The Complainant is Vulcabras / Azaleia - RS, Calçados e Artigos Esportivos S.A. of Rio Grande do Sul, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is Privacy Protection Service Inc d/b/a Privacyprotect.org of Queensland, Australia / Joao Paulo Santos of Nova Serrana, Brazil.
The disputed domain name <tenisolympikus.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 September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2015, 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 Complainant filed an amended Complaint on September 24, 2015.
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 October 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 3, 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 is the owner of the trademark OLYMPIKUS registered in Brazil under No. 810548941 (Annex 4 to the Complaint), as well as 21 other countries (Annex 5 to the Complaint). The Complainant’s trademark has been registered at least since 1984.
The Complainant is a Brazilian company, today a world leading producer of footwear and sporting goods, manufacturing more than 100,000 (one hundred thousand) pairs of shoes on a daily basis.
The OLYMPIKUS trademark is largely advertised in Brazil (Annex 7 to the Complaint).
The disputed domain name <tenisolympikus.com> was registered on October 18, 2011. Currently an active website resolves from the disputed domain name on which the Complainant’s trademark and history is depicted, and a link to a shoes reseller is displayed.
According to the Complainant, the disputed domain name reproduces its registered trademark and domain names and is confusingly similar to the OLYMPIKUS trademark given that the addition of the prefix “tenis” is not relevant and contributes to creating a link to the Complainant’s products, and could mislead Internet users into believing that the disputed domain name is owned by the Complainant or by a related company.
Furthermore, “tenis” is usually used in Portuguese in relation to the Complainant’s most typical products which are tennis shoes or sneakers, a term fitted to creating an impression that the disputed domain name belongs to, or is affiliated with, the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. No license or authorization of any kind has been given by the Complainant to the Respondent to use the OLYMPIKUS trademark;
ii. The disputed domain name is being used in connection with links to other sites reselling shoes which could indicated that the Respondent is using the disputed domain name to sell advertising space; and
iii. the Respondent is not commonly known by the disputed domain name.
As relates to bad faith in registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s well-known trademark is evident given the reproduction of its logotype and products on the Respondent’s website. The only possible conclusion that can be made is thus that the Respondent knew about the Complainant’s trademark and reputation, and used them to its advantage in bad faith.
Furthermore, the Complainant tried to contact the Respondent on July 29, 2015, and requested the voluntary transfer of the disputed domain name (Annex 10) but received no reply from the Respondent.
Lastly, the Respondent, by retaining a Privacy or Proxy Service has actively taken steps to conceal its true identity what, as past UDRP panels have concluded is a factor indicative of a respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
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(a) of the Policy.
The Complainant has established its rights in the OLYMPIKUS trademark.
In this Panel’s view the prefix “tenis”, which in Brazil is commonly used when referring to “tennis shoes” or “sneakers”, is easily associated with the Complainant since its OLYMPIKUS trademark can be considered well-known in connection with footwear and sporting goods, and is thus not sufficient to avoid a risk of undue association between the disputed domain name and the Mark by the Complainant’s customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
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 disputed 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 disputed domain name, even if it has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at the least a prima facie case against the Respondent.
In that sense, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant’s statement that no authorization or license was granted for the use of the OLYMPIKUS trademark in the disputed domain name corroborate with the indication of a lack of rights or legitimate interests in the disputed domain name.
The question then falls under whether legitimate interest could be found in view of the information and advertisements made through the disputed domain name, i.e., the history of the Complainant’s trademark and links to footwear resellers.
According to the evidence submitted by the Complainant (print-outs of the website that resolves from the disputed domain name) indeed no express disclaimer is made as to a lack of relationship between the parties. Furthermore, the reproduction of the Complainant’s products and logotype lead this Panel to the conclusion that the Respondent is seeking to create a false impression of association with the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
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.
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a 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, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark logotype in connection with the Complainant’s products on the website that resolves from the disputed domain name.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Lastly, the use of a privacy service by the Respondent further support, in the circumstances of this case, the Panel’s finding of bad faith.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <tenisolympikus.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 17, 2015