WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lojas Renner S.A. v. Web Names
Case No. D2016-1360
1. The Parties
The Complainant is Lojas Renner S.A. of Porto Alegre, State of Rio Grande do Sul, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Web Names, of New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cartaorenner.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 July 4, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 23, 2016. 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
According to the Complainant it is in terms of revenue, the largest fashion retailer in Brazil. It has a long history. The Complainant opened its first point of sale in 1922 focusing on textile goods trade. With the introduction of a broader product mix, in 1940, it became a department store. In 1965 the Complainant was constituted as Lojas Renner S.A. and in 1967 it became a publically listed company.
In the 1990s the Complainant established an expansion plan and opened stores outside the boundaries of the Brazilian Southernmost State of Rio Grande do Sul opening its first stores in São Paulo. In 1998 JCPenney Brazil Inc., through a subsidiary, acquired a controlling stake in the Complainant.
The Complainant listed on the Brazilian Stock Exchange in 2005. The Complainant is conscious of market tendencies and offers the very best in fashion and styles to all its customers. It is one of the fastest growing companies in the sector operating more than 350 units in Brazil and abroad with more than 17,000 employees.
Its services and products are recognized by customers and by the market. It has received numerous positive reviews and prizes over the years some of which are referred to in Annexes 29, 30, 31 and 32 to the Complaint.
In 2014 the brand was considered the ninth most valuable in Latin America’s retailing sector, the third most valuable in the clothing sector and first in the clothing sector in Brazil according to Interbrand. Currently the brand is valued at approximately BRL 960 million.
The Complainant’s trademark no. 002168871 RENNER was first filed at the Brazilian Industrial Property Office on December 15, 1957. Details are set out in the body of the Complaint together with details of other trademark registrations and applications for the mark RENNER in Brazil and in Mexico.
The Complainant owns numerous domain name registrations incorporating the trademark RENNER including <lojasrenner.com.br> and <lojasrenner.com> as well as several others under the gTLD system as set out in the Complaint.
The Complainant maintains a credit card for issuing to its customers. This has been available since 1973, it is called “Cartão Renner” which in English means “Renner Card”. It represents a substantial amount of the Complainant’s revenues with approximately 25 million Renner Cards having been issued. The “Cartão Renner” cardholders enjoy other advantages and benefits including insurance prizes and gifts.
The Complainant became aware that the disputed domain name had been registered and used by the Respondent by operating a domain name parking or “pay-per-click marketing scheme” aimed at the Complainant’s clients. This can be seen from Annex 3 to the Complaint. The Respondent’s links to the disputed domain name are directly related to the Complainant’s activities and clients and redirect the user to local competitors including competing stores and methods of payment such as “PagSeguro”.
Evidence is also adduced by the Complainant to show that the disputed domain name also misleads users to “www.alibaba.com”. The Alibaba Group is the world’s largest online mobile market place. The Complainant highlights a reference to “www.alibaba.com” in an extract from the Respondent’s website headed <cartãorenner.com>. It shows that one of the Complainant’s cardholders in searching for <cartãorenner.com> will be directed to access “www.alibaba.com”. Theoretically the Complainant in those circumstances might not only lose the sale of an item of clothing but also possibly future sales. This would cause damage to the Complainant.
Evidence is also adduced by the Complainant that the Respondent set up a website using the disputed domain name to redirect users to the “www.sedo.com” website.
According to the WHOIS database shown at Annex 1 to the Complaint, the Respondent is a company called Webnames with a non-existent address in New York.
The disputed domain name was registered on May 2, 2010 but the Complainant only became aware of the disputed domain name in August 2015. On September 3, 2015 the Complainant sent a cease and desist letter to the Respondent which is set out at Annex 9 to the Complaint. No response has yet been received.
Finally the Complainant points out that the Respondent appears to be a professional cybersquatter that has also registered several other domain names that designate well-known trademarks of Brazilian famous companies such as CASAS BAHIA (<casasbahia.biz>), LOJAS AMERICANAS (<uamericanas.com>) and RICARDO ELETRO (<ricardoeletro.info> and <ricardoeletro.biz>).
There is no evidence to the contrary filed by the Respondent and in those circumstances the Panel finds the evidence set out in the Complaint to be true. It proceeds to determine this Complaint on the basis of the evidence contained in the Complaint.
5. Parties’ Contentions
1 The disputed domain name is identical or confusingly similar to the Complainant’s trademark RENNER.
- The trademark RENNER was first registered prior to the registration date of the disputed domain name.
- The disputed domain name incorporates the Complainant’s trademark RENNER together with the addition of the generic term “cartão” (card).
- The disputed domain name is therefore confusingly similar to the Complainant’s trademark.
2. The Respondent has no rights or legitimate interests concerning the disputed domain name.
- There is no evidence of any affiliation or association or license in relation to the Respondent’s use of the mark.
- The Respondent is not commonly known as RENNER or operated a business under the name Renner.
- The disputed domain name is being exploited by the Respondent with a commercial aim in order to mislead the Complainant’s customers.
3. The domain name was registered and is being used in bad faith.
- At the date of registration of the disputed domain name the Complainant had already been using the trademark RENNER for a long period of time.
- The Respondent may have been aware of the Complainant’s trademark.
- The Respondent utilised false information during the registration of the disputed domain name and has been since using it for an unlawful purpose.
- The Respondent has attempted to attract Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark RENNER.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the evidence the Panel finds that the trademark RENNER was first registered in 1957, i.e., many years before the registration of the disputed domain name. The disputed domain name <cartaorenner.com> clearly incorporates the Complainant’s trademark RENNER together with the addition of the generic Portuguese word “cartão” which means “card” in English.
The Complainant has used the mark “Cartão Renner” (“Renner’s card”) since 1973 as the name for the Complainant’s credit card.
The Complainant relies upon an earlier decision Petroleo Brasileiro S.A. – Petrobras v PrivacyProtect.org, WIPO Case No. D2011-1265, which was also a case relating to the use of the term “cartão”. The panel in that case found that an Internet user might reasonably expect the energy company (the complainant) to offer credit card or purchasing card services and might reasonably expect the disputed domain name to be associated with the complainant. It therefore determined that the disputed domain name was confusingly similar to the complainant’s trademark. In this Panel’s view there is in this case a similar use of the descriptive term “cartão”.
In the Panel’s view the disputed domain name is confusingly similar to the Complainant’s trademark “RENNER”. Accordingly the Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent is in any way affiliated to the Complainant or has been licensed or otherwise permitted to use the Complainant’s trademarks. Moreover there is no evidence that the Respondent is commonly known as “Renner” has ever operated a business under the name RENNER and does not have any registration for this trademark.
The evidence shows that the disputed domain name is being used by the Respondent as a “pay-per-click marketing scheme” aimed specifically at the Complainant’s customers therefore the disputed domain name is being used by the Respondent with a commercial purpose so as to mislead the Complainant’s customers as to its website and this does not constitute a bona fide offering of goods or services.
Accordingly this Panel finds that the Respondent has registered and is using the disputed domain name without any right or legitimate interest.
C. Registered and Used in Bad Faith
The Complainant points out that the disputed domain name was registered in 2010, at a time when the Complainant had had long use of the trademark RENNER both by itself and in conjunction with the expression “cartão”. The Panel is therefore prepared to see force in the Complainant’s argument that “it would not be feasible to consider that the Respondent could not have been aware of the Complainant’s trademark RENNER as well as its combination with the term “cartão” and that this was not mere coincidence”.
Whether or not the Respondent was aware of the Complainant’s trademark rights, it is clear that the Respondent has been using the disputed domain name for “domain name parking” or “pay-per-click” services specifically targeting the Complainant’s customers. The evidence set out in the Complaint of the extracts from the Respondent’s websites demonstrates this.
The Complainant also draws attention to the fact that the Respondent has a history of cybersquatting in relation to other well-known Brazilian trademarks referred to above. In particular the Complainant refers to Research in Motion Limited v Alon Banay, WIPO Case No. D2009-0151, relating to the mark BLACKBERRY and the evidence found in that decision of the offering for sale and auction of the disputed domain name on “www.sedo.com” and “www.alibaba.com”, respectively. Internet users are redirected to a website with sponsored links to the sites of competitors of the complainant.
In this case it is clear that the Respondent has attempted to attract Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trademark RENNER.
The Panel also takes into account the fact that the Respondent has failed to respond to the demand letter sent by the Complainant.
Accordingly on the evidence the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
For all 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 <cartaorenner.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: August 31, 2016