The Complainant is Pagseguro Internet S.A., Brazil, represented by Dannemann Siemsen Advogados, Brazil.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o., Czech Republic / Hulmiho Ukolen, Poste restante, Finland.
The disputed domain name <pagseguros.com> (“the Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 29, 2020 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 December 29, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 16, 2021. 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 is a Brazilian limited stock company established in 2006 and headquartered in São Paulo, Brazil. The Complainant is a subsidiary of the UOL Group (Universo Online), which is a leader in the Brazilian and Latin American online payment and ecommerce market, providing payment solutions for ecommerce, virtual stores, and commercial establishments. These solutions include online and mobile phone payment systems, payment cards and card readers, virtual wallets, and financing for micro businesses. The Complainant has been listed on the New York Stock Exchange since 2018, and the record shows that the Complainant has received awards and public recognition for excellence in financial services and modern consumer services.
The Complainant began applying in 2007 for registration of figurative trademarks featuring the name “Pagseguro” (apparently coined from the Portuguese and Spanish verb pagar, to pay, and the adjective seguro, safe) as the prominent word element, and it now holds numerous registered trademarks in several Latin American countries, including the following:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
PAGSEGURO (figurative) |
Mexico |
0904465 |
March 24, 2008 |
|
PAGSEGURO (figurative) |
Brazil |
900460059 |
March 27, 2012 |
|
PAGSEGURO (figurative) |
Colombia |
584522 |
February 1, 2018 |
|
PAGSEGURO (figurative) |
Peru |
T00018100 |
October 4, 2017 |
|
PAGSEGURO (figurative) |
Chile |
1264454 |
December 5, 2017 |
|
PAGSEGURO (figurative) |
Argentina |
3612324 |
October 18, 2019 |
PAGSEGURO marks have appeared online, in print and broadcast media advertising, and on correspondence and product labeling over the past fifteen years. The Complainant uses several domain names based on the PAGSEGURO mark, including <pagseguro.uol.com.br>, <pagseguro.com>, <investors.pagseguro.com>, <pagseguro.com.br>, <pagseguro.br>, <pagseguros.com.br>, and <pagseguro.app.br>.
The Registrar, a Czech company, reports that the Domain Name was created on March 22, 2016 and registered in the name of a domain privacy service, listing the registrant organization as “Whois protection, this company does not own this domain name s.r.o.” (An “s.r.o.” is a Společnost s ručením omezeným or limited liability company under Czech law.) After receiving notice of this UDRP complaint, the Registrar identified the Registrant Name as Hulmiho Ukolen and the Registrant Organization as Poste restante (general delivery) with the Registrant Street at the Helsinki, Finland main post office.
The Complaint attaches screenshots showing that the Domain Name has been used for a “not secure” landing page displaying third-party pay-per-click (PPC) advertising links in Portuguese. The page information described the site as “Pag Seguro Uol Recursos e Informações” (Pag Seguro Uol Resources and Information).
The Respondent did not reply to correspondence from the Complainant or the Center and did not submit a Response in this proceeding. The Panel notes that the same Respondent, with the same contact details and pattern of use, figured as the respondent in several other WIPO UDRP proceedings, including these:
Instagram, LLC v. Whois protection / Hulmiho Ukolen, Poste restante, WIPO Case No. D2018-1304;
Skyscanner Limited v. Domain May Be For Sale, Check afternic.com Domain Admin / Hulmiho Ukolen, WIPO Case No. D2017-1946;
Abbott Laboratories v. Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-2124;
AdvancedMD, Inc. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-0876;
iS3, Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0933;
LEGO Juris A/S v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0927.
In each of these cases, the Respondent similarly failed to reply to the Complaint, and the panel found that the Respondent had registered and used the disputed domain name(s) in bad faith and ordered transfer to the complainant in the proceeding.
The Complainant asserts that the Domain Name is confusingly similar to its PAGSEGURO trademarks and that the Respondent has neither permission from the Complainant nor other evident rights or legitimate interests in the Domain Name.
The Complainant infers the Respondent’s bad faith because of the “notable renown” of the PAGSEGURO mark and the fact that the Domain Name has been used only for PPC advertising in the Complainant’s language, by a hidden Respondent with no evident legitimate, relevant use for Domain Name. The Complainant observes that search engine queries based on the Domain Name prominently return results pointing to the Complainant. Thus, it is difficult to imagine that the Respondent was unaware of the Complainant, and it is fair to conclude that the Respondent intended to profit from the Complainant’s reputation.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered, figurative trademarks in which the name PAGSEGURO is the prominent element. The Domain Name incorporates this well-known mark in its entirety and adds a plural letter “s” at the end, which does not avoid confusion (see id. section 1.9). As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.1.
The Panel concludes that the first Policy element is established on these facts.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use of the Domain Name for PPC advertising with a misleading page description falsely suggesting affiliation with the Complainant. This shifts the burden to the Respondent to produce evidence of rights or legitimate interests. The Respondent has failed to do so, and the Panel finds that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent was clearly aware of the Complainant’s PAGSEGUROS mark. The word element of the mark is a distinctive coined term recognizable in Portuguese and Spanish, which is well established online and in Latin American e-commerce and retail consumer markets. The PPC advertising page formerly associated with the Domain Name included a page description expressly referring to the Complainant and its parent company UOL, thus falsely indicating an association with the Complainant and revealing knowledge of the Complainant. Parking the Domain Name for PPC advertising is consistent with the example of misdirection for commercial gain as described in the Policy, paragraph 4(b)(iv). The Respondent’s subsequent conduct in obscuring its identity and failing to respond to the Complainant or the Center supports an inference of bad faith, as does the fact that this fits the pattern of the Respondent’s conduct as reported in several previous UDRP proceedings.
The Panel concludes that the Complainant has established the third element of the Complaint, registration and use in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <pagseguros.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: March 6, 2021