The Complainant is Companhia Brasileira de Distribuição, of São Paulo, Brazil, represented by Dannemann Siemsen, Brazil.
The Respondent is DNS Admin, Domain Privacy LTD of Marblehead, Massachusetts, United States of America / Domain Hostmaster, Customer ID: 18322992343873, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.
The disputed domain name <paodeacucar.com> is registered with Fabulous.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2016. On April 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2016, 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 April 13, 2016 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 April 13, 2016.
The Center verified that 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 April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 23, 2016. 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.
Due to exceptional circumstances, the Panel extended the due date for rendering its decision to June 13, 2016.
The Complainant is a Brazilian company member of the Pão de Açúcar Group, a group founded in the year 1948. The group is the owner of several important supermarket chains in Brazil.
The Complainant operates in 20 states in the Brazilian territory, with more than 2,000 retail stores and around 146,000 employees. The company, which has headquarters in São Paulo, is positioned as one of the world's largest retailers group.
The Complainant has acquired a notable renown in Brazil and has used and developed trademark PÃO DE AÇÚCAR enjoying brand recognition and goodwill.
The Complainant's trademark has been in use in Brazil for more than 45 years. The Complainant has provided evidence of registration of the trademarks PÃO DE AÇÚCAR and PAO DE ACUCAR in several classes and of the use of the trademark since 1970.
According to the Complaint, the trademark PÃO DE AÇÚCAR was valued at USD 147 million and listed as the 8th most valuable retail brand in Brazil, and the 18th in Latin America, in the Best Retail Brands' ranking, released by consultancy Interbrand in 2014. Recently, one of the largest market research companies in Latin America, IBOPE (Brazilian Institute of Public Opinion and Statistics), has issued a market research which showed that trademark PÃO DE AÇÚCAR is familiar to at least 86per cent of the population within its operational region.
The Complainant operates a website under <paodeacucar.com.br> where its products are sold.
The disputed domain name <paodeacucar.com> is used for pay-per-click advertising. It was registered on May 27, 2005.
The Complainant has registered the trademark PÃO DE AÇÚCAR and the trademark PAO DE ACUCAR and design in Brazil and in numerous jurisdictions around the world.
The Complainant states that the disputed domain name is identical similar to the trademark PÃO DE AÇÚCAR.
With respect to rights or legitimate interests the Complainant states that:
- The Respondent does not operate a business under the trademark PÃO DE AÇÚCAR and therefore it is not known under the name Pão de Açúcar.
- The Respondent does not have any kind of relationship with the Complainant.
- The Respondent is not making a legitimate noncommercial or fair use of disputed domain name since when accessing the webpage "www.paodeacucar.com" the Internet user is automatically redirected to the webpage "ww5.paodeacucar.com" where he finds several categories of sponsored links. When clicking on subcategories such as "Ofertas Supermercados", "Compras Online", "Comprar bolos" and "Resgatar Pontos", the Internet user faces a list of sponsored links of products and services which directly compete with the Complainant's goods.
With respect to bad faith registration and use, the Complainant states that:
- The Respondent's bad faith should be analyzed together with the well-known status of PÃO DE AÇÚCAR mark. Due to the notable renown of the PÃO DE AÇÚCAR mark, it is extremely unlikely that someone in good faith would register the disputed domain name <paodeacucar.com>.
- This statement is corroborated, first, by the fact that the expression PÃO DE AÇÚCAR is inevitably associated to the Complainant and its activities. Second, the Respondent does not conduct any bona fide commercial or noncommercial business under PÃO DE AÇÚCAR trademark.
- The disputed domain name's Registrar specializes in generating revenue through pay-per-click links from the traffic received by its domain names.
- In the present case, as previously stated, the Respondent has been using the disputed domain name as a parking page for sponsored links in the same language as used by the Complainant, enabling Internet users to access websites that are not connected to the Complainant. In most cases, Internet users are directed to competing websites that commercialize groceries, food, home appliances and housewares.
- The Respondent has undertaken not to infringe third party rights in its registration agreement (as per paragraph 2 of the UDRP).
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
The Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above. The Panel proceeds to deal with each of these elements in turn.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has sufficiently established trademark rights for PAO DE ACUCAR and also for PÃO DE AÇÚCAR. It is clear to the Panel that the disputed domain name, consisting of the Complainant's trademark – without the accents used in Portuguese language – is nearly identical to the Complainant's trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only, and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant states that it has not authorized the Respondent to use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark. The disputed domain name is plainly not derived from the Respondent's name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production on the second element shifts to the Respondent. The Respondent is in default and has not provided any answer or justification for the registration of the disputed domain name. On the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy apply.
The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant's trademarks at the time of registering the disputed domain name.
In this regard, given the Respondent's failure to submit a response, the Panel accepts as true all of the reasonable allegations of the Complaint.
The Complainant's trademark has been in used in Brazil for more than 45 years. Also the Complainant states that his trademark is well-known in the region. The Respondent has defaulted; however, it is evident that the Respondent does not conduct any bona fide commercial or noncommercial business under the disputed domain name.
The Complainant has stated that at the time of filing this Complaint the disputed domain name resolved to a parking page displaying various commercial links including some links related to supermarkets in Brazil. Therefore, the Complainant concludes in its complaint that the Respondent is using the disputed domain name to misleadingly divert consumers and attract them to its webpage in order to obtain commercial gain from it. The Respondent has not denied any of these assertions.
The Panel is of the view that this unauthorized use of a trademark in the disputed domain name to generate pay-per-click revenue constitutes bad faith under paragraph 4(b)(iv) of the Policy(Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344).
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.
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 <paodeacucar.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: June 14, 2016