WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maxcenter Distribuidora Comercio e Franqueamento Ltda. v. Genivan Santos

Case No. D2020-1478

1. The Parties

The Complainant is Maxcenter Distribuidora Comercio e Franqueamento Ltda., Brazil, represented by Montaury Pimenta, Machado & Vieira de Mello, Brazil.

The Respondent is Genivan Santos, Brazil.

2. The Domain Name and Registrar

The disputed domain name <drogariamax.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2020.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 17, 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 Brazilian drugstore franchise, headquartered in Rio de Janeiro, Brazil, which has been operating for 37 years. The Complainant operates a chain of more than 110 stores across the state of Rio de Janeiro, always under the trademark DROGARIAS MAX.

The Complainant owns several registrations and applications for the trademark DROGARIAS MAX and variations, including the Brazilian registration number 817248935, registered on May 24, 1993. The Complainant also holds the domain name <drogariasmax.com.br>, registered in its name since January 18, 2000. Evidence of these registrations were duly produced in the Annexes 5 and 6 of the Complaint.

The disputed domain name was registered on May 4, 2020. The disputed domain name initially resolved to a website that was a mock from the Complainant’s one, offering masks and alcohol, but now it does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the marks and domain name registered under its name. In fact, the disputed domain name is identical to the Complainant’s registered mark, with the absence of one “s” in the first word.

The Complainant owns several registrations for the trademark DROGARIAS MAX, and variations thereof, such as MAX and others, as well as a domain names bearing this mark, as evidenced by the Annexes mentioned above. In addition, evidence of the history of the Complainant and the renown of the mark DROGARIAS MAX within Brazil was produced in Annex 4 of the Complaint.

The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark with the mere absence of an “s” – shows a clear intention of misleading Internet users. The Complainant underlines that the disputed domain name gives the impression that it is in all ways associated with the Complainant, as it is a blatant reproduction of its trademark.

The disputed domain name resolved to a website that bore one of the Complainant’s word and design marks, was construed using the color combination adopted by the Complainant, and offered disposable masks and alcohol (Annex 7 of the Complaint).

The disputed domain, however, currently does not resolve to an active website, as shown in Annex 8 of the Complaint. The Complainant alleges that the disputed domain name as it is currently held demonstrates a lack of rights or legitimate interests from the Respondent in respect of the disputed domain name. Furthermore, the Complainant alleges the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

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 to 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

Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark DROGARIAS MAX, registered in Brazil. In addition, the Complainant has been running an extensive chain of drugstores for decades under the DROGARIAS MAX mark, as evidenced by Annex 4 of the Complaint.

Further, the Panel finds that the disputed domain name is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the disputed domain name registered by the Respondent, with just one “s” missing.

Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.

B. Rights or Legitimate Interests

The Panel understands that the mark DROGARIAS MAX is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify the services rendered by the Complainant for over 37 years.

Further, the Complainant provided sufficient evidence of the fame of the mark DROGARIAS MAX and the drugstore services rendered under this name to its clients. In addition, the Respondent is seated in the state of Rio de Janeiro, where the Complainant runs its business. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark DROGARIAS MAX, and its direct relation to the Complainant.

The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.

It has also been shown that the Respondent used the disputed domain name to offer health products, using one of the word and design marks owned by the Complainant. The Respondent is currently not making any direct use of the disputed domain name, supporting a finding that it was registered to create a likelihood of confusion with the Complainant’s mark.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel believes that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.

The Respondent intended to give an overall impression that the disputed domain name is associated with an official website of the Complainant, and the Panel accepts that the disputed domain name may be intended to for unlawful purposes.

The disputed domain name resolved to a website that offered disposable masks and alcohol, in a presentation that repeated the color scheme of the official website of the Complainant and its trademark. Offering these particular goods leads the Panel to conclude that the Respondent was attempting to profit from the renown of the Complainant, as such goods are the same type of goods as those offered by the Complainant under its trademark.

Independently of the above use, the current passive holding of the disputed domain name is also evidence of bad faith from the Respondent in the circumstances of this case.

All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved 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 name <drogariamax.com> be transferred to the Complainant.

Alvaro Loureiro Oliveira
Sole Panelist
Date: July 31, 2020