WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hypera S.A. v. Jonas Eduardo Santos

Case No. D2020-2435

1. The Parties

The Complainant is Hypera S.A., Brazil, represented by Daniel Advogados, Brazil.

The Respondent is Jonas Eduardo Santos, Brazil, represented by Hungaro & Hungaro Sociedade de Advogados, Brazil.

2. The Domain Names and Registrar

The disputed domain name <arenaneoquimica.com> and <neoquimicaarena.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 18, 2020, 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 October 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Response was filed with the Center on October 22, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 16, 2020. 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 is a pharmaceutical industry established in Brazil.

The Complainant is the owner of several trademarks composed by the term “Neo Quimica” filed in Brazil since December 1, 1986 and registered on September 12, 2000 (Reg. No. 812990250).

The disputed domain names <arenaneoquimica.com> and <neoquimicaarena.com> were registered by the Respondent on August 23, 2020.

The Panel accessed the disputed domain names on November 25, 2020, at which time the disputed domain names were not pointing to any active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain names are identical to the Complainant’s trademarks and are likely to cause confusion or association with the Complainant. In the end of August 2020, the Complainant announced huge marketing investments in a new project involving the trademark NEO QUIMICA and the arena of one of the most popular Brazilian soccer teams (naming rights). In summary, this is the reason why the Respondent, in bad faith, proceeded with the registration of the disputed domain names on August 23, 2020 (cybersquatting). The trademark NEO QUIMICA is registered for pharmaceutical products, but also for organization of sport competitions and events, as well as for advertising and promotional purposes. In this scenario, consumers immediately associate the disputed domain names as being owned/provided by the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has been exploring and using the trademark NEO QUIMICA since 1986 and owns at least 35 trademarks registrations before the Brazilian Patent and Trademark Office (INPI). By registering the disputed domain names the Respondent is clearly infringing the Complainant’s trademark rights.

(iii) The disputed domain names were registered and are being used in bad faith. The disputed domain names were clearly registered in bad faith by the Respondent in the end of August, 2020 for the purpose of selling them. The Brazilian Court has already recognized bad faith in the Respondent conducts of registering domain names comprised of the terms “arena” and “neo quimica”, determining that the Respondent must refrain from using the NEO QUIMICA trademark, under penalty of paying a fine.

B. Respondent

The Respondent makes the following contentions:

(i) The disputed domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. None of the Complainant’s trademarks includes the term “arena” in its nominal composition and no intellectual property registrations were found for the names “Arena Neo Quimica”, “Arenaneoquimica”, “Neo Quimica Arena” and “Neoquimicaarena” in the Brazilian Patent and Trademark Office (INPI) database. The addition of the word “arena” in the disputed domain names repels any chances of error or confusion between marks, since it has no relation with the industrial activity of the Complainant.

(ii) The Respondent has rights or legitimate interests in respect of the disputed domain names. The Respondent has a legitimate interest and right to the disputed domains names. For some years the Respondent has been planning to develop a personal project related to his academic background in Information Technology Management and Computer Science: a digital platform for academic debates in various areas of knowledge. The Respondent attached an advertising planning of his project (in Portuguese language), which specifies the details of the visual identity of the future brand. The name of the project, expressed in the disputed domain names is composed of a three strong meaning words: “Arena”, used to refer to the stage where the great gladiators fought and, in modern re-reading, the place where debates happens; “Neo”, emphasizing the commitment to the new and the innovation; and “Quimica” (which corresponds to “chemistry”), referring to the Arab and Greek notion of alchemy or melting metals, representing a strong syntony between people or between ideas. In view of this, the Respondent took the precaution of registering not only the desired disputed domain name (<arenaneoquimica.com>), but also other of nominal similitude (<neoquimicaarena.com>). Therefore, the Panel should give prestige to the principle of “first come, first served”. There is no visual or commercial identity between the Complainant’s trademark and the forthcoming digital mark of the Respondent. The Respondent is going to make a legitimate fair use of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademarks or service marks at issue. Before the Respondent received any notice of the dispute, the Respondent started the preparations to use the disputed domain names in connection with a bona fide offering of goods or services, and has never heard of any news about the marketing investments in a project which involves the Complainant’s trademark (NEO QUIMICA) and the arena of the Brazilian soccer team.

(iii) The disputed domain names have been registered and are being used in good faith. The Complainant has not put forth specific evidence that the Respondent was targeting the Complainant’s mark when selecting a business name. Nothing in the files indicates that the Respondent ever utilized any symbols, artwork or other indicia connected to the Complainant’s brand. The disputed domain names were not registered or acquired for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain names. The disputed domain names were not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith. The Complainant and the Respondent are not competitors and/or the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant’s business. The disputed domain names were not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that “neo quimica” is a term directly connected with the Complainant’s mark in Brazil, used to identify its pharmaceutical products.

Annex 2 to the Complaint shows several registrations of NEO QUIMICA trademarks obtained by the Complainant in Brazil, filed as early as in 1986.

The disputed domain names encompass the Complainant’s trademark NEO QUIMICA together with the word “arena” as a prefix or suffix, respectively, as well as with the generic Top-Level Domain (“gTLD”) “.com”.

Previous UDRP panels have consistently found that the addition of other words to a domain name (such as “arena”, in this case) does not avoid a finding of confusing similarity between a domain name and a trademark. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927 and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

It is also well established that a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

The Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and, therefore, the burden of production shifts to the Respondent to provide evidence of such rights or legitimate interests.

The Respondent states that the disputed domain names were registered and will be used to host a digital platform for academic debates in various areas of knowledge, attaching an advertising planning of his project.

However, the Panel is not convinced that the Respondent’s alleged plans of use of the disputed domain names amount to any rights or legitimate interests in it.

The Panel notes that NEO QUIMICA is a famous brand in Brazil, directly connected with the Complainant’s activities in the pharmaceutical industry.

Furthermore, the negotiations on the acquisition of the naming rights of the stadium of the Corinthians soccer team – one of the most popular soccer teams in the world, with around 30 million supporters – was daily on the news at the time of the registration of the disputed domain names. Approaching the end of August, rumors indicated that the Complainant would acquire the naming rights and probably call it “Arena Neo Quimica” or “Neo Quimica Arena”¹ . Finally, on August 31, 2020 – just few days after the registration of the disputed domain names -, the acquisition of the naming rights was announced, and the stadium named “Neo Quimica Arena”.

Considering that the naming rights acquisition was widely published by the press, especially in Brazil, it is not likely that in the circumstances the Respondent would have no awareness of such transaction when the Respondent registered the disputed domain names. As already stated in previous UDRP decisions, rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless the respondent was seeking to create an impression of association with the complainant. (see, The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; and Drexel University v. David Brouda, WIPO Case No. D2001-0067).

In the balance of probabilities and also taking into account the findings under the third element below, the Panel believes that the referred advertising project is merely a pretext created with the sole purpose of attempting to circumvent the Policy (see Tinder, Incorporated v. Ghassan Hedhli, Betsy Adams, Alison Britsson, Peter North, Alonzo Fredy, WIPO Case No. D2017-0154).

Moreover, in the circumstances of this case, the Panel finds that the disputed domain names carry a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

Currently, there are no active websites linked to the disputed domain names, but this is not enough to avoid the Panel’s findings that the disputed domain names were registered and are being used in bad faith. For reference on the subject, it is important to point out that “]t]he registration of this domain name by someone with no connection with the Complainant, suggests opportunistic bad faith if no legitimate interest is clearly proven” (LACER,S.A. v Constanti Gómez Marzo, WIPO Case No. D2001-0177).

When the disputed domain names were registered by the Respondent, the trademark NEO QUIMICA was already registered and widely used – and recognized – in connection with the Complainant’s activities.

While the Panel accepts that the Portuguese words “quimica” and “arena” do not necessarily refer only to the Complainant, the Panel notes that, in the present case, they are being used by the Respondent in the disputed domain names together with the term “neo”, which has no usual dictionary meaning in the Portuguese language.

As referred above, at the time of the registration of the disputed domain names - in August, 2020 - there was daily national press coverage on a possible naming rights agreement between the famous soccer team Corinthians and the Complainant. The public announcement that the Complainant would name the Corinthians stadium “Neo Quimica Arena” was made just few days after the registration of the disputed domain names.

A Google search using the terms “arenaneoquimica” or “neoquimicaarena” indicates only references to the stadium and to the Complainant’s mark, on the initial result pages.

Therefore, the Panel concludes that it is definitely not likely that the Respondent was not aware of the Complainant’s trademark or that the adoption of the expressions “arenaneoquimica” or “neoquimicaarena” were mere coincidences.

As indicated above, the Respondent asserts that he plans to operate a digital platform for academic debates on the disputed domain names, attaching an advertising planning of his project.

However, given the overall circumstances of this case, the facts already described are enough to convince the Panel that the Respondent targeted the Complainant’s brand and its recently acquired naming rights when registering the disputed domain names.

Also, the Respondent registered multiple variations of domain names incorporating the terms “arena” and “neo quimica”, such as the current two disputed domain names and the domain name <arenaneoquimica.com.br>. The Panel concludes that doing so the Respondent engaged in a pattern of conduct aiming to prevent the Complainant from reflecting its mark in a corresponding domain name.

Finally, the Panel also finds that, by using the disputed domain names, the Respondent creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such domain names and its future websites.

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainant has also satisfied the third element 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 names <arenaneoquimica.com> and <neoquimicaarena.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: November 30, 2020

¹ (see: https://esportes.yahoo.com/noticias/corinthians-confirma-venda-dos-naming-rights-da-arena-234759563.html?guccounter=1&guce_referrer=aHR0cHM6Ly93d3cuZ29vZ2xlLmNvbS8&guce_referrer_sig=AQAAAK0K5R-Nraxl6HXdqTQipjpCRm34EtnrIfrh0agfc69IIQmVzlnjqqmRy3y1q8vYwMBrdTDcGL3hBMsQcd9Eh-fopHJF2FYYS0TdjlFKgzoyFdiu0z3E4VLIFIDWClVM2zIRvM0V9R5PqH_NsFjx-H0FMYHjtYE9aJOj45gOVuAN and https://www.meutimao.com.br/coluna/marco_bello/2237/bastidores-conselheiros-do-corinthians-cravam-venda-dos-naming-rights-e-apostam-na-neo-quimica/).