{ "case_number": "CAC-UDRP-101261", "time_of_filling": "2016-09-07 16:03:18", "domain_names": [ "onde.com" ], "case_administrator": "Aneta Jelenová (Case admin)", "complainant": [ "Multi Brains LLC" ], "complainant_representative": "Andrius Iskauskas (AAA LAW)", "respondent": [ "Azeras LLC" ], "respondent_representative": null, "factual_background": "According to the information provided Complainant is in preparation to use the trademark ONDE in its business activities. Complainant asserts that it created a new business branch which will use the ONDE mark in its services. According to Complainant this is evidenced by the registration of the Benelux trademark, the engagement of a branding agency to develop the brand strategy which concentrates on the ONDE mark and the registration or acquisition of the domain names and .\r\n\r\nAccording to the public Whois information the date of first registration of the disputed domain name is 17 September 1996. According to the information provided by the Registrar it is uncertain at what time Respondent became the current registrant. According to Respondent Respondent’s registration or acquisition of the disputed domain name was in 2009; Complainant did not contest this information submitted by Respondent. It is thus likely that the trademark registration of Complainant has been issued after the registration or acquisition of the disputed domain name. \r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings.\r\n", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nAccording to Complainant the disputed domain name is identical to Complainant's Benelux trademark ONDE with an addition of the gTLD prefix .com. Complainant also submits that it relies on a European Union Trademark application for ONDE and the domain names and . Complainant asserts that it is in preparation to use the trademark ONDE. According to Complainant it submitted extensive evidence that it hired a branding agency to develop a brand and is in genuine preparations to launch a SaaS service and a website using the disputed domain name . Registrations of other domain names with the ONDE mark (i.e. and ) also serve as an additional evidence of this preparation. This shows Complainant’s genuine interest in the disputed domain name as opposed to Respondent’s lack of such.\r\n\r\nAccording to Complainant, Respondent has no rights or legitimate interest in the disputed domain name as Respondent does not use the website; the website contains only links to other websites. The Respondent is also hidden under a Whois registration anonymization service. \r\n\r\nAccording to Complainant Respondent failed to demonstrate any legitimate interest in the disputed domain name. Respondent claims that the word “ONDE” is “generic and is the Portuguese word for 'where'. Respondent claims, while living in Brazil in 2009, that it purchased the disputed domain name for development as a Portuguese real estate site and because it was an inherently valuable descriptive term. The project has been put on hold. Complainant argues that these arguments of Respondent are not based on any evidence in the case. \r\n\r\nAccording to Complainant Respondent failed to show any of the three circumstances under Paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy (“the Policy”). \r\n\r\nFirst, Respondent did not use and demonstrated no intentions to use the disputed domain mane in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name (i) is offered for sale and (ii) is not used in a genuine website manner.\r\n\r\nSecond, the Respondent is not known by the mark ONDE. \r\n\r\nLastly, the Respondent is not making any legitimate noncommercial or fair use of the domain name. On the contrary, the disputed domain name is offered for sale.\r\n\r\nThese facts clearly demonstrate that the Respondent has no legitimate interest in the disputed domain name. \r\n\r\nAccording to Complainant the disputed domain name is registered and used in bad faith. Respondent registered and uses the disputed domain name for the sole purpose of selling it. Complainant's communication with Respondent via a messaging platform available at DomainNameSales.com - the portal where the disputed domain name was listed for sale – clearly shows Respondent's intent to sell the disputed domain name for a price in excess of the out-of-pocket costs directly related to the domain name. Additionally, the representative of Complainant contacted Respondent regarding the transfer of the disputed domain name. Respondent offered to sell the disputed domain name for USD 76.000.\r\n\r\nThis demonstrates Respondent's bad faith as described in Paragraph 4(b)(i) of the Policy.\r\n\r\nThe fact that (i) Respondent offers the domain name for sale, (ii) the asked price for the disputed domain name is in excess of the out-of-pocket costs directly related to the domain name, (iii) Respondent did not establish a website corresponding to the registered domain name, clearly shows that Responded had no intention to genuinely use the registered domain and registered and uses it in bad faith (Paragraph 4(a)(iii) and 4(b)(i) of the Policy).\r\n\r\nRespondent’s arguments that he (NB, the Respondent is a company and not a natural person) “purchased the domain name for development as a Portuguese real estate site” are not based on any evidence in the case. \r\n\r\nAdditionally, the long period of time which passed from the registration until the current dispute during which Respondent could started using the disputed domain name in a genuine manner also demonstrates that Respondent did not have any intentions to use the disputed domain name and registered and uses it for the sole purpose of sale.\r\n\r\nIt should be also noted, that Respondent failed to reply to the Complainant’s Paragraph 4(b)(i) of the Policy based argument (i.e. registration and use primarily for the purpose of selling) and did not refute it in its Response.\r\n\r\nFinally, Complainant argues that Respondent hides her\/his identity under the Whois proxy service company Whois Privacy Services Pty Ltd and publicly may be identified only by a customer number 76460521999240-73e4ea. This should be considered as an additional argument of Respondent's bad faith.\r\n\r\nComplainant concludes that Respondent registered and uses the disputed domain name in bad faith. \r\n\r\n\r\nRESPONDENT:\r\n\r\nAccording to Respondent the word “Onde” is generic and is the Portuguese word for 'where'. Respondent, while living in Brazil in 2009, purchased the disputed domain name for development as a Portuguese real estate site and because it was an inherently valuable descriptive term. The project has been put on hold. Respondent submits that Complainant does not only have to demonstrate a similarity between the disputed domain name and the claimed mark; Complainant must adequately demonstrate that it has rights in the claimed mark. Complainant has not and cannot demonstrate such rights. While the domain name matches Complainant’s trademark registration, Complainant is not using the mark that appears in its registration as a source identifier for goods and services. Complainant obtained a trademark registration by paying a filing fee, not by use of the mark. Complainant has shown no use of its alleged mark or that Respondent’s domain name that will lead to confusion or dilution. \r\n\r\nAccording to Respondent Complainant filed their Benelux Trademark application on 22 July 2016 and it was registered only 5 days later, on 27 July 2016, which means they must have filed an Accelerated Trademark registration, which can be completed in a couple of days and holds much less protection for the trademark holder. Since there is less Due Diligence during an Accelerated registration, the registration is still open to cancellation.\r\n\r\nRespondent adds that the trademarks of Complainant were only registered to make a claim against Respondent for the disputed domain name. Respondent asserts that the trademark applications were made soon after Complainant made an inquiry for the disputed domain name and learned that price was higher than they hoped. Respondent submits that in an attempt to show actual trademark usage, Complainant is manufacturing additional evidence to support their claims. As one can see in the screenshot of the Onde App in the Apple App Store, the app was just release on 14 October 2016 during this proceeding, and after Respondent's response. Further, the app is not unique in any way, and is simply a copy of Complainant's 'Saytaxi' app. In a similar fashion, the domains and were not developed at the time of Respondent's response on 11 October 2016, so Complainant put a quick site up to use for evidence of use.\r\n\r\nRespondent submits that it has rights and\/or legitimate interest in the disputed domain name. According to Complainant the disputed domain name was registered by Respondent in 2009, 7 years before Complainant claims any rights. Respondent has simply acquired a domain name that incorporates a generic or descriptive phrase and is using in a manner which does no more than take advantage of that generic or descriptive meaning. There has been no capitalization on the trademark value of Complainant because Complainant has not sufficiently established their trademark.\r\n\r\nAccording to Respondent Respondent's registration of the disputed domain name in 2009 predates Complainant’s alleged rights in the mark. Respondent submits that Complainant has not obtained any significant distinctiveness, as ratified by Complainant’s plans instead of real world usage. Respondent asserts that Complainant does not have sufficient rights in its mark that predate the registration of the disputed domain name, therefore Respondent necessarily lacked the requisite intent to register the disputed domain name in bad faith under the Policy, paragraph 4(a)(iii). Respondent submits that this is a clear attempt at Reverse Domain Hijacking.\r\n\r\nAccording to Respondent Complainant is very careful not to mention the fact that the Complainant initiated the discussions to purchase the disputed domain name, and began making offers to buy the disputed domain name for far more than the usual costs of registering a domain. It was only after Complainant's offer that Respondent offered the domain for an even larger sum.\r\n", "rights": "Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).", "no_rights_or_legitimate_interests": "Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Panel decides that Complainant has not proven that Respondent registered and uses the Domain Name in bad faith.", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met, subject to the findings below, and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nProcedure - Late and additional submissions by Parties. \r\n\r\nRespondent filed his Response on 11 October 2016 after expiry of the deadline set by the Case Administrator. On 17 October 2016 Complainant submitted a Nonstandard Communication\/Rebuttal to the Response filed. \r\n\r\nAfter submission of the Rebuttal the Panel decided on 17 October 2016 the following:\r\n\r\na. The Panel decides in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraphs 10 (b) and 12, that Respondent is allowed to submit an additional Response to the Rebuttal submitted by Complainant within ten (10) days, thus before 28 October 2016.\r\n\r\nb. In view of these exceptional circumstances the Panel decides in accordance with the Rules, paragraph 10 (c), that the Projected Decision Date is extended and will now be fourteen (14) days after receipt of the additional Response or 11 November 2016 if no additional Response is received, whichever date is earlier.\r\n\r\nRespondent submitted an additional Response (Rebuttal to Claimant’s Response) on 28 October 2016. \r\n\r\nIn accordance with the Rules, paragraphs 10 (b) and (d), on behalf of a comprehensive consideration and examination of the case the Panel sees it appropriate to decide to admit Respondent’s delayed Response, the additional Nonstandard Communication\/Rebuttal filed by Complainant on 17 October 2016, and the additional Response filed by Respondent on 28 October 2016. \r\n\r\nOn 8 November 2016 Complainant filed another Nonstandard Communication entitled “Claimant’s Additional Explanations”. The Panel decides that this Communication is not admitted as it is filed much too late.", "decision": "Rejected", "panelists": [ "Dinant T.L. Oosterbaan" ], "date_of_panel_decision": "2016-11-08 00:00:00", "informal_english_translation": "According to the evidence submitted by Complainant, Complainant is the owner of the following trademark: Benelux wordmark ONDE number 0999318, registration date 27 July 2016. ", "decision_domains": { "ONDE.COM": "REJECTED" }, "panelist": null, "panellists_text": null }