WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

2XT Tecnologia e Comercio de Informática Ltda v. Lilian Liely Firmino

Case No. D2019-0113

1. The Parties

The Complainant is 2XT Tecnologia e Comercio de Informática Ltda of Belo Horizonte, Brazil, represented by Alexandre Rodrigues Atheniense, Brazil.

The Respondent is Lilian Liely Firmino of Belo Horizonte, Brazil.

. The Domain Name and Registrar

The disputed domain name <passagenspromo.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2019, 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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 20, 2019. 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 that operates an online platform selling airplane tickets at promotional prices under the <passagenspromo.com.br> domain name, registered on July 2, 2014.

It is the owner of the Brazilian trademark registration No. 910082448 for PASSAGENS PROMO WWW (and device), filed on October 10, 2015, and registered on December 12, 2017, in class 35.

The disputed domain name <passagenspromo.com> was registered on April 16, 2013¹, and resolves to an active webpage displaying links and advertisements of promotional air tickets.

5. Parties’ Contentions

A. Complainant

The Complainant states that since April 2015 it operates a successful online platform selling airplane tickets at promotional prices, being “widely recognized” and enjoying excellent reputation.

According to the Complainant, the disputed domain name was registered on April 16, 2013 by the Respondent or by an unknown third party from which the Respondent may have bought it, and appears to be a similar platform but is rather a simple webpage with an embedded Google Search Box with a pre-programmed filter that leads to other websites dedicated to selling airplane tickets.

In the Complainant’s view, the Respondent’s conduct is a clear indication that the Respondent is targeting the Complainant’s clientele. Such assumption is corroborated, under the Complainant’s view, by the fact that the Respondent is the owner and manager of an information technology company, not exploiting any activity in the tourism or e-commerce domains.

Furthermore, the Complainant argues that by registering the disputed domain name the Respondent had the clear intention of exploiting it, capitalizing on the Complainant’s well-established reputation, and generating profits from advertisements, in a way that the Complainant “would have to pay an unfair amount of money to be able to use” the disputed domain name.

In addition to that, the Complainant asserts that it is the owner of a registered trademark before the Brazilian Trademarks’ Office, not having the Respondent any rights or legitimate interests over the disputed domain name, which is almost identical to it, characterizing “typosquatting” and profits generated from Internet traffic redirection.

As to the lack of legitimate interests in the disputed domain name, the Complainant contends that the Respondent registered the disputed domain name with the clear intent of selling it to the highest bidder, given that it did not take any steps to acquire trademark rights over that expression.

As to the registration and use of the disputed domain name in bad faith, the Complainant, quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, indicates that the Respondent has engaged in promoting the disputed domain name so as to generate more traffic to it, diverting the Complainant’s clientele in view of blog postings with alleged promotional offers that could be obtained by clicking on an URL which redirects Internet users to a Complainant’s competitor website.

The Complainant further states that it was prepared to approach the Respondent offering the registration costs of the disputed domain name but came across a Facebook group named “Buying and selling of domain (names), blogs and sites” where an associate of the Respondent mentioned that the disputed domain name had generated more than USD 86,000 since launched, what would characterize the registration of the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of the Respondent out-of-pocket costs directly related to its registration and maintenance.

B. Respondent

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

6. Discussion and Findings

The Policy provides, at paragraph 4(a), that each of the following three findings must be made in order for the Complainant to prevail:

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 Complainant has established rights in the PASSAGENS PROMO WWW trademark.

The disputed domain name is confusingly similar to the Complainant’s trademark, disregarding the generic Top-Level Domain (“gTLD”), as the dominant feature of the trademark is recognizable in the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

In view of the particulars of this case and also considering that the requirements of paragraph 4(a) of the Policy are conjunctive, the Panel will address the second and third elements jointly.

The Complainant describes the webpage available at the disputed domain name as a simple webpage with an embedded Google Search Box with a pre-programmed filter that leads to other websites dedicated to selling airplane tickets, helping the Internet user to find a promotional ticket “no more than a regular Google search would”.

Given that in (Brazilian) Portuguese “passagens” can be translated to “tickets”, and “promo” is the popular abbreviation of “promoção”(promotional or sale, in the English language), such use could be considered coherent to the descriptive nature of the disputed domain name and in principle regarded as a legitimate use of the disputed domain name pursuant to paragraph 4(c) of the Policy. The burden of proof rests with the Complainant’s to show the contrary, which did not happen in the present case, as will be better addressed below.

Regarding the alleged use in bad faith of the disputed domain name, paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Even though the Complainant stresses that “the Respondent clearly has engaged in activities meeting each of the criteria under the Policy paragraphs 4(b)(i) to (iv) for bad faith”, it basically focuses the Complaint on the provisions of paragraph 4(b)(i) and 4(b)(iv) of the Policy, by indicating that (a) “Respondent was prepared to contemplate a sale of the name to the Complainant for more than the cost of registration”; and (b) “the intention of the Respondent was to simply attract visitors, who would falsely believe to be accessing the Complainant’s more well known page, in order to profit from directed ad services”.

In addition to that, the Complainant argues that the Respondent is misleadingly diverting its consumers and generating advertisement revenues in view of blog postings with alleged promotional offers that could be obtained by clicking on an URL which redirects Internet users to the Complainant’s competitor website that could have profited USD 86,000 since its launch, as mentioned by the Respondent’s associate in a Facebook group (Annex 8).

In the present case, it is not in dispute that the Complainant’s trademark post-dates the registration of the disputed domain name in 2013. Likewise, the Complainant only started using the PASSAGENS PROMO WWW mark in 2015.

Section 3.8 of the WIPO Overview 3.0 makes reference precisely to occasions such as the one of the present case, by stating the following consensus view:

“3.8.1 […] where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. […] Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name.

3.8.2 […] As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”

In light of the above-mentioned consensus, the first consideration to be made is that the overwhelming approach of UDRP panels has been to affirm the literal meaning of paragraph 4(a)(iii) of the Policy and to require bad faith at the time of registration or acquisition of the disputed domain name. See, e.g., Group One Holdings Pte Ltd v. Steven Hafto, WIPO Case No. D2017-0183; TOBAM v. M. Thestrup / Best Identity, WIPO Case No. D2016-1990; Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335; Centroamerica Comercial, Sociedad Anonima de Capital Variable (CAMCO) v. Michael Mann,WIPO Case No. D2016-1709; New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415; Dreamlines GmbH v. Darshinee Naidu / World News Inc, WIPO Case No. D2016-0111; Lonza AG v. Onyx Networks, Inc., WIPO Case No. D2015-1460; Movius Interactive Corporation v. Dynamo.com, WIPO Case No. D2015-1717; and Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-0134.

This Panel also agrees and considers that the lack of registration in bad faith is fatal to this case. In effect, the Complainant has not presented this Panel with any evidence that would suggest the application of the exception rule contained in section 3.8.2 of the WIPO Overview 3.0.

In order to succeed, the Complainant would be required to show that its specific clientele and trademark rights were being targeted or singled out by the Respondent at the time of registration of the disputed domain name, which it did not. In other words, the Complainant would need to demonstrate (i) that the Respondent had been aware of the Complainant or its trademarks prior to registering the disputed domain name; and (ii) that the particulars of the case at hand indicate that the Respondent also had an intent to target the Complainant’s specific trademark rights, as opposed to merely benefitting from the presence and attractiveness of the wording in the disputed domain name, leading to likely profitable uses which would not necessarily conflict with the Complainant’s rights. In this Panel’s view, neither were demonstrated by the Complainant in the present case.

This Panel therefore concludes that the Complainant has failed to establish both the second and the third elements of paragraph 4(a) of the Policy.

C. Reverse Domain Name Hijacking (“RDNH”)

Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Rules define Reverse Domain Name Hijacking as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

Mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see section 4.16 of the WIPO Overview 3.0). It is necessary to review all of the background to the Complaint, so far as known to the Panel, to assess whether it was brought in bad faith.

In the present case, the Panel considers that the Complainant has been guilty of RDNH due to the fact that it has failed by a large margin, since the Complainant knew or at least should have known that it did not possess enough evidence to prove at least one of the essential elements contained in paragraph 4(a) of the Policy.

The Complainant’s representative quoted UDRP case law and the Panel thinks it is unlikely that he was unaware of (i) the consensus set forth in section 3.8 of the WIPO Overview 3.0; and (ii) the current overwhelming view of UDRP panelists as to the need to prove registration and use in bad faith.

This is reinforced by the fact that the Complainant is represented by specialist counsel in this proceeding and that, given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the Rules, some UDRP panels have held that a represented complainant should be held to a higher standard (see section 4.16 of the WIPO Overview 3.0).

Indeed, a finding of RDNH has been made in previous cases under the Policy where the complainant or its representative knew or should have known at the time of filing the complaint that it could not prove the respondent’s bad faith registration (See, e.g., Dialoga Servicios Interactivos, S.A. v. Finlead AG, WIPO Case No. D2018-2768; and New Forests Asset Management Pty Limited v. Kerry Schorsch, Global Advertizing, LLC, WIPO Case No. D2015-1415).

To this extent, this Panel finds that the Complaint was brought in an attempt at RDNH and therefore constitutes an abuse of the administrative proceeding.

7. Decision

For the foregoing reasons, the Complaint is denied, and the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.

Wilson Pinheiro Jabur
Sole Panelist
Date: March 6, 2019

¹ There is no evidence in the case file that indicates that the disputed domain name was registered by other than the Respondent.