The Complainant is Companhia Brasileira de Distribuição of São Paulo, Brazil, represented by Ricci Advogados Associados, Brazil.
The Respondent is Privacy Protection Service Inc D/B/A Privacyprotect.org of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
The disputed domain name <supermercadoextra.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2014. On November 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 17, 2014 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 amendment to the Complaint on November 25, 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 November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on January 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.
The Complainant, Companhia Brasileira de Distribuição , is a Brazilian company, established for over 55 years as a national leader of the retail segment and controller of famous retail networks, among which is the EXTRA trademark, since 1989. Throughout these 20 years, the Complainant has spread the EXTRA trademark through several segments and variations of supermarkets.
The Complainant is the owner of the trademark EXTRA in Brazil through registration No. 814824447, dated June 11, 1991, among many other trademark registrations.
The Complainant has also a wide variety of domain names comprised of the EXTRA trademark, including <supermercadoextra.com.br>.
The disputed domain name < supermercadoextra.com> was registered on February 1, 2006.
The Complainant provides evidence demonstrating its ownership of the trademark EXTRA and states that it has used this trademark through several segments and variations of supermarkets.
The Complainant claims that the disputed domain name <supermercadoextra.com> is a total reproduction of the Complainant’s trademark.
The Complainant states that the Complainant’s trademark is being used without permission as a domain name. It further adds that the simple existence of the disputed domain name bearing the trademark in question is impeding the Complainant to exercise its right to explore it in its own benefit.
The Complainant states that there is no doubt that the Respondent’s conduct is in bad faith, considering the disputed domain name is being used to passively obtain benefits through a website created to be confused with the Complainant ‘s, besides using the disputed domain name for sponsored links, including announcements and websites of the Complainant‘s competitors.
Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and used the disputed domain name in bad faith. The Complainant requests that the Panel order transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its claim, a complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
The Complainant has been able to demonstrate that it has rights to the trademark EXTRA and that the trademark is well-known in Brazil. The Complainant owns hundreds of trademarks before the National Institute of Industrial Property in Brazil as well as dozens of domain names comprised of the EXTRA trademark.
Even though this Panel does not agree with the assertion made by the Complainant that the disputed domain name is a “total reproduction” of the Complaint’s trademark, the Panel agrees that it does incorporate as a whole the Complainant’s registered trademark, with the addition of the generic term “supermercado”, the Portuguese word for “supermarket”, which is one of the Complainant’s main areas of business.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to other of the Complainant’s trademarks, such as EXTRA HIPERMERCADOS (“hipermercado” also meaning “supermarket” in Portuguese), registered in Brazil on August 9, 2011 under Registration Number 815463065.
In addition to the above, the possibility of confusion clearly increases since the main service provided by the Complainant is that of retail, and more specifically that of supermarkets.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
Under paragraph 4(a) of the Policy, it is clearly stated that 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 a disputed 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 addition to the above, it is also stated that it is also the Complainant’s obligation to prove that the disputed domain name was registered and is being used in bad faith.
Therefore, the most important task for the Complainant is to prove the above assertions. How to do so has been clearly indicated by Cecil O.D. Branson: “For evidence to serve this purpose, it should be shown to be both credible and material. The word ‘material’ means that it is rationally probative of material facts in issue. Simply put, could a reasonable person use this evidence to support the material fact, which is to be proven? In each case, the parties are, in turn, given an opportunity to assert that such-and-such evidence proves a material fact. Then, the material facts so proven, in turn, are used to prove each of the three elements required. To summarize, each of the three elements depend on proof of their constituent material facts. Proof of each of these facts is dependent on evidence which is accepted by the tribunal adjudicating the dispute. Mere ‘assertions’ are nothing more than argument and must in each case be based on facts proved through evidence”. Koninklijke Philips Electronics N.V. v. Relson Limited WIPO Case No. DWS2001-0003.
Consequently, the bare assertions that the Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s mark, that the Respondent has no legitimate interests or rights in the disputed domain names, and that the Respondent registered the disputed domain name and is using it in bad faith provides no specific reasons for these bare assertions.
This Panel understands that it may be difficult to prepare a case against an unknown Respondent, however this is the reason why there is no applicable statute of limitations on a complaint. A complainant may submit a complaint when it deems that it has obtained sufficient evidence to prove each and every assertion indicated in the Policy. However, if a Complaint is lacking in argument and evidence, it is not the Panel’s role to perfect a pleading.
The above cannot be waivered though no Response has been provided. Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules, in the event of a respondent default’, the Panel is still required "to proceed to a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is clear that the Panel must assess the Complaint on its merits.
In this case, the Complainant’s allegations on the last two assertions are poor in argument and lacking in specificity that the Panel does not consider that they amount to a prima facie case.
The Complainant indicates as argument that the Respondent has no rights or legitimate interest by stating that the Complainant’s trademark is being used without its permission.
The Complainant further proceeds to state, “This irregular use can cause serious damages to the reputation, image and fame of the Complainant”.
The Complainant also indicates that the simple existence of the disputed domain name bearing its trademark impedes the Complainant from exercising its rights. Even though it is true the Complainant is unable currently to use the disputed domain name, the existence of the disputed domain name has not impeded the Complainant to the use of its rights, since it has many several domain names registrations, including the domain name <supermercadoextra.com.br>. An important matter to point out is the fact that the disputed domain name has been in existence since 2006, consequently, the Complainant could have easily compiled enough evidence of how this particular domain name has damaged the Complainant’s reputation and good name, but it has chosen not to do so. However, it is also true that the fact that the Complainant has shown that the disputed domain name is being used to host a website with commercial links to the Complainant’s top competitors is evidence of bad faith use, as it has been used to “passively obtain benefits through a website created to be confused with the Complainants one”. Moreover, the website screenshot provided by the Complainant, showing commercial links to the Complainant’s competitors, evidences the likelihood that the Respondent did have knowledge of the existence of the Complainant’s trademark and targeted the Complainant. Finally, the Panel notes that the Respondent Domain Admin, Private Registrations Aktien Gesellschaft has been a party to dozens of UDRP proceedings, e.g. Banco Davivienda S.A. v. Domain Name, Privacy Protection Service INC d/b/a PrivacyProtect.org. / Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2014-1922, Groupon Inc. v. Domain Name, Privacy Protection Service INC d/b/a PrivacyProtect.org. / Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2014-1488, and Furniture Holding b.v. v. Domain Name, Privacy Protection Service INC d/b/a PrivacyProtect.org. / Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2014-1300.
In conclusion, after reviewing the arguments set forth by the Complainant and the evidence provided by it, the Panel finds that this evidence was merely that of the Complainant’s trademark registrations and the existence of Extra Supermarket in Brazil, but no substantial argument demonstrating the lack of interests and rights in the domain name or the registration and use of the trademark in bad faith. Furthermore, since the Respondent is not a national of Brazil, one could conclude that it had no knowledge of the existence of the Complainant’s trademark registrations. The only evidence that could possibly allow one to consider the possibility that the Respondent did have knowledge of the existence of the Complainant is the printout of the Respondent’s website.
However, as above indicated, it is not the Panel’s role to try to create arguments on behalf of the Complainant if there are no sufficient merits to come to a well argued conclusion that paragraph 4(a) of the Policy is fulfilled.
The Panel therefore holds that the Complainant has satisfied paragraphs 4(a)(ii) and (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 <supermercadoextra.com> be transferred to the Complainant.
Andrea Dawson
Sole Panelist
Date: January 16, 2015