Westmore · UDRP DecisionTenismania.com
The Panel ordered transfer of <tenismania.com>. It found the domain identical to the Complainant’s Brazilian TENIS MANIA trademark, found no evidence that the Respondent had rights or legitimate interests, and concluded that the domain had been registered and used in bad faith after the Complainant acquired trademark rights. The Respondent did not file a response.
The timeline behind tenismania.com
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The case illustrates a transfer based on exact reproduction of a pre-existing trademark, lack of authorization, respondent default, and a finding of commercial confusion. It also shows that default alone did not eliminate the Complainant’s burden: the Panel expressly assessed all three UDRP elements before ordering transfer.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ricardo L. Belardin – ME v. Domain By Proxy, LLC / Light Blue S.A. Case No. D2014-1213 1. The Parties The Complainant is Ricardo L. Belardin – ME of Piracicaba, São Paulo, Brazil, represented by Cleonice Ferreira de Oliveira, Brazil. The Respondent is Domain By Proxy, LLC of Scottsdale, Arizona, United States of America / Light Blue S.A. of Coney, Belize City, Belize. 2. The Domain Name and Registrar The disputed domain name <tenismania.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 July 13, 2014. On July 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 21, 2014. The Center verified that the Complaint together with the amended 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 July 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2014. The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 13, 2014. 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 the owner of three Brazilian trademark registrations, obtained before the Brazilian Patent and Trademark Office (“INPI”) for the mark TENIS MANIA, as follows: Trademark Registration Granting Date Class Products / Services Status TENIS MANIA (composite) 829349391 December 8, 2009 25 Clothing articles, including footwear In force until December 8, 2019 TENIS MANIA (composite) 822291983 February 14, 2012 35 Retail of footwear and handbags In force until February 14, 2022 TENIS MANIA (composite) 830770011 March 25, 2014 35 Trade in all its forms, of clothing articles, including footwear In force until March 25, 2024 The Certificate of Registration No. 830770011 was not yet issued by the INPI. The composite mark TENIS MANIA has been used since, at least, 2000 and continues to be used in connection with the following products and services: clothing articles, including footwear, retail of footwear and handbags; trade in all its forms, of clothing articles, including footwear. The domain name <tenismania.com> was registered by the Respondent on November 2012. On October 2, 2013, the Complainant sent a cease-and-desist letter by email on the basis of its trademark rights to request the cease of the use of the expression TENIS MANIA as trademark and as domain name and the cancellation of the disputed domain name <tenismania.com>, as well as of the email address “[…]@tenismania.com”. Upon receipt of the cease-and-desist letter, the Respondent redirected the domain name to <tmania.com>, notwithstanding the fact that the disputed domain name <tenismania.com> was not cancelled and continues to be used by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant is the owner of three Brazilian trademark registrations, obtained before the Brazilian Patent and Trademark Office (“INPI”) for the mark TENIS MANIA, according to certificates of registration No. 829349391, 822291983 and 830770011. The Complainant argues that the composite mark TENIS MANIA has been used since, at least, 2000 and continues to be used in connection with the following products and services: clothing articles, including footwear, retail of footwear and handbags; trade in all its forms, of clothing articles, including footwear. The Complainant also claims that the disputed domain name <tenismania.com> is a total reproduction of the trademark TENIS MANIA, owned by the Complainant and that, as a consequence, this fact is leading consumers to error and confusion in respect of the origin of the products commercialized with that mark. The Complainant states that, in spite of the protection conferred to the mark TENIS MANIA by the INPI, the Respondent is using the disputed domain name <tenismania.com>, which has been leading consumers to wrongly associating the companies in question. As a consequence of the above mentioned confusion, the Complainant alleges that it has been receiving complaints sent by Brazilian consumers through PROCON (Foundation of Protection and Consumers’ Defense) and the Brazilian website “Reclame Aqui” (Claim Here). In addition, the Complainant contends that, although it has sent, on October 2, 2013, a cease-and-desist letter to the Respondent, requesting the cease of the use of the expression TENIS MANIA as trademark and domain name and the cancellation of the disputed domain name <tenismania.com>, as well as of the email address “[…]@tenismania.com”, the disputed domain name was not cancelled and continues being used by the Respondent. Finally, the Complainant argues that the Respondent registered and is acting in bad faith and unfair competition, since the reproduction of the trademark TENIS MANIA, owned by the Complainant, is leading the consumer to confusion, doubt and error, regarding the origin of the products sold. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a disputed domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar The Complainant has provided evidence of ownership of a number of trademark registrations for the trademark TENIS MANIA having effect in Brazil, namely registration No. 829349391, granted on December 8, 2009 and registration No. 822291983, granted on February 14, 2012. The disputed domain name <tenismania.com> is more than confusingly similar to the Complainant’s mark TENIS MANIA. In fact, said domain name is a complete reproduction of the trademark TENIS MANIA, owned by the Complainant. The above is, as alleged by the Complainant, leading consumers to associate both companies, and making the Complainant receive several complaints by the Brazilian consumers through PROCON and the Brazilian website “Reclame Aqui” (Claim Here). For the above mentioned reasons, the Panelist finds that the disputed domain name is identical to the Complainant’s trademark. B. Rights or Legitimate Interests The second legal ground to be demonstrated by the Complainant, according to the provisions of the Policy, is the Respondent’s absence of any rights or legitimate interests in the disputed domain name. Following Terroni Inc. v. Gioacchino Zerbo , WIPO Case No. D2008-0666 , in order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case. (See, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited , WIPO Case No. D2003-0455 , Belupo d.d. v. WACHEM d.o.o. , WIPO Case No. D2004-0110 ). Once a prima facie case is shown, the burden of production shifts to the respondent, who must demonstrate its rights or legitimate interests in the domain name. The Panel is satisfied that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the TENIS MANIA mark in a domain name or in any other manner. The Complainant has even sent, on October 2, 2013, a cease-and-desist letter to the Respondent requesting the cease of the use of the expression TENIS MANIA as trademark and domain name and the cancellation of the disputed domain name <tenismania.com>, as well as of the email address “[…]@tenismania.com”. In addition, the Respondent has not submitted any reply to the Complainant’s contentions. Therefore, as the Panelist does not find any evidence of Respondent’s rights or legitimate interests, based on the evidence in the record, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The UDRP states that one way for the Complainant to prove bad faith registration and use is to show the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] 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] web site or location or of a product or service on [the] web site or location”. Policy, paragraph 4(b)(iv). The Panel is satisfied that the Complainant has made this showing. In this case, the disputed domain name was registered by the Respondent well after the Complainant acquired trademark rights in TENIS MANIA. Moreover, as stated in LACER,S.A. v. Constanti Gómez Marzo , WIPO Case No. D2001-0177 , the Panel held that the registration of domain names by someone without connection with the Complainant may suggest opportunistic bad faith, if no legitimate interest is clearly proven. This is the case here. Therefore, the Panel finds that the third element of the Policy has been satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the disputed domain name <tenismania.com> be transferred to the Complainant. Gonçalo M. C. Da Cunha Ferreira Sole Panelist Date: August 23, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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