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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Companhia Brasileira De Distribuição v. Parivaz Roshni
Case No. D2002-1113
1. The Parties
The Complainant is Companhia Brasileira De Distribuição, Av. Brigadeiro Luiz Antônio, n° 3142, São Paulo, São Paulo, Brazil, of Brazil, represented by Dannemann, Siemsen, Bigler & Ipanema Moreira of Brazil.
The Respondent is Parivaz Roshni, Flat 22, Bldg No.195, Road 2005, Mumbai 320 Manama, Bahrain, of Bahrain.
2. The Domain Name and Registrar
The disputed domain name <barateirosupermercados.com> registered with Melbourne IT trading as Internet Name Worldwide, based in Melbourne, Australia.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2002. On December 5, 2002, the Center transmitted by email to Melbourne IT Trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On December, 9, 2002, Melbourne IT Trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 December 18, 2002.
In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2003.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on January 17, 2003. 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, the projected decision date was January 31, 2003. The Panel finds that it was properly constituted.
The language of the proceedings was English.
4. Factual Background
The Complainant is a Brazilian company under the name of COMPANHIA BRASILEIRA DE DISTRIBUÇÃO (CBD), with headquarters in the city of São Paulo, Brazil, and a company of the Pão de Açúcar Group. One of the best succeeded CBDs formats is BARATEIRO, a popular supermarket Chain that offers a line of products at low prices, been such business established in 1965.
The Complainant has a website under "barateiro.com" and "barateirosupermercados.com.br" where the products sold by the supermarket chain can be found.
The Complainant has showed to be active in social issues, and maintains the Pão de Açucar Development Institute, such social activities are promoted weekly in a TV program in Brazil called SUPER SHOW BARATEIRO.
The Complainant has acquired a notable renown in Brazil and the Complainant has used and developed trademark BARATEIRO enjoying brand recognition and goodwill. The term BARATEIRO has come to identify the complainant in retail business as well as in other activities.
The Complainant has provided evidence of registration of the mark BARATEIRO in several classes and of the use of the domain name and website <barateiro.com> and <barateirosupermercados.com.br> to offer its goods and services, websites being accessible worldwide.
The Respondent in this administrative proceeding is Parivaz Roshni. According to evidences provided by the complaint there are at list three e-mail messages from the Respondent regarding the domain name in dispute; first offering the opportunity of purchasing a premium domain name that was <barateirosupermercados.com> and later mentioning the confusion of consumers or users between such domain name and <barateirosupermercado.com.br>. This is when he offered the domain name for sale.
5. Parties’ Contentions
The Complainant contends that Respondent has registered a domain name that in its relevant part contains a word identical to the mark BARATEIRO, a well known trademark that belongs to the Complainant, and since the expression "supermercados" in Portuguese means "supermarket", it is incontrovertible that the domain name in issue is identical to such trademark. Moreover the domain name of the Complainant official site at Internet is "barateirosupermercados.com.br", identical in its structure to the disputed domain name.
Complainant contends that the Respondent has no right or legitimate interest in respect to the domain name at issue, and that Respondent has registered the domain in bad faith that is connected to the well known status of trademark BARATEIRO.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 15 (a) of the Rules, the Panel must decide this complaint on the basis of the statements and documents submitted and in accordance with the Policy. These rules or any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a complaint must prove each element of paragraph 4(a) of the Policy, this is:
(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 domain name and
(iii) the disputed domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
It is clear that the disputed domain name <barateirosupermercados.com> is identical, in its most relevant part, to the trademark BARATEIRO used and registered by the Complainant, more over the word "supermercados", in the domain name, refers to the scope of business activities of the Complainant and its translation in English is "supermarket".
Essential or virtual identity is sufficient for the purpose of the Policy.
The Panel finds the disputed domain name is virtually identical and confusingly similar to the Complainant’s trademark BARATEIRO. The Complainant has established this element and has also showed evidence of BARATEIROS being a well-known trademark in Brazil.
More over the Respondent itself has stated in his electronic communications the confusion in traffic between the disputed domain name and the website under a similar domain name under the Country Code of Brazil. Obviously because consumers identify and know the BARATEIRO trademark.
B. Rights or Legitimate Interests
The Complainant must prove the absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. As the Respondent did not respond to the Complainant’s contentions, he didn’t show to the Panel any right or legitimate interest in the domain name.
On the other hand, as required, the Complainant, as it is recognized in paragraph 4(a) of the Policy did prove his rights and use of the trademark BARATEIRO, also showing evidences supporting that is a well known trademark in Brazil, and with presence worldwide through the Internet websites under "barateirosupermercados.com.br" and "barateiro.com".
Circumstances being considered as rights or legitimate interests are specified in the Policy. In electronic communications to the Complainant, Respondent offered the purchasing of a premium domain name and later he expressed he had "registered this domain name by mistake" and he "don’t want it now." He also said "somehow we got solid traffic on this domain because people mistake it with <barateirosupermecados.com.br>". He was offering for sale the domain names and he asked the Complainant if he wanted the domain name. It is clear to the Panel that if there was a mistake of such nature, it could never constitute a right or legitimate interests against the owner of a registered trademark identical or similar to the disputed domain name. However there can not be such a mistake, when at first the domain name is offered for sale rather than returned to the owner of the trademark as it would have been expected if there was indeed a mistake and the corresponding confusion and wrong traffic.
C. Registered and Used in Bad Faith
The Complainant must prove both bad faith registration and use. Paragraph 4 b of the Policy provides without limitations four circumstances, any one of which, if proved, shall be considered both bad faith in registration and use. Among others, there is evidence indicating that you [Respondent] 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 for valuable consideration in excess of the documented out-of- pocket costs directly related to the domain name.
In this case, the Complainant has exhibited several documents permitting to understand the extent of business and activities of the Complainant and consequently the well-known status of the BARATEIRO trademark. This element is important and must be considered to establish bad faith of the Respondent. It results extremely unlike that a person in good faith would register a domain name <barateirosupermercados.com> involving not only the well known trademark BARATEIRO but also the activities or area of business performed by the Complainant under such trademark, which is a supermarket.
It is necessary to refer to the formative words of the disputed domain name. The first of them is the trademark BARATEIRO of the Complainant, and the second is the activity of the Complainant- a supermarket. Moreover, both words were registered by the Respondent in Portuguese language, the Respondent apparently being a non Brazilian. In addition, the structure of the disputed domain name chosen by the Respondent is identical to the structure of the domain name used for the Complainant in the website under the Country Code of Brazil
Such situation is aggravated by the fact that the Respondent contacted the Complainant "offering the opportunity of purchasing a premium domain name", and sent two more electronic communications in this regard. In the second communication, the Respondent mentioned his mistake in registering the domain name and the solid traffic and confusion produced thereby.
It is clear to the Panel that the Respondent was aware and knew of the existence of the BARATEIRO trademark, domain names and websites and consequently there was bad faith in the registration. With respect to bad faith in the use of the domain name because he had the purpose of selling the domain name to the Complainant and he was aware of the confusion caused by the disputed domain name he had registered, the Panel finds that the domain name is being used in bad faith, in accordance with paragraph 4(b) (iii) of the Policy.
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 <barateirosupermercados.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Date: January 24, 2003