WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amazon Lord Navegação, Turismo e Comércio Varejista de Artigos de Caça e Pesca Ltda v. Mário A. Scotti

Case No. D2016-1499

1. The Parties

The Complainant is Amazon Lord Navegação, Turismo e Comércio Varejista de Artigos de Caça e Pesca Ltda of Manaus, Brazil, represented by LRA Digital Law, Brazil.

The Respondent is Mário A. Scotti of Cotia, São Paulo, Brazil, self-represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2016.

On August 18, 2016 the Respondent sent two messages to the Center requesting them to be considered by the Panel as his response. The Center replied on August 19, 2016 informing that the Respondent’s late submissions would be analyzed at the Panel’s discretion.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 2, 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.

4. Factual Background

The Complainant was established on December 12, 2010, in the city of Manaus, Brazil, to explore travel agency services, sport fishing, aquatic transportation for sightseeing tours and the trade of hunting, fishing and camping articles.

The “Amazon Lord” expression is the distinctive element of the Complainant’s tradename. It is used as its trademark and the identifier of two of its “hotel boats”, namely “Amazon Lord I” and “Amazon Lord II” in which cruises in the Amazon forest rivers are offered to its clients. The Complainant also owns and operates the domain name <amazonlord.com.br> which was registered on June 7, 2010.

Furthermore, the Complainant has filed the following trademark applications before the Brazilian Trademark Office:

- No. 909563543 for AMAZON LORD (and device) in international class 35 filed on June 22, 2015;

- No. 909564396 for AMAZON LORD (and device) in international class 39 filed on June 22, 2015; and

- No. 909562121 for AMAZON LORD (and device) in international class 44 filed on June 22, 2015;

The disputed domain name <amazonlord.com> was registered on April 12, 2013. Currently a parked page displaying sponsored links for the sale of software resolves from the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends to hold rights over the “Amazon Lord” expression arising from its tradename (registered on December 12, 2010), domain name (registered June 7, 2010) and use as a trademark in connection with travel agency services, sport fishing, aquatic transportation for sightseeing tours and the trade of hunting, fishing and camping articles since 2010. The Complainant’s AMAZON LORD trademark was filed before the Brazilian Trademarks Office on June 22, 2015 but not yet granted.

According to the Complainant, the disputed domain name reproduces its trademark and previous domain name in their entirety what can create a likelihood of confusion between Internet users, especially those located in the United States of America and Canada, from where most of its clientele originates.

As to the absence of rights or legitimate interests of the Respondent, the Complainant argues that:

(i) no license or authorization of any kind has been given by the Complainant to the Respondent to use the AMAZON LORD trademark;

(i). the disputed domain name is currently parked, what does not characterize a bona fide offering of goods or services or legitimate use of thereof; and

(iii) the Respondent is not affiliated with the Complainant and thus any use of the disputed domain name is unauthorized.

As relates to bad faith in the registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given that he has alleged in the past to have been a commercial agent of the Complainant, what is not true.

Moreover, a cease-and-desist letter was sent to the Respondent in an attempt to amicably settle the matter (Annex 11 to the Complaint) but the Complainant alleges that the Respondent’s lawyer telephoned the Complainant’s representative to make an offer to sell the disputed domain name for USD 10,000.00.

B. Respondent

The Respondent submitted two messages to the Center on the day following notification of his default by the Center.

On his first message he excuses himself for not meeting the deadline to submit a Response but states that he could not locate a lawyer who would do that pro bono for him and informs that he was sending in a separate message the reply he had prepared.

On the Respondent’s second message he states that he represents a dozen companies in the sportive fishing tourism in Manaus and that, in the past, he used to “sell” the Complainant’s “products”, which are still depicted on his website “www.pescaesportiva.org” and brochures.

The disputed domain name, according to the Respondent, was indeed registered and used in the offering of the Complainant’s cruises, targeting the United States of America market.

Lastly, the Respondent states that the Complainant knows him since 2010 but now wants to obtain the disputed domain name for free in spite of all the hard work and money spent in the promotion of the Complainant’s services by him, what is not fair.

The Panel has, in its discretion, decided to admit the Respondent’s late Response in this proceedings.

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(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant, through evidence of its use in connection with its travel and tourism services, has established its use of the “AMAZON LORD” expression as a trademark since 2010, in spite of the fact that its trademark applications were only recently filed. The Panel finds that the Complainant has established unregistered rights in the trademark AMAZON LORD, for the purposes of the Policy.

The disputed domain name reproduces the mark AMAZON LORD in its entirety, with the addition of the generic Top-Level Domain “.com”, which is typically disregarded when comparing a trademark and a disputed domain name.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive 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 his late submission expressly recognizes that he registered and used the disputed domain name for the offering of the Complainant’s cruises, targeting the United States of America market.

The Complainant, on the other side, states that no license or authorization of any kind has been given by the Complainant to the Respondent to use the AMAZON LORD trademark and that the Respondent is not affiliated with the Complainant and thus any use of the disputed domain name is unauthorized.

Past UDRP panels have already dealt with the question of whether a reseller/distributor could have rights or legitimate interests in a domain name which contains the trademark of the products or services. In cases where there is no written agreement and where the domain name in dispute reproduces the trademark precisely and in its entirety the conclusion has been in the sense of a lack of legitimate interest, given that:

“[…] even if Respondent is a retail seller of Complainant’s products, the collateral trademark use necessary to allow resell of Complainant’s products is not enough to give Respondent proprietary rights in Complainant’s trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorization in a licensing agreement or other special circumstances, does not give the retail sellers rights of domain name magnitude over the manufacturer’s trademarks. This Panel finds Respondent does not have sufficient rights or interests in the trademarks to allow Respondent to register them as domain names.” The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.

This Panel also points out that, as established in the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.3, for a reseller to make a bona fide use of a protected term in a domain name, the reseller must, inter alia, actually be offering the goods and services at issue. In the present case, there is no evidence that the Respondent has in fact used the disputed domain name to offer the Complainant’s travel and tourism services. The only evidence produced by the Respondent is a screenshot detailing the Respondent’s intended use of the disputed domain name in this regard. In reality, the disputed domain name is parked with sponsored links and the Respondent appears to be offering the disputed domain name for sale to the Complainant for the amount of USD 10,000. This does not give rise to rights or legitimate interests on the part of the Respondent in the present case.

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

Paragraph 4(b)(i) of the Policy states:

“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name;”

Considering the evidence submitted, the Respondent’s actions as alleged by the Complainant, together with the Respondent’s response indicate full knowledge of the Complainant’s trademark at the time the disputed domain name was registered. The use of the disputed domain name to resolve to a parked website displaying sponsored links,, in addition to the offer mentioned by the Complainant’s representative that the Respondent’s lawyer asked for USD 10,000 for the transfer of the disputed domain name (which has not been denied by the Respondent) corroborate with a finding of bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(i) of the Policy.

Moreover, the Panel finds that the use of the disputed domain name to resolve to a parked page with sponsored links also supports a finding of 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, <amazonlord.com>, be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 8, 2016