WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mercantil Vale Do Arinos Ltda v. Belize Domain WhoIs Service Ltd. / Direct Privacy ID 9F41A

Case No. D2011-0611

1. The Parties

The Complainant is Mercantil Vale Do Arinos Ltda of São Paulo, Brazil, represented by Dannemann Siemsen, Brazil.

The Respondents are Belize Domain WhoIs Service Ltd. of City of Belmopan, Belize and Direct Privacy ID 9F41A of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <ortobom.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011. On April 6, 2011, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On the same date, Intercosmos Media Group d/b/a directNIC.com. transmitted by email to the Center its verification response confirming that the Respondent Direct Privacy ID 9F41A 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 April 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2011.

The Center appointed Luca Barbero as the sole panelist in this matter on May 5, 2011. 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 Brazilian company which was founded 40 years ago in São Paulo and manufactures and markets mattresses, pillows and other bedding products, with 16 factories located in 11 states of Brazil.

The mark ORTOBOM was coined by the Complainant to identify its mattresses and is constituted by the prefix “orto” (deriving from the word “ortopedia”, which is the Portuguese for “orthopedic”) and the Portuguese adjective “bom” (which corresponds to the English word “good”).

The Complainant is the owner of several trademark registrations for ORTOBOM granted by the Brazilian Patent and Trademark Office, such as the Registration No. 811873382, for ORTOBOM (word mark), filed on January 28, 1985 and granted on September 22, 1987, in national class 20-15, covering “mattresses, pillows and cushions in general”; 814583180, for ORTOBOM (word mark), filed on December 28, 1988 and granted on November 14, 1993, in national class 40-15, covering “ancillary services to trade in goods, including import and export”; 814583199, for ORTOBOM (figurative mark), filed on December 28, 1988 and granted on July 27, 1993, in national class 17-10, covering “rubber, plastics and alloys”; 814583202, for ORTOBOM (figurative mark), filed on December 28, 1988 and granted on July 27, 1993, in national class 20-15, covering “mattresses, pillows and cushions in general”.

The Complainant operates the web site “www.ortobom.com.br”. The disputed domain name <ortobom.com> was registered on January 9, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant points out that Mercantil Vale Do Arinos Ltda is the largest mattresses manufacturer of Latin America and the second largest foam producer in the world, with an annual production of over 5 million mattresses, and a presence of more than 36.000 sale stores in all 27 states of Brazil. The Complainant informs the Panel that its trademark ORTOBOM has received over 90 awards during the past 12 years, including awards for “the most reminded brand in the field of mattresses”.

The Complainant emphasizes that “ortobom” is a coined expression derived from the combination of the prefix “orto” and the adjective “word” and states that, due to the Complainant’s renown in Brazil, the mark ORTOBOM is inevitably associated to the Complainant and its activities.

The Complainant contends that the disputed domain name <ortobom.com> is identical to the trademark in which it has rights as it reproduces the well-known trademark ORTOBOM in its entirety.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondents are not commonly known by a name corresponding to the disputed domain name and that they do not own any trademark rights for ORTOBOM. The Complainant also states that the Respondents have not been authorized by the Complainant to use the ORTOBOM mark or any corresponding domain name.

The Complainant highlights that the Respondents have never used or demonstrated any intention of using the trademark ORTOBOM or the disputed domain name in connection with a bona fide offering of goods or services and that the Respondents are not making a legitimate non-commercial or fair use of the disputed domain name, since it is being used in connection with a mere parking page with sponsored links to third parties’ web sites, including links for products and services which directly compete with the Complainant’s goods and services.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, in light of the renown of the Complainant’s trademark, it is not likely that the Respondents were unaware of the mark ORTOBOM when registered the disputed domain name. The Complainant highlights that the Respondents are using the disputed domain name in bad faith since the links published on the corresponding web page direct also to competing web sites that commercialize mattresses and bed related products and the Respondents receive a financial benefit from each click on the sponsored links displayed in their web page.

The Complainant points out that the Respondents are creating a likelihood of confusion which leads the Complainant’s target consumers to believe that the Respondents’ site or the links displayed thereof are somehow sponsored, affiliated or endorsed by the Complainant. The Complainant concludes, therefore, that the Respondents have intentionally registered the disputed domain name to take advantage of the Complainant’s substantial goodwill and reputation in order to divert consumers’ attention and, consequently, obtain commercial gain from it.

As further circumstances evidencing bad faith, the Complainant contends that the Respondents are preventing the Complainant from reflecting its mark in the corresponding domain name and that the Respondent’s use of the disputed domain name is diluting and weakening the distinctiveness of the ORTOBOM mark before the market and consumers. The Complainant also provides the Panel with a list of administrative cases raised against the Respondent Belize Domain WHOIS Service Ltd.

According to the evidence submitted by the Complainant, the disputed domain name was registered, as of February 8, 2011, in the name of the Respondent Belize Domain WHOIS Service Ltd. The Complainant informs the Panel that, as of March 18th, 2011, the identity of the domain name holder has been concealed through the privacy service provided by the concerned Registrar in the case at issue, which is indicated as the second Respondent. However, the use of the disputed domain name has remained unchanged, being therefore possible that the underlying registrant, which has not been disclosed by the Registrar following the Center’s verification, is the first Respondent Belize Domain WHOIS Service Ltd or an entity hiding behind the latter domain service.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

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

As indicated above, Intercosmos Media Group d/b/a directNIC.com has confirmed to the Center that the registrant of record for the disputed domain name is the Respondent Direct Privacy ID 9F41A. The Complaint is also filed against Belize Domain WhoIs Service Ltd., an entity listed as the registrant of record for the disputed domain name on the publicly available WhoIs of February 8, 2011. Based on the evidence submitted by the Complainant, the Panel is satisfied that the disputed domain name is likely subject of the common control of the Respondents and will therefore proceed to render a decision against the two named Respondents.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of several trademark registrations consisting in the mark ORTOBOM, such as the Brazilian trademark Registration Nos. 811873382, for ORTOBOM (word mark), filed on January 28, 1985 and granted on September 22, 1987, in national class 20-15, and 814583180, for ORTOBOM (word mark), filed on December 28, 1988 and granted on November 14, 1993, in national class 40-15.

In comparing the Complainant’s marks to the disputed domain name with reference to ORTOBOM, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain name. The Respondents may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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; r

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights. or

(iii) you are 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.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondents. If the Respondent fail to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581. Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not licensees of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondents have made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that they intend to make a legitimate, non-commercial or fair use of the disputed domain name.

The Panel notes that the disputed domain name is pointing to a sponsored pay-per-click (“ppc”) web site. The Panel finds that, under the circumstances, the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, non-commercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]. and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.

Moreover, the Panel finds that the domain name holder, whose true identity is obscured by the privacy shield, has not shown that it is commonly known by the disputed domain name, as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435. See, along these lines, Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, in which the Panel stated that “Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith”.

Thus in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:

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

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

As to bad faith at the time of the registration, the Panel notes that, in light of the fact that ORTOBOM is a coined mark and in view of the long and extensive use of the trademark in Brazil in connection with the products and services of the Complainant, the Respondents were likely aware of the Complainant’s trademark.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137. Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368. Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003 0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

The Panel finds that the redirection of the disputed domain name to a parking page with pay-per-click links does not constitute good faith use, since the Respondents are using a domain name identical to the Complainant’s mark to attract Internet users to their web site and derive pay-per-click revenues.

As stated, among others, in Columbia Insurance Company / Shaw Industries Group Inc. v. Belize Domain Whois Service Ltd, WIPO Case No. D2010-1682, involving the Respondent Belize Domain Whois Service Ltd “The Panel’s conclusion that Respondent used the domain name for a PPC website that trades on Complainant’s trademark rights also establishes that Respondent has intentionally attempted to attract Internet users to its site through confusion, all for Respondent’s commercial gain. The Panel finds that sufficient to establish bad faith registration and use in the present circumstances”.

See also Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 and Boris Johnson v. Belize Domain Whois Service Lt – WIPO Case No. D2010-1954, stating “the Respondent deliberately set out to derive pay-per-click revenue from Internet users by creating a likelihood of confusion with the Complainants’ SHAW Trademarks. It adopted confusingly similar domain names and used them to host pay-per-click links to third-party websites offering products in the field of hardwood and laminate flooring, which is part of the core business of the First Complainant”.

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondents are attempting to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their site.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ortobom.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: May 19, 2011