
With respect to the paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to the paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to the paragraph 4(c)(iii) of the Policy, the Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in a connection of a bona fide offering of goods or services.
In view of the above, the Panel finds that the Complainant has established the second condition of the paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally registered the disputed domain name at issued which reproduces the Complainant's trademarks MELISSA and MINI MELISSA. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant's rights in the trademarks MELISSA and MINI MELISSA, since the Respondent informed the Complainant by email that he had been hired by an agency to develop a mobile app for the Complainant but was later fired. The Respondent has also informed that he is suing the Complainant and the referred agency in regard of the app.
The Complainant's allegations of bad faith were not contested since the Respondent did not reply to the Complaint. The evidence provided by the Complainant confirms that it had long been using its MELISSA and MINI MELISSA trademarks when the disputed domain name was registered.
The Panel also finds that the disputed domain name was registered by the Respondent with the mere purpose of bargaining with the Complainant, as implied in the Respondent's emails to the Complainant.
The Complainant has submitted evidence that at least until August 19, 2015 the disputed domain name was used to host a website of a company named NTS SERVIÇOS and to advertise its services. The Panel finds that, under the Policy, this can be considered evidence of bad faith registration and use, since the Respondent has "intentionally attempted to attract, for commercial gain, Internet users to his [your] 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 or his [your] web site or location of a product or service on you web-site or location", Policy paragraph 4(v)(iv). The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established the third element of the Paragraph 4(a) 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 <myfirstminimelissa.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: December 4, 2015