WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Estácio Participações S.A. v. Domain Admin, A D D R E S S O R - Domain Registration Service

Case No. D2014-1126

1. The Parties

The Complainant is Estácio Participações S.A. of Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.

The Respondent is Domain Admin, A D D R E S S O R - Domain Registration Service of Rio de Janeiro Brazil, self-represented.

2. The Domain Name and Registrar

The disputed domain name <estacio.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2014. The Response was filed with the Center on July 24, 2014.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 28, 2014. 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.

On August 14, 2014 the Panel issued the Administrative Procedural Order No. 1 requesting the Complainant to provide: (i) evidence that the Complainant has the right to act on behalf of Sociedade de Ensino Superior Estácio de Sá which appears to be the owner of the registered trademarks upon which the Complaint is based; (ii) full copies of the trademark registration certificates on which the Complaint is actually grounded; (iii) evidence that the Complainant adopted/used the trademark ESTACIO before the registration of the disputed domain name; and (iv) explain why the complaint was only now filed.

On August 21, 2014, the Complainant requested a new deadline to reply to Procedural Order No. 1 given that the Center’s message containing the Procedural Order had been delivered to the Complainant’s counsel spam box. On August 22, 2014, the Panel granted an extension to the Complainant, ending on August 27, 2014. The Respondent, on August 22, 2014 sent an email message to the Center affirming that it would not challenge the Panel’s decision to extend the Complainant’s deadline to reply to the Procedural Order No. 1. On August 27, 2014, the Complainant’s submissions were received by the Center. The Respondent was granted until September 1, 2014, to reply to the Complainant’s submission. No further submission was received by the Center from either party.

4. Factual Background

The undisputed facts of the case are that:

- On January 10, 1970, Sociedade de Ensino Superior Estácio de Sá was founded in Rio de Janeiro instituting the Faculdade de Direito Estácio de Sá (the Estácio de Sá Law School) (Annex 1 to the Complainant’s reply to Procedural Order No. 1);

- On March 31, 2007, the Complainant was founded (Annex 5 to the Complainant’s reply to Procedural Order No. 1) and is currently the main shareholder of the Sociedade Ensino Superior Estácio de Sá Ltda. (Annex 6 to the Complainant’s reply to Procedural Order No. 1);

- Sociedade de Ensino Superior Estácio de Sá is the owner, among others, of the following trademark registrations (Annex 8 to the Complainant’s reply to Procedural Order No. 1):

Trademark Registration No. 817224831, filed on May 3, 1993 and registered on April 4, 1995, successively renewed, for the composite mark UNIVERSIDADE ESTÁCIO DE SÁ INTERNATIONAL STUDIES OFFICE with the express disclaimer of no exclusive use of the terms “universidade” and “international studies office”;

Trademark Registration No. 817546510, registered on December 12, 1995, successively renewed, for the composite mark UNIVERSIDADE ESTÁCIO DE SÁ;

Trademark Registration No. 820427292, filed on December 12, 1997 and registered on April 10, 2001, successively renewed, for the composite mark UNIVERSIDADE ESTÁCIO DE SÁ – CORRIDA UNIVERSITÁRIA DO RIO DE JANEIRO, with the exclusive use solely over the expression “estácio de sá”;

Trademark Registration No. 824740130, filed on June 19, 2002, and registered on July 31, 2007 for the composite mark UNIVERSIDADE DE MATURIDADE UNIVERSIDADE ESTÁCIO DE SÁ with the express disclaimer of no exclusive use of the terms “universidade” and “universidade de maturidade”;

Trademark Registration No. 826552676, filed on May 25, 2004 and registered on August 14, 2007, for the composite mark ESTÁCIO;

Trademark Registration No. 829390103, filed on September 25, 2007 and registered on December 29, 2009, for the composite mark ESTÁCIO UNIVERSIDADE, with the express disclaimer of no exclusive use of the term “universidade”;

Trademark Registration No. 829608311, filed on February 22, 2008 and registered on November 3, 2010 for the composite mark ESTÁCIO ENSINO SUPERIOR, with the express disclaimer of no exclusive use of the terms “ensino superior”.

On April 16, 2012, Sociedade Ensino Superior Estácio de Sá Ltda. expressly granted its consent to the Complainant to use its trademarks ESTÁCIO and/or ESTÁCIO DE SÁ (Annex 7 to the Complainant’s reply to Procedural Order No. 1);

The disputed domain name <estacio.com> was registered on March 6, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to its well-known ESTÁCIO, UNIVERSIDADE ESTÁCIO DE SÁ and ESTÁCIO UNIVERSIDADE marks as well as to the <estacio.com.br> (registered on March 4, 1996) and <estacio.br> (registered on March 31, 2000) domain names that incorporate the term “estacio”, thus creating a likelihood of confusion between the disputed domain name and the Complainant’s trademarks and domain names.

The Complainant further states that the Respondent does not have rights or legitimate interests in the disputed domain name given that:

i. the Respondent does not own a trademark registration or application for ESTÁCIO (Annex 7 to the Complainant’s reply to Procedure Order No. 1);

ii. the Complainant has no relationship with the Respondent, nor has it ever authorized the Respondent to use the disputed domain name;

iii. the Complainant’s trademark is well-known in Brazil and has been in use since the 1970s, long before the registration of the disputed domain name;

iv. the Respondent is not commonly known or identified by the expression “Estácio”; and

v. the Respondent is not making a legitimate use of the disputed domain name given that it is being used to host pay-per-click (“PPC”) advertising websites related to the Complainant’s activities, including advertising for the Complainant’s competitors, as well as to directing Internet users to pages where suspicious files are available for download.

Under the Complainant’s view, the Respondent’s bad faith in registering and using the disputed domain name is evident given that the content of the website associated with the disputed domain name clearly indicates that the Respondent was aware of the Complainant’s famous mark at the time of the registration of the disputed domain name and specifically selected it in an attempt to create a likelihood of confusion, also likely disrupting the Complainant’s business given that the Complainant’s prospective customers and potential clients are redirected to the Complainant’s competitors.

B. Respondent

The Respondent sustains that the Complaint was presented in bad faith given that the Complainant does not own a nominative trademark registration for the term “estácio” and that all trademark registrations on which the Complainant grounded the Complaint are composite trademarks which do not grant exclusive rights over such expression to the Complainant. As a consequence, the disputed domain name is not identical to any trademark owned by the Complainant.

The Respondent further asserts that “Estácio” is a Portuguese common personal male name, having the Complainant been named after a former Governor of Rio de Janeiro, where both the Respondent and the Complainant are located.

Furthermore, Estácio de Sá is also the name of the first School of Samba in Brazil, as well as the name of a neighborhood in Rio de Janeiro, Brazil.

As to its rights or legitimate interests the Respondent asserts that it has registered the disputed domain name on March 6, 2004, and ever since has been using it in connection with a PPC service, what in its point of view consists of a legitimate use given that it is not offending any trademark given that no word mark for the term “estácio” has been granted to the Complainant.

Lastly, the Respondent points out that the Complainant has been awarded the “.br” level for its educational activities and can thus use <estacio.br>.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established its connection with Sociedade de Ensino Superior Estácio de Sá which is the owner, among others, of several trademark registrations that incorporate the expressions “estácio”, “estácio universidade” and “universidade estácio de sá” (Annex 4 to the Complaint and Annexes 6, 7 and 8 to the Complainant’s reply to Procedural Order No. 1). This Panel therefore has to address the issue whether such connection and express consent to use the trademarks qualifies the Complainant to act as a complainant under the UDRP.

Several UDRP panels have already dealt with such question. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8, shows, it is consensual that “[i]n most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”

This Panel is therefore comfortable in finding that the Complainant has standing under the present UDRP proceeding as the main shareholder of Sociedade Ensino Superior Estácio de Sá as well as this company’s express consent for the Complainant to use its marks.

Turning now to the dispute, a careful review of the trademark registrations owned by Sociedade de Ensino Superior Estácio de Sá shows that it holds exclusive rights over the expressions “estácio” and “estácio de sá” as a consequence to several disclaimers made by the Brazilian Trademarks Office as to the absence of rights over the generic expression “universidade” and related ones - none of which mentions the word “estácio” (except for the registration No. 820427292, for “UNIVERSIDADE ESTÁCIO DE SÁ – CORRIDA UNIVERSITÁRIA DO RIO DE JANEIRO”, which on the contrary brings the “exclusive use solely over the expression “estácio de sá”).

In this Panel’s view, the disputed domain name is therefore confusingly similar to the trademark registrations owned by Sociedade de Ensino Superior Estácio de Sá.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired 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.

The Respondent points out that “Estácio” is a Portuguese common personal male name, as well as the name of a former Governor of Rio de Janeiro, the name of the first School of Samba in Brazil, and lastly of a neighborhood in Rio de Janeiro, Brazil. These observations are correct but the Respondent has not shown that is it known by that name, nor that it has used the disputed domain name in connection with any of these meanings or “common uses” of the expression “Estácio”.

In its Response, the Respondent confesses that it is using the disputed domain name in connection with a PPC service. Moreover, considering that the websites being advertised at the webpage that resolves from the disputed domain name are related to the Complainant’s activities, including advertising for the Complainant’s competitors, this Panel finds that the Respondent is not making a bona fide offering of goods or services with the disputed domain name given that the Complainant’s consumers might be diverted to such other websites.

The Respondent claims that it is not offending any trademark given that no word mark for ESTÁCIO has been granted to the Complainant. The Respondent’s rationale does not however convince the Panel given that the Complainant has shown that it has been awarded protection in Brazil for the word “estacio” under the various trademark registrations upon which the Complaint is grounded (see among others, the composite mark ESTÁCIO, Trademark Registration No. 826552676).

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith can be evidenced by the use of the disputed domain name with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the Panel is of the opinion that the use of the disputed domain name to divert users to the Complainant’s competitors characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from an undue association with the Complainant’s trademark incorporated in the disputed domain name.

There is however a question that the Panel needs to address and which relates to the considerable delay in the Complainant bringing up the case. Indeed the disputed domain name was registered in 2004 and it took 10 years for the Complainant to lodge this case.

The WIPO Overview 2.0, paragraph 4.10, states that “Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”

This Panel agrees with the vast majority of previous cases and recognizes that, considering the harmful nature of the use that the Respondent selected to make of the disputed domain name to Complainant’s trademark rights, the delay in bringing the case should not be an obstacle in recognizing the bad faith in the Respondent’s conduct.

In balancing the interests at issue (i.e. profiting from a well-known trademark vs. avoiding future confusion as to the source of services) this Panel is in favor of benefiting the trademark rights owner who has spent considerable sums of money and has been using the trademark for decades rather than favoring those that are merely profiting from what a naïf observer might consider apparent irrelevant activities such as parked pages.

It is important to mention that parked pages that produce high levels of hits/users and are thus profitable do not pose a problem per se. The question lies in the ones whose success solely relies on third party’s rights.

Lastly, had the Respondent really had used the disputed domain name in connection with the “common uses” of the term (and evidenced it) the conclusions of this Panel under the second and third element would very likely have been different.

For the same reasons as those stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

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 <estacio.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 5, 2014