The Complainant is CENECT- Centro Integrado de Educação, Ciência e Tecnologia Ltda. of Curitiba, Paraná, Brazil represented by Abreu, Merkl e Advogados Associados, Brazil.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <grupouninter.com> is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2012, 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 December 28, 2012 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 January 9, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2013.
The Center appointed Fabio Angelini as the sole panelist in this matter on February 20, 2013. 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.
According to the Complainant, CENECT- Centro Integrado de Educação, Ciência e Tecnologia Ltda., located in Curitiba, State of Paranà, Brazil, since 1996, is currently one of the largest educational groups in the country. It offers a wide range of education-related products and services, like graduate and post-graduate courses and didactic material.
The Complainant is also the owner of a number of Brazilian trademark registrations for the term UNINTER, the first of which is a figurative mark for UNINTER UNIVERSIADE INTERNACIONAL first filed on September 15, 1999. Among these marks, the Complainant lists: GRUPO EDUCACIONAL UNINTER, number 827489307, filed on May 16, 2005 and granted on October 9, 2007, designating teaching and educational services of any kind and degree, UNINTER CENTRO UNIVERSITARIO INTERNACIONAL, number 827489315, filed on May 16, 2005 and granted on April 20, 2010, designating teaching and educational services of any kind and degree, and other figurative marks where the term UNINTER appears. Furthermore, the Complainant is the owner of 3 applications for UNINTER in the United States which all received the notice of allowance, and the Community Trademark registration No. 10225951, UNINTER, filed on August 30, 2011 and granted on December 23, 2011, designating computers; computer software, recorded; computer peripheral devices; data processing apparatus; teaching apparatus in class 9; books; printed matter; printed publications; teaching materials [except apparatus] in class 16 and educational services; publication of texts, other than publicity texts; publication of books in class 41.
The Complainant is aware that the Respondent registered the disputed domain name <grupouninter.com> on January 28, 2012 and the website is used to display a list of links advertising several educational institutions in Brazil which are direct competitors of the Complainant.
The Complainant argues that the disputed domain name is similar to the service mark of the Complainant because, according to the Complainant, “anyone who searches for “Uninter” on the web would convince oneself that “groupouninter” refers to Grupo Educacional Uninter”.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests because the first trademarks of the Complainant were filed in September and October 1999 while the disputed domain name was created on January 28, 2012 and “at that moment the Complainant had the right of priority over that sign”. The Complainant acknowledges that the trademark registrations were granted by the Brazilian Trade Mark Office and therefore grant exclusive rights over Brazil; however the Complainant asserts that the Respondent has been using the disputed domain name <groupouninter.com> “to disclose advertisement of competitors of the Complainant in Brazil”. Furthermore, the Complainant states that no authorization or license on Complainant’s marks was ever granted to the Respondent.
Finally the Complainant argues that the disputed domain name is used in bad faith because the website presents a list of advertisements and sponsoring of several links regarding educational services and products, “which is the exact same business area of the Complainant”. According to the Complainant, the Respondent is only using the disputed domain name to confuse and attract Internet users to its website in order to expose them to these advertisements and sponsorship links. Furthermore, the Complainant asserts that the Respondent “registered the disputed domain name in a too similar way of the domain name that the Complainant owns in Brazil”, i.e. <grupouninter.com.br>. For the Complainant “it would be too much of a coincidence that the website under <grupouninter.com>” lists all kinds of educational services provided by the Complainant's competitors in Brazil, even if the Respondent is not related at all with the Complainant.
In accordance with the foregoing, the Complainant requests the disputed domain name to be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The Panel agrees with the Complainant that under the circumstances of this case, there is a high similarity between the disputed domain name and the Complainant’s trademarks which may easily lead Internet users into confusion and therefore the Panel is satisfied that the first element has been proven. The disputed domain name <grupouninter.com> is composed by the Complainant's distinctive and dominant trademark UNINTER which is registered in many forms and countries around the world. Furthermore the Complainant has a registration for GRUPO EDUCACIONAL UNINTER which is nearly identical (save for the descriptive element EDUCACIONAL) with the disputed domain name <grupouninter.com>.
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of the Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
While under the UDRP rules, the overall burden of proof rests with the complainant, panels have recognized the difficulty of proving a negative fact which requires information that normally the respondent owns.
Therefore, panels have held that once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. (De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
In this case, the Panel finds that the Complainant has made a sufficiently convincing prima facie case that the Complainant has been using its marks for more than a decade and that the Respondent lacks rights or legitimate interests in the name “grupouninter”, given that the Respondent's name is not and does have any resemblance to “grupouninter” and that the Complainant denied any relationship whatsoever between the parties.
In light of the foregoing and in absence of any contrary arguments by the Respondent, who is in default, the Panel is satisfied that the second element as well has been proven.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 of the Respondent’s website or location or of a product or service on its website or location.
As the Rules clearly indicate, in order for the panel to adjudicate a domain name dispute, the panel must find that the domain name was registered and is being used in bad faith. In other words, the panel must examine separately two issues which takes place in different moments: 1) whether or not bad faith existed when the disputed domain name was registered; and 2) whether or not the disputed domain name is being used in bad faith.
It is not always easy to draw a clear line between these two circumstances, given that the former requires the evaluation of a static event, while the latter requires examining the dynamics of a conduct during a period of time. The Panel is also aware that in many instances, it is quite difficult to keep these two circumstances separate.
However, the Complainant has a duty to examine and argue both circumstances and it is not the panel's job to do so.
In the present case, the Complainant has only examined and argued that the disputed domain name is being used in bad faith, but said nothing and did not proffer any argument about the disputed domain name having been registered in bad faith.
It is true that the Complainant asserted that attention should be paid to item (iv) of paragraph 4(b) of the Policy. Citing Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, from which the Complainant quoted, inter alia:
“The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to 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 of your website or location or of a product or service on your website or location.”
However, such a passage was clearly inserted in the paragraph 5.3, titled “The domain name is used in bad faith” and the passage is used to reach the following conclusion: “Therefore, this means that the Respondent is responsible for all content appearing on the website under the owned domain name, not mattering if he himself put it on there or not”. Nothing in this passage, in the view of the Panel, may be held to amount to discuss or otherwise argue that the disputed domain name was registered in bad faith.
With regard to the bad faith element, having carefully considered the facts contained in the case file, the Panel therefore finds that the Complainant failed to meet its burden of proof. It is well established that general allegations or mere assertions of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which a panel may conclude that a respondent acted in bad faith (Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954); even more so, a panel cannot conclude that a respondent registered a domain name in bad faith when the complainant totally omitted any indication or reference or argument about such a circumstance.
Accordingly, the Panel finds that the Complainant has failed to establish the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Fabio Angelini
Sole Panelist
Date: March 28, 2013