Poliedro is the name of a Brazilian company, founded in 1993; they have been using the domain Poliedro.com.br since 1998.
In Portuguese and Spanish, the word “poliedro” stands for “multi-faceted” as in the Greek word “polyhedron” – having many sides as a geometrical shape.
Meanwhile, the domain name Poliedro.com was registered in 2008; its registrant is domain investor Stanley Pace, who has won several UDRP cases filed over the years. He won the domain Poliedro.com in a SnapNames auction, paying $1,270 dollars for it.
Apparently, PPC links on the domain’s parked page pointed to the Complainant’s web site, triggering the UDRP filing.
The sole panelist at the WIPO referred to such action as a demonstration of “bad faith,” declining the Respondent’s request for a finding of Reverse Domain Name Hijacking and ordering the domain Poliedro.com to be transferred to the Complainant.
ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Sistema de Ensino Poliedro Vestibulares Ltda., Editora Poliedro Ltda. v. Anonymize, Inc. / STANLEY PACE
Case No. D2022-1981
The Parties
The Complainants are Sistema de Ensino Poliedro Vestibulares Ltda., Editora Poliedro Ltda., Brazil, represented by Dannemann Siemsen, Brazil.1
The Respondent is Anonymize, Inc., / STANLEY PACE, United States of America (“United States”), represented by Howard M. Neu Law Offices, United States.
The Domain Name and Registrar
The disputed domain name poliedro.com is registered with Epik, Inc. (the “Registrar”).
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2022. On June 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2022, 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 June 2, 2022, 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 amendment to the Complaint on June 2, 2022.
The Center verified that the Complaint together with the amendment to 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 3, 2022. In accordance with the Rules, paragraph 5,
1 The Complaint was filed by two companies. This decision will refer to both companies as “the Complainant” unless any specific reference is made to each of these companies.
the due date for Response was June 23, 2022. On June 23, 2022, the Center received an email from the Respondent requesting a four calendar day extension to submit a Response. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Response was filed with the Center on June 27, 2022.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 5, 2022. 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.
Factual Background
The Complainant was founded in 1993, and belongs to a large Brazilian corporate group engaged in the field of educational services. Per the Complaint, in 2000, the Complainant opened its first own school and, the following year, it launched an education system, which is now present in more than 470 partner institutions across Brazil, offering teaching services for more than 160,000 students. The Complainant has schools in the main cities of Brazil, offers pre-university courses, online and off-site courses, and a “P+” app that provides online mocks to the students. The Panel under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the Complainant’s websites.
The Complainant operates under the main trademark POLIEDRO, building a family of marks in connection to its teaching services. Per the Complaint, the Complainant identifies its online courses by the trademark POLIEDRO SISTEMA DE EDUCAÇÃO, its schools by the trademark COLÉGIO POLIEDRO and its pre- university courses by the trademark CURSO POLIEDRO.
The Complainant Sistema de Ensino Poliedro Vestibulares Ltda. owns various Brazilian trademark registrations for the term “poliedro” alone or in combination with other elements, including Brazilian Trademark No. 818805013, POLIEDRO, word, registered on August 18, 1998, in class 41, (the “POLIEDRO mark”). The Complainant Sistema de Ensino Poliedro Vestibulares Ltda. further owns various other Brazilian figurative trademark registrations for the marks POLIEDRO SISTEMA DE ENSINO, P POLIEDRO, POLIEDRO COLÉGIO, POLIEDRO CURSO, and POLIEDRO EDUCAÇÃO, all registered after 2008.
The Complainant Editora Poliedro Ltda. owns various Brazilian trademark registrations for the term “poliedro” alone or in combination with other elements, all of them registered after 2008.
The Complainant promotes its educational services through various corporate websites, including “www.poliedroeducacao.com.br”, “www.sistemapoliedro.com.br”, “www.colegiopoliedro.com.br”, and “www.cursopoliedro.com.br”.
The disputed domain name was registered on February 28, 2008, and resolves to a parked page that indicates that the disputed domain name may be available for sale. This parked page further includes a contact form to submit an offer on the disputed domain name, and a copyright dated 2022. According to the evidence provided by the Complainant, on March 23, 2022, the disputed domain name resolved to a different parked page displaying promotional or pay-per-click (“PPC”) links to third parties’ websites and offering for sale the disputed domain name, which included a section named “poliedro” that referred to the Complainant’s business. The said section related to the Complainant included the text “poliedro, o curso que mais aprova” (which can be translated as “poliedro the course with higher pass results”), and a link to the Complainant’s website at “www.cursopoliedro.com.br”.2
2 The Complainant provides a notarial act dated April 5, 2022, referred to the content of the website linked to the disputed domain name on March 23, 2022. This act refers in its text to the domain name poliedro.com.br, but includes several screenshots that clearly refer to the disputed domain name, including its offer for sale at its heading, various PPC links, and a link to one of the Complainant’s websites.
Parties’ Contentions
Complainant
Key contentions of the Complaint may be summarized as follows:
The Complainant occupies a prominent position in its relevant market, and the POLIEDRO mark is reputed in Brazil, symbolizing a highly valuable goodwill and identifying one of the most important educational groups in this country. The word “poliedro” means “polyhedron” in Portuguese, a geometrical figure consisting of four or more plane faces. This term is arbitrary, not related to educational services, and, therefore, the POLIEDRO mark is distinctive and deserves a high scope of protection. Additionally, when the term “poliedro” is Googled in Brazil, the main results are related to the Complainant and its websites, which prove that the Complainant’s trademark is commonly known and used.
The disputed domain name is identical to the POLIEDRO mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent owns no trademark consisting of the word “poliedro”, is not known by the disputed domain name, and has not been authorized to use the POLIEDRO mark. The website at the disputed domain name provides some PPC links to third parties’ (including the Complainants’) websites. At the time of the registration of the disputed domain name (in 2008), the Complainant had already been providing its services under the POLIEDRO mark for 15 years (since 1993), and already owned a trademark registration for the POLIEDRO mark (since 1998). The Respondent generates an association with the Complainant and its trademark through a direct link to one of the Complainant’s websites, misleading Internet users into believe that the disputed domain name is related to or affiliated with the Complainant’s group. The Respondent takes a free ride on the reputation developed over the POLIEDRO mark to generate revenue over PPC links and/or the sale of the disputed domain name, which cannot constitute a legitimate use of the disputed domain name.
The disputed domain name has been registered and is been used in bad faith. The reputation of the Complainant’s trademark in Brazil, and its use for more than 15 years before the registration/acquisition of the disputed domain name by the Respondent, corroborate the Respondent’s bad faith. The disputed domain name is used in connection to a parked page displaying PPC links, and including a link to one of the Complainant’s sites. This practice, per se, attests the Respondent’s bad faith. Additionally, the disputed domain name is offered for sale in the said parked page. These circumstances reveal the Respondent’s intention of selling the disputed domain name primarily to the Complainant, according to paragraph 4 (b)(i) of the Policy. The Respondent has further registered and used the disputed domain name in an attempt to generate an association with the Complainant and its trademark through a direct link to one of the Complainant’s websites, misleading Internet users to increase the traffic of its parked page displaying PPC links, for a revenue (according to paragraph 4 (b)(iv) of the Policy).
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name to the Complainant Sistema de Ensino Poliedro Vestibulares LTDA.
Respondent
Key contentions of the Response may be summarized as follows:
The Complainant offers educational resources solely in Brazil, its trademarks are solely in Brazil, and may be renowned but only in this country. The Respondent is a resident of Texas in the United States that has never been to Brazil and was unaware of the Complainant’s Brazilian trademarks. The Responded searched in the United States Patent and Trademark Office (“USPTO”), and checked that there were no trademarks for the word “poliedro”, but did not search trademark databases in other jurisdictions before registering the disputed domain name. Additionally, “[…] prior to acquiring the disputed domain name, the Respondent
made a thorough Google search for the word “poliedro” and its usage. The search results showed the Complainant at the bottom of the 4th page. See EXHIBIT A, PAGE 8 […]”. This search also reflected the use of “poliedro” by many companies and individuals, most of them Spanish or Italian, “thus making the investment in the purchase of poliedro.com a worthwhile one”.
The Respondent acquired the disputed domain name comprising of a “generic word” that has a meaning appropriate for use as a site for existing or start-up businesses. The word “poliedro” is the Portuguese and Spanish word for “polyhedron”. The Respondent knew this circumstance because he is fluent in Spanish, so he bid on the disputed domain name at a SnapNames.com auction and bought it for USD 1,270.
The Respondent’s site contains no reference to the Complainant’s business and therefore cannot cause any confusion. It is a parked page with a “for sale” sign (Exhibit B). There are no links to the Complainant’s business or to its competitors. All of the allegations that the Respondent’s site directed users to the Complainant’s websites were solely in Brazil, over which the Respondent had neither knowledge nor control. The certified translation of the notarial declaration provided by the Complainant, states that the notary accessed the website at “www.poliedro.com.br”, which is not the Respondent’s site.
The Respondent is in the business of registering and using for email addresses, “generic and brandable” [domain] names, and has accumulated over 60,000 domain names used in this manner. The Respondent “[…] has always “parked” these domains with reputable monetizers such as BODIS.COM […]”, which is where the disputed domain name is parked. These monetizers always put up “for sale” signs on the site to allow offers by potential buyers. The Respondent has had many offers to purchase the disputed domain name over the years, mostly from Spanish language offerors, and, in 2021, received several Portuguese language offers, but did not respond to any of them. One of these offers may be from the Complainant (Exhibit C), but the Respondent did not respond to it, and never offered (directly or indirectly) the disputed domain name to the Complainant.
The Respondent acquired the disputed domain name in 2008, so the Complainant has waited 14 years to bring this action, and, although it owns the POLIEDRO mark since 1993, it never considered obtaining the disputed domain name until 2022. There is no consumer confusion, which may be the reason why the Complainant has not attempted to obtain the disputed domain name years ago.
The Respondent requests the Panel to deny the remedies requested by the Complainant, and to find it guilty of Reverse Domain Name Hijacking (“RDNH”), due to the following circumstances: (i) the Complainant waited 14 years to file this Complaint; (ii) this proceeding is a Plan B attempt to obtain the disputed domain name for the cost of filing this proceeding; (iii) the Complainant intentionally misrepresented to the Panel that the Respondent offered the disputed domain name to the Complainant; and (iv) the Complainant retained counsel to file this Complaint.
Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
Identical or Confusingly Similar
The Complainant indisputably has rights in the registered trademark POLIEDRO, both by virtue of its trademark registrations and as a result of continuous use of this mark over nearly 30 years (since 1993).
The disputed domain name reproduces the POLIEDRO mark, being identical to this trademark, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the
confusing similarity. See section1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is identical to the POLIEDRO mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2 of the WIPO Overview 3.0.
The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
The Respondent has alleged that, prior to acquiring the disputed domain name, he “made a thorough Google search for the word “poliedro” and its usage”, “the search results showed the Complainant at the bottom of the 4th page. See EXHIBIT A, PAGE 8”, and this Google search “also reflected the use of “Poliedro” by a myriad of different companies and individuals, thus making the investment in the purchase of [the disputed domain name] a worthwhile one”. As evidence of this search, the Respondent provided an extract of an undated search over the Internet for the term “poliedro” (Exhibit A to the Response).
The Panel notes that the said extract of a search over the Internet provided by the Respondent (Exhibit A to the Response), is printed horizontally containing just a few results in each of its pages and only two results in its first page. The Panel further notes that, contrary to the Respondent’s allegations, this search shows a reference to the Complainant and its website “www.sistemapoliedro.com.br” at the top of the second page, as third result of this search, which would have been included at the top of its first page if it had been printed in vertical. This search further shows the image of one of the Complainant’s figurative marks, including the terms “Poliedro Educação”, as the first image displayed in the images referred to the search, included at the first page of the search provided by the Respondent. Additionally, this search includes other various references to the Complainant, its trademarks and its websites: (i) “www.cursopoliedro.com.br”, 6th result included in page 2; (ii) “www.colegiopoliedro.com.br”, 12th result included at the top of page 4; (iii) a reference to “working at Poliedro Educação” in page 8; and (iv) a reference to the Complainant’s website “www.poliedroeducacao.com.br” in page 8.
The Panel further notes that, contrary to the Respondent’s allegations, this search, conducted by the Respondent before acquiring the disputed domain name (Exhibit A to the Response), does not include many references to other companies or individuals using the term “poliedro” as an identifier or a trademark. It mainly contains, apart from the above-mentioned references to the Complainant and its websites, references to various sites related to the dictionary meaning of this term, its definition, its translation and how to pronounce it. In this respect, the Panel, under its general powers, has further conducted searches in the WIPO Global Brand Database and in the TMview Database for the term “poliedro”, corroborating that there are only less than eight trademarks including this term worldwide (apart from the Complainant’s trademarks), which were registered before the registration of the disputed domain name (in 2008).
The Panel considers that the use of a domain name in connection with a bona fide business of trading in domain names may, in appropriate circumstances, confer rights or legitimate interests under the Policy.
However, in this particular case, the Respondent has on the one hand (based on his location in Texas and the Complainant’s location in Brazil) denied knowing about the Complainant and his prior rights, and his targeting the Complainant and its POLIEDRO mark – but at the same time (based on his Google search) acknowledged his awareness of the Complainant and other third parties’ trademarks containing or consisting of the same term, when he acquired the disputed domain name. Furthermore, by his own self-admission, the Respondent’s interest in the disputed domain name was its potential value to pre-existing brand owners, because of the identity or similarity of the disputed domain name with existing trademarks or corporate names owned by various parties (not many, and one of them the Complainant).
The Respondent has admitted conducting a search prior to the acquisition of the disputed domain name, finding the existence of the Complainant’s prior rights (Exhibit A to the Response). The Respondent has further indicated that these findings made the investment in the purchase of the disputed domain name worthwhile.
Therefore, the Panel considers (as the Respondent has admitted), that the Respondent acquired the disputed domain name in consideration, not to the dictionary meaning of the term “poliedro” alone, but primarily in consideration to the value that the disputed domain name would have to the Complainant (and/or other third parties’ trademark owners), due to the identity or similarity of the disputed domain name with their respective brands. This conduct implies an attempt to take advantage of these existing brands and their respective owners, and the value that the disputed domain name would have for them due to its identity or similarity to their respective brands. The Panel considers that such conduct cannot be considered a bona fide business of trading in domain names, and cannot confer rights or legitimate interests under the Policy.
The Respondent argues that the term “poliedro” is a “generic word” that has a meaning in Portuguese and Spanish languages, equivalent to “polyhedron”, and therefore it should be “appropriate for use as a site for existing or start-up businesses”. The Respondent seems to confuse the notions of a “generic” term and a term “included in the dictionary”. The term “poliedro” is a Spanish and Portuguese dictionary word equivalent to “polyhedron”, which can function as an “arbitrary mark” for example for educational services. However, merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, it may not be used to trade off third-party trademark rights. See section 2.10 of the WIPO Overview 3.0.
In this respect, the Complainant has provided evidence of the use of the disputed domain name (on March 23, 2022) in connection to a parked website displaying PPC links, which included a link to the Complainant, with the text “poliedro, el curso que mais aprova” (poliedro the course with higher pass results), and a link to the Complainant’s website at “www.cursopoliedro.com.br”. The Panel notes that, albeit the notarized act provided by the Complainant as evidence, refers to a similar domain name (poliedro.com.br), such reference is an obvious mistake. This notarized act clearly refers to the content of the disputed domain name reproducing various screenshots, which include the disputed domain name at its heading, and displays various PPC links, including the said reference to the Complainant and one of its websites.
The Respondent submits that the Complainant’s allegations regarding the PPC links included in the parked site that was linked to the disputed domain “were solely in Brazil, over which the Respondent had neither knowledge nor control”. The Panel notes that the Respondent does not provide any evidence in support of this allegation, apart from an extract of the current parked page linked to the disputed domain name (Exhibit B to the Response), and not one e.g., prior to the filing of the present Complaint.
The Panel further notes that the Respondent has admitted that he always parks his domain names with “reputable monetizers”, which may indicate, in a balance of probabilities, in the Panels view, that he has obtained revenue from the promotional content that was at the parked site of the disputed domain name. In any event, the Panel considers that the Respondent cannot disclaim responsibility for the content appearing on the website associated to the disputed domain name. Notably, the Respondent has not – especially after his search explicitly revealed the existence of third party trademarks of which the Complainant’s trademark is the very first one – set up negative keywords on the disputed domain name to avoid trademark-competing
links. See e.g., in this regard Green Roads of Florida, LLC v. Privacydotlink Customer 237978 / IMG, INC, WIPO Case No. D2018-2384 “[p]anels have additionally noted that respondent efforts to suppress PPC advertising related to the Complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the Complainant.”
It is to be noted that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.
All the above-mentioned circumstances lead the Panel to conclude that the second element of the Policy under paragraph 4(a)(ii) has been established.
Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof is, likewise, the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview 3.0.
The Complainant has alleged that the Respondent acquired and used the disputed domain name in bad faith, primarily for the purpose of transferring the disputed domain name to the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to its acquisition. The Complainant has further alleged that the disputed domain name has been used in an attempt to generate association with the Complainant and its trademark through a direct link to one of its websites, to increase the traffic of the Respondent’s parked page displaying PPC links linked to the disputed domain name, for a revenue. In this respect, the Complainant provides a notarized act, which includes various screenshots of the site parked at the disputed domain name on March 23, 2022. These screenshots display various PPC links to third parties websites and a section related to the Complainant that displays a link to its website at “www.cursopoliedro.com.br”. Furthermore, these screenshots indicate that the disputed domain name was for sale, as the Respondent has admitted.
The Respondent has admitted that he acquired the disputed domain name after conducting a “thorough Google search for the word “poliedro” and its usage”, where “the search results showed the Complainant”, and that he decided to acquire the disputed domain name due to the results of this search, which made the investment in its purchase worthwhile. As corroborated by the Panel, the copy of this search provided by the Respondent (Exhibit A to the Response), includes a reference to the Complainant’s trademark at the very first page (and as the first brand, only following two results which are references to a translation and a Wikipedia page on a sports arena), a reference to one of its websites as third result, and various references to other Complainant’s websites along the rest of the results of the search. Furthermore, the Panel finds that these results related to the Complainant are the main results of companies using the term “poliedro” as a trademark included in this search.
Therefore, these Google search results, submitted by the Respondent himself and the Respondent’s self- admission, indicate to the Panel that that the Respondent acted in bad faith when he acquired the disputed domain name to target selling the disputed domain name to a pre-existing brand owner. The Respondent acquired the disputed domain name knowing about the existence of the Complainant and its trademark, and in the Panel’s view did not acquire the disputed domain name in consideration to its possible value related to the meaning of the word “poliedro” in Spanish and/or Portuguese dictionaries. The Respondent (by his own admission) acquired the disputed domain name in consideration to its value related to the identity of the disputed domain name to the Complainant’s POLIEDRO mark (as well as its identity or similarity to other brands owned by third parties including or consisting of the term “poliedro”), which – in the Respondent’s own words – “made the investment in the purchase of the disputed domain name worthwhile”. In other words, the Respondent acquired the disputed domain name due to the value that he knew it would have for the Complainant (and a handful of other third party trademark owners), due to the fact that the disputed
domain name is identical to the Complainant’s trademark (and identical or similar to other existing trademarks).
The Panel considers that the fact that the Respondent targeted the Complainant’s trademark in bad faith cannot be cured by the allegation that this target was not alone or exclusively to the Complainant and his trademark, but included as well other third parties’ brands. In this respect, the Panel finds that the fact that the Respondent in effect targeted more than one trademark does not cure or dilute this intention. The Respondent knew of the Complainant and its POLIEDRO mark (prominently included in the search provided as Exhibit A to the Response), when he acquired the disputed domain name; and this circumstance cannot be cured by the circumstance that he may also has had in mind other potential interested parties in the disputed domain name.
Additionally, the Panel considers that the inclusion of a link to the Complainant and one of its websites in the parked site at the disputed domain name places the Complainant as a prominent target for the Respondent’s conduct and its offer for sale of the disputed domain name.
It is further to be noted that the use of the disputed domain name in connection to a parked site displaying PPC links to third parties’ websites, as well as a section related to the Complainant including a link to one of its websites (see above as regards “negative keywords”), cannot be considered a bona fide use. Such use generates confusion or affiliation, and reveals an attempt to increase the traffic of this parked site for a revenue.
The Respondent cannot disclaim responsibility for the content appearing on the site associated with the disputed domain name, simply indicating that he had neither knowledge nor control over this content.
Neither the fact that such links may have been generated by a third party, such as a registrar or a “monetizer”, nor the fact that the Respondent itself may not have directly profited, would by itself prevent a finding of bad faith. See, in this respect, section 3.5 of the WIPO Overview 3.0.
Additionally, the Panel notes that, the Respondent has admitted that he always parks his domain names with “reputable monetizers”, which indicates, in a balance of probabilities, in the Panel’s view, that he obtains revenue from parking his domain names, and specifically for the parked site related to the disputed domain name.
The Panel further notes that the Respondent has been involved in prior cases under the Policy, which evidences a pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trademarks from reflecting such mark in a corresponding domain name. See, for instance, Tenaris Connections BV v. Stanley Pace, WIPO Case No. D2011-1448, where the panel accepts that there is a clear pattern of conduct on the part of the Respondent in this respect.3
All the circumstances of the case, lead the Panel to conclude that, in a balance of probabilities, the Respondent acted in bad faith. The Respondent acquired the disputed domain name, as he has admitted, primarily for the purpose of selling or transferring it to the Complainant (owner of an identical trademark), or
3 Tenaris Connections BV v. Stanley Pace, WIPO Case No. D2011-1448, indicates: “[…] This Panel accepts that there is a clear pattern of conduct on the part of the Respondent in registering domain names in order to prevent owners of the relevant trade marks from reflecting such mark in a corresponding trade name, and finds that this (along with the other circumstances of this case) supports a finding that the Respondent acted in bad faith. Such pattern of conduct is clearly evidenced by the numerous UDRP case decisions that have found against the Respondent for similar instances of unjustified domain name registration (see Flow Companies, LLC v. Stanley Pace, WIPO Case No. D2010-0651; Kayak Software Corporation v. Stanley Pace and Micah Smurthwaite, WIPO Case No.
D2010-1178; Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738; Starkey Laboratories, Inc. v. Stanley Pace, WIPO Case No. D2010-0774; Viacom International Inc. v. Stanley Pace / M Smurth Waite, WIPO Case No. D2010-1149; and Weil Cadillac-Hummer, Inc. v. Stanley Pace, WIPO Case No. D2010-1711). The Panel particularly notes that in two such cases (namely Novartis AG v. Jordan Smith / Stanley Pace, WIPO Case No. D2009-1738; and Weil Cadillac-Hummer, Inc. v. Stanley Pace, WIPO Case No. D2010-1711), the relevant panels found that the Respondent registered the disputed domain names for the purpose of selling such domain names to the complainants (who were the owners of the relevant trade mark)”.
to any third party owning any other similar or identical trademark, for valuable consideration in excess of its out-of-pocket acquisition costs. The Respondent has further used the disputed domain name in bad faith displaying PPC links to third parties’ websites and to one of the Complainant’s websites, generating an affiliation to increase the traffic of the parked sited link to the disputed domain name for a revenue. This conduct disturbs the Complainant’s business and places the Complainant as the main target for the Respondent’s conduct, and particularly the offer for sale of the disputed domain name.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking (“RDNH”)
The Panel finds that the Complaint was not brought abusively:
No evidence in the file indicates that the Complainant has ever contacted the Respondent trying to acquire the disputed domain name prior to this proceeding. The Respondent mentions a possible offer coming from the Complainant, providing a copy of an offer (Exhibit C to the Response) by an individual with a name and contact details that do not show any relation to the Complainant;
The alleged “delay” in bringing a complaint under the Policy do not bar the Complainant from filing the case, and prevail on its merits. Trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of (See section 4.17 of the WIPO Overview 3.0); and
The Panel finds that the inclusion of a link to the Complainant and one of its websites in the parked site linked to the disputed domain name, placed the Complainant as a prominent target for the Respondent’s conduct and its offer for sale of the disputed domain name; the Complainant has not misrepresented to the Panel this circumstance.
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, poliedro.com be transferred to the Complainant Sistema de Ensino Poliedro Vestibulares LTDA.
/Reyes Campello Estebaranz/ Reyes Campello Estebaranz Sole Panelist
Date: July 18, 2022
