WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefonica Brasil S.A. v. Cleverson Cassel, CambioReal Inc
Case No. D2018-1192
1. The Parties
The Complainant is Telefonica Brasil S.A. of São Paulo, Brazil, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Cleverson Cassel, CambioReal Inc of Wilmington, Delaware, United States of America (“United States”), represented by Vivo Transfer Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <vivotransfer.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 May 29, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2018, 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 sent an email communication to the Complainant on June 4, 2018 requesting a clarification from the Complainant regarding the annexes to the Complaint. The Complainant filed an amended Complaint on June 4, 2018.
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 June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. On June 22, 2018, the Center received an email communication from the Respondent requesting an extension to submit a Response. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response due date was June 29, 2018. The Response was filed with the Center on June 22, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on July 2, 2018. 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 telecommunications company that has provided Internet, TV and telephone services under the mark VIVO since 2003. One of the Complainant’s services is called “Vivo Transfer” and involves transferring mobile data to another handset after an upgrade.
The Complainant owns a number of Brazilian trade marks for the stylised word “vivo” including no. 823376397, registered on March 11, 2008, in class 38. On September 8, 2016, the Brazilian Patent and Trade mark Office determined that this trade mark was a “highly reputed mark” in Brazil.
The disputed domain name was registered on June 19, 2009.
For some eight years, the disputed domain name has been used by Vivo Transfer Ltd, a United Kingdom company incorporated in 2010 and connected with the Respondent, for a Portuguese-language and English-language website branded “vivo transfer” which principally offers remittances of monies from the United Kingdom to Brazil. This company is regulated by the United Kingdom Financial Conduct Authority. The Respondent and/or its connected companies also operate money remittance websites targetting Brazil residents at “www.cambioreal.com/br” and United States residents at “www.cambioreal.com”. (Hereafter, references to the Respondent include its connected entities unless otherwise stated.)
The Complainant sent a cease and desist letter to the Respondent in late 2017. There was no response.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
The disputed domain name is confusingly similar to the Complainant’s trade mark. It consists of the Complainant’s well-known trade mark plus the generic term “transfer”, which is in fact the name of the one of the Complainant’s services.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has used a domain name which is identical to the Complainant’s trade mark and which therefore carries a high risk of implied affiliation.
The Complainant has not authorised the Respondent to use the Complainant’s trade mark. The Respondent is an American company that provides services involving the remittance of money to Brazil. Users of the Respondent’s service are informed that the transfer is made by MS Bank S.A Banco de Cambio (“MS Bank”). There is therefore no legitimate reason to use the term “vivo” in the disputed domain name.
The disputed domain name was registered and used in bad faith.
The Respondent failure to respond to the Complainant’s cease and desist letter in late 2017, is evidence of bad faith.
Furthermore, the Respondent has set out to create a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy.
The Complainant’s mark is “highly reputed”. Polls show that 81% of Brazilians associate the trade mark with the Complainant, which is a huge level of spontaneous association.
The Respondent provides remittances of monies and its Portuguese-language website is aimed at Brazilians. The Respondent’s “vivo transfer” logo is similar to the Complainant’s “vivo” logo.
The word “vivo” means “alive” in Portuguese and is not related to the Respondent’s services. Accordingly, the Respondent is not using the term for its dictionary meaning.
Furthermore, the Respondent’s logo is substantially different from the “CambioReal” logo on the Respondent’s website at <cambioreal.com>, which also provides money remittance services.
The likelihood of confusion is enhanced by the fact that one of the Complainant’s services is called “Vivo Transfer”.
The following is a summary of the Respondent’s contentions:
While it is undeniable that the Complainant has rights over the trade mark VIVO in Brazil, the term is widely used by United Kingdom businesses as part of their names and/or registered trade marks. Such use involves a different meaning or sense from the translation provided by the Complainant. No such companies have ever contested the disputed domain name.
The operator of the website at the disputed domain name is a United Kingdom financial institution, which has built its own reputation by virtue of its own marketing campaigns and not by taking advantage of the Complainant’s Brazilian trade mark. The Respondent’s website clearly explains about the company and the nature of its business.
The name “Vivo Transfer” was chosen because it was seen as a more international brand and more suitable to serve the international community than the Portuguese phrase “CambioReal”.
Unlike the Complainant’s logos, the Respondent’s logos never consist of the word “vivo” on its own; there are other distinguishing features and the logo also displays the Respondent’s full trading name: “vivo transfer”.
The Respondent’s marketing campaigns are directed only to its target audience of United Kingdom residents. The “vivo transfer” service is not available to Brazil residents. The Complainant has not explained how it would be affected in a country where the Complainant has no registered trade marks and conducts no business.
Unlike the Portuguese meaning of the term, in English the term “vivo” means “allegro, happy, vigorous, lively”, derived from the Italian language adjective denoting a music tempo. The Respondent selected the word for this English meaning, which conveys how the Respondent provides its service, and combined this with “transfer”, which explains what the service is – money transfer. The Respondent did not select the word for its Portuguese meaning “alive” which, in the English language, would make no sense in conjunction with “transfer”.
The Complainant’s “Vivo Transfer” service involves transferring mobile data to another handset after an upgrade. This is entirely different from the Respondent’s service and is offered in an entirely different industry. It is clear from the Respondent’s website that the Respondent is a regulated United Kingdom financial institution, not a mobile phone operator in Brazil. Any confusion is caused by the Complainant mixing two languages, i.e., by selecting the English word “transfer” instead of “transferência’, the Portuguese equivalent.
The Respondent offers the services of its partner MS Bank S.A Banco de Cambio on its website at the disputed domain name in order to enable remittances from (rather than to) Brazil. Vivo Transfer Ltd is unable to provide this service itself for regulatory reasons. The bank has no ownership connection with the Respondent and is included on the website in order to give transparency to customers.
The Respondent’s United Kingdom customers are capable of distinguishing between the Complainant and the Respondent, which act in totally different industries. The Respondent’s website makes no mention of any relationship with the Complainant or its products.
The Respondent questions the motives of the Complainant because the Complainant has taken no action against the domain name <vivo.com>, although this is owned by a company which operates in the same industry as the Complainant and whose logos are far more similar to the Complainant’s logos than are the Respondent’s logos.
Loss of the disputed domain name will cause the Respondent unjustified reputational and financial damage.
The Respondent’s failure to respond to the Complainant’s cease and desist letter is not bad faith. The Respondent considered that it might have been a malicious or scam email. In any case, the Complainant’s approach was not amicable. The Complainant never tried to contact the Respondent’s representatives in the United Kingdom to discuss their concerns.
Accordingly, the Respondent possesses rights or legitimate interests in the disputed domain name, which was not registered or used in bad faith.
The Respondent requests a finding of reverse domain name hijacking. Indications of abuse include (i) the way in which the Complainant made assumptions about the Respondent’s motives; (ii) the Complainant’s allegation that the use of the term “vivo” implied an affiliation with the Complainant and that the term was not evocative of the Respondent’s services, which was proved to be untrue; and (3) the Complainant’s attempt to divert its arguments to other companies in the Respondent’s group, even though the disputed domain name was being used by an established United Kingdom business which was making a bona fide offer of goods and services while not impeding the Complainant’s business.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent does not dispute that the Complainant has established rights in the mark VIVO by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive use of that name in Brazil.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “transfer” is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is unnecessary to consider this element in light of the Panel’s conclusions under the third element below.
C. Registered and Used in Bad Faith
In order to assess whether the disputed domain name was registered in bad faith, the Panel must consider the likelihood that the Respondent registered the disputed domain name by reference to the Complainant’s trade mark.
As mentioned above, it is not in dispute that the Complainant’s VIVO mark enjoys a substantial reputation in the telecommunications industry in Brazil. The Respondent is engaged in a very different industry, but one with a connection to Brazil – namely, the remittance of monies to and from Brazil.
The Complainant argues that there is no legitimate reason for the Respondent to use the term “vivo” in the disputed domain name as users of the Respondent’s service are informed that the remittance is made by MS Bank. The Respondent has clarified that the Respondent itself offers remittances to Brazil and that MS Bank, an independently-owned company and business partner of the Respondent, is only included on the site to enable its United Kingdom users to arrange remittances from Brazil, which the Respondent is unable to do itself for regulatory reasons.
The Respondent emphasizes that the disputed domain name has always been used by its United Kingdom entity to target United Kingdom residents and claims that it selected the name “Vivo Transfer” for this particular service because it was more suitable to serve the “international community” than the Portuguese phrase “CambioReal”.
The Panel is not entirely convinced by this explanation. Presumably, a substantial part at least of the Respondent’s target United Kingdom clientele for remittances to Brazil comprises Portuguese-speaking persons of Brazilian origin. Consistent with this, the website at the disputed domain name is in both Portuguese and English (and indeed the Portuguese version appeared by default when the Panel visited the site.) The Panel also notes that the Respondent offers its services in another principally English-speaking country, the United States, under the name “CambioReal”.
Nonetheless, and although the Respondent does not specifically deny knowledge of the Complainant’s mark when it registered the disputed domain name, it fervently insists that its selection of the name was entirely independent of the Complainant.
In response to the Complainant’s observation that the Respondent is not using the word “vivo” for its dictionary meaning, the Respondent claims that it selected “vivo” by reference to its English meaning “happy”, “lively”, etc., different from the Portuguese meaning “alive” which, in English, makes no sense in conjunction with “transfer” (which term describes the Respondent’s service). The Panel is not in a position to judge this.
The Respondent has established, however, that there are other businesses in a diverse range of industries, both in the United Kingdom and elsewhere, which use the term “Vivo” as the dominant term within their company and trading names. No doubt, the term is used not so much for its exact dictionary meaning but more for its general allusion to life, liveliness, etc.
The Panel has examined the logo comparison presented by the Complainant. The Complainant’s own logo consists purely of the stylised lower case word “vivo” in black without any graphical elements. The Respondent’s logo consists of a rectangle with the lower case word “vivo” in a different (more elongated and slightly slanting) white font on a red background; the dot over the “i” has been converted into a small graphical element and the word “transfer” appears in a smaller font beneath. To the Panel, the only real similarity between the two logos is that they are both dominated by the word “vivo” in lower case. Certainly, there is nothing in the Respondent’s logo which suggests to the Panel that it was intended specifically to target the Complainant’s logo. Further, the Respondent has produced the logos of some other businesses using the name “vivo” and the Panel agrees with the Respondent that the Respondent’s logo is no closer to the Complainant’s logo than some of these, particularly one used on a website at “www.vivo.com”.
The Complainant invokes the fact it specifically offers a service called “Vivo Transfer”. This certainly raises a further question over the Respondent’s selection of the name as the combination of those terms is a far from obvious one. However, the Complainant gives no details about this service including its reputation, if any, in relation to the service at the time when the disputed domain name was registered, merely providing an untranslated page from its website. It was left to the Respondent to explain that this service involves transferring mobile data to another handset after an upgrade, far removed from the Respondent’s service. In any event, the Complainant has not demonstrated that it started offering its “Vivo Transfer” services before the Respondent registered the disputed domain name.
The Complainant further relies on the Respondent’s failure to respond to its cease and desist letter. In the circumstances of this case, including the Respondent’s explanation and the very comprehensive Response which has since been filed in this proceeding, the Panel does not consider that the Respondent’s failure to reply to the letter is significant.
In conclusion, the Panel has carefully weighed up all of the above matters. If the Respondent were engaged in the same or a similar industry to the Complainant, then the Panel would have had little difficulty in concluding that the Respondent set out to target the Complainant’s trade mark.
However, the parties operate in different industries and so it is not a given that the Respondent had a clear motive to capitalise on the Complainant’s mark.
The Panel finds that the matter is equally balanced. The most that can be said is that the Complainant has demonstrated a substantial reputation in the field of telecommunications in Brazil and the Respondent has used the same distinctive, but not unique, name for the United Kingdom part of its Brazil-related remittance services.
While, as explained above, the Panel is not entirely convinced by certain aspects of the Respondent’s case, in particular its reason for selecting a different trading name for its United Kingdom operation, the Panel does not consider that the Complainant has produced decisive evidence which clearly shows that the Respondent registered the disputed domain name with the Complainant’s mark in mind. The Complaint must fail because the Complainant is required to prove its case on the balance of probabilities. See section 4.2 of WIPO Overview 3.0.
This outcome does not of course prevent the Complainant from taking its case to court if it considers that it has grounds to do so. The UDRP is a limited administrative proceeding, without the benefit of disclosure of documents, examination of witnesses and the other components of court litigation. The Panel can only assess the case as best it can based on the information which has been placed before it by the Parties.
D. Reverse Domain Name Hijacking (“RDNH”)
The Panel has little difficulty in rejecting the Respondent’s assertion that the Complainant has engaged in RDNH. The Respondent has not identified any conduct by the Complainant which could remotely be considered abusive. The mere fact that the Complainant has lost the case is not enough; indeed, as explained, the Panel has concluded that the case is evenly balanced.
For the foregoing reasons, the Complaint is denied.
Date: July 16, 2018