WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
INFOGLOBO COMUNICAÇÔES LTDA. v. Italo de Barros Naddeo
Case No. D D2000-0533
1. The Parties
The Complainant in this administrative proceeding is INFOGLOBO COMUNICAÇÔES LTDA. a Brazilian telecommunication and journalism company, based in Rio de Janeiro.
The Respondent is Italo de Barros Naddeo of Rua Antonio Fraga 151, Florestal � Minas Gerais 35690-000.
2. The Domain Name(s) and Registrar(s)
The domain name in issue is . The registrar is Network Solutions, Inc.("the Registrar").
3. Procedural History
On May 31, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on June 6, 2000 and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On June 17, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail. Copies of the said Acknowledgment were sent at the same time to the Respondent by post/courier and by e-mail. On the same date the Center sent a verification request to the Registrar.
On June 25, 2000 Network Solutions Inc., the Registrar of the . domain name responded to the Center and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name, provided the details of the administrative contact, the billing contact and the technical contact, confirmed that the Network Solutions 5.0 Service Agreement is in effect, and that the said domain name is in "active" status.
The Center reviewed the Complaint and was satisfied that it complied with the formal requirements.
On June 30, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the domain name to the Respondent by Post/Courier (with enclosures) and by e-mail (with attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar (Complaint without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on June 30, 2000 and that the Respondent was required to submit a Response to the Center on or before July 22, 2000.
On July 19, 2000 the Center received the Response and on July 21, 2000 the Center sent an acknowledgement of receipt of same to the Respondent by e-mail. A copy of said Acknowledgement was sent to the authorised representative of the Complainant by e-mail.
On July 25, 2000 the Center invited James Bridgeman to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman on July 26, 2000 in accordance with paragraph 7 of the Rules, the Center proceeded to appoint this Administrative Panel consisting of a single member on July 27, 2000. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant, formerly known as O GLOBO EMPRESA JORNALÍSTICA BRASILEIRA LTDA, based in Rio de Janeiro, Brazil, is described in the Complaint as a communication and journalism company. The Complainant is the publisher of the newspaper which is published in Rio de Janeiro, with a substantial daily nationwide distribution and it is described in the Complaint as being Brazil's leading daily publication.
Since the foundation of the newspaper in 1925, the Complainant has continually used the trademark to distinguish this newspaper and other goods and services of the Complainant. The Complainant has 2,370 employees and has substantial revenue.
The Complainant is the owner of eighteen (18) Brazilian trademark registrations for the mark in Brazilian classes:
11(10) � to distinguish newspaper, magazines and periodicals in general;
16(20;40) � to distinguish books, albums, paper patterns and printed matter and clich�s and printing characters;
38(10) � communication, publicity and advertising services; and
41(20;40) � to distinguish amusement, entertainment and auxiliary services and services related to the organization of fairs, exhibitions, congresses, shows, sporting and cultural events.
The first Certificate of Registration for trademark was granted in the name of O GLOBO EMPRESA JORNALÍSTICA BRASILEIRA LTDA. (which is the former name of the Complainant) in 1951 - and has been renewed since then.
The Complainant is also the registered owner of the US registered trademark number 2.114.148 the application for which was filed on November 20, 1996, and which was registered in class 16 on November 18, 1997. The Complainant has requested the recordal of the change of the name (from "O GLOBO EMPRESA JORNALÍSTICA BRASILEIRA LTDA. to INFOGLOBO COMUNICAÇÔES) before the USTPO in respect of this registration.
The Complainant is also the titleholder of the domain name which has been registered with FAPESP ( the Brazilian Agency responsible for registering domain names in Brazil) since January 01, 1996.
The Respondent describes himself as "an E-businessman, and internet professional, recognised by the Brazilian press and is a man worried about the environmental situation on earth."
5. Parties� Contentions
A. Complainant
As to whether the said domain name is identical and confusingly similar to the Complainant's trademarks, the Complainant submits that the dominant element of the domain name in issue is , and this is clearly identical to the dominant element of each of the various trademarks as mentioned above. The only difference between the domain name and the mark is the addition of the element in the domain name. The Complainant submits that the element does not serve to distinguish the domain name from these trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the said domain name . In support of this claim the Complainant states that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the mark .
Furthermore, the Complainant states that the Respondent, as an individual, is not commonly known or identified by the name neither does the Respondent offer any goods or services under the mark.
The Complainant states that the Respondent has not acquired trademark or service mark rights for the mark in Brazil or, as far as is known, in any other country.
As regards the evidence of bad faith in the registration and use of the said domain name by the Respondent, the Complainant submits that since both the Complainant and the Respondent are Brazilians, and given the established reputation of the Complainant, the Respondent cannot deny knowledge of the Complainants business name and trademarks.
Furthermore in support of the allegation of bad faith, the Complainant submits that the Respondent did not commence use of the domain name until approximately the third week of May 2000. According to the Complainant this use of the domain name commenced only after the Respondent had asked the Complainant "to make an offer" with regard to the dispute. The Complainant submits that the Complainant refused to make such offer. The Complainant submits that in his subsequent use of the domain name the Respondent is only pretending to be putting the domain name to a legitimate non-commercial or fair use.
According to the Complainant, the events leading up to the establishment of a www site by the Respondent at the said www address are as follows: On March 3, 2000 the Complainant, through its attorneys, notified Respondent of Complainant�s claim to the domain name in issue and informed the Respondent of the Complainant�s trademark rights in Brazil and in the United States. The Complainant demanded a response from the Respondent by March 18, 2000. The Complainant did not receive an answer within the stipulated time. Approximately two weeks later, not having heard from Respondent, the Complainant's attorneys tried to make telephone contact with the Respondent but did not succeed as no one answered the Respondent's phone.
The Complainant states that more than one month after the above mentioned notification the Respondent made telephone contact with one of the Complainant's representatives and asked if the Complainant would make a proposal to have the domain name transferred to the Complainant.
The Complainant states that it refused to make any kind of proposal under these circumstances and the Respondent was advised that the Complainant intended to fight for its rights and did not intend to pay for them. According to the Respondent, it was following this telephone contact that the Respondent established a www site at the domain address pretending to be engaged in a legitimate non-commercial or fair use of the domain name.
The Complainant points out that until that time, the Respondent had never operated a business related to the defense of the environment nor had he engaged on any other non-commercial organization known as .
The Respondent also alleges that bad faith on the part of the Respondent can also be established because the Respondent's offer to sell the said domain name defeats any claim he may make to be using the domain name in a non-commercial web site. The Complainant refers to the decision in WIPO Case No. D2000-0154. University of Nebraska v. Bill Saedlo in support of this argument.
Furthermore the Complainant submits as evidence of bad faith, the fact that the Respondent is using the e-mail address info@ and this address is very similar to the characteristic element of the Complainant's corporate name, viz. INFOGLOBO COMUNICAÇÕES LTDA.
The Complainant further alleges that the Respondent has registered the domain name in order to prevent Complainant, as the owner of the mark, from reflecting its mark in a corresponding domain name. Furthermore it is alleged that the Respondent, registered the domain name in order to try to sell it to Complainant and this also demonstrates the Respondent's intent to prevent Complainant from reflecting its mark in a corresponding domain name unless Complainant pays to purchase the domain name from Respondent.
The Complainant further alleges that by registering said domain name, the Respondent has created a likelihood of confusion as to the Respondent's affiliation with the Complainant corporation and with the Complainant's trademark. The Complainant gives as an example, a situation where a person might view the www site, try to contact the person responsible for that web site through the electronic mail which is info@, that person may then search a WHOIS database for the registrant of and assume that the Respondent, whose name will appear, is affiliated with Complainant.
Furthermore the Complainant argues that by virtue of the wide spread use and reputation of the Complainant's trademark , members of the public in Brazil would believe that the entity owning the said domain name was the Complainant or in some way associated with the Complainant and its goodwill, resulting in passing off, breaches of Brazilian consumer protection legislation and trademark infringements.
The Complainant submits that the Respondent owns at least one other domain name identical to a Brazilian trademark which is registered in the name of a third party engaged in the financial services industry viz. . The Complainant asserts that is a famous Brazilian trademark in the financial services industry and in support of this submission the Complainant has furnished this Administrative Panel with details of the said trademark registrations which are owned by Losango Pormotora de Vendas LTDA together with a printout of the Registrar's WHOIS database which identifies the Respondent as the registrant, administrative contact and billing contact for the domain name .
B. Respondent
In his submissions regarding the Complainant's trademarks, the essence of the Respondents case is that while he accepts that the Complainant is the owner of the trademark, he submits that this is a commonplace trademark in Brazil in respect of various goods and services. The Respondent challenges the Complainants right to the domain name since there are other registered trade marks incorporating the words or in Brazil, the USA and he suggests probably elsewhere.
As regards the Respondent's rights or legitimate interest in the said domain name, the Respondent refers to paragraph 4.(c)(i) of the Policy and submits that evidence of use or demonstrable preparations to use the said domain name in connection with a bona fide offering of good or services prior to notice of the dispute is sufficient to establish his rights or legitimate interest in the said domain name .
The Respondent points out that he registered the domain name on April, 20, 1997 and the Complainant did not initiate these proceedings until May, 2000 which was thirty-seven (37) months later. The Respondent argues that the Complainant had every opportunity to register the domain name but did not do so and should not now benefit having sat on its hands.
The Respondent also relies on the principles stated by the court in Network Solutions, Inc. v. Clue Computing, Inc., 946 F. Supp 8585; 1996 U.S. Dist. LEXIS 18013; 41 U.S. P. Q. 2d 1062 (USDC D. Colo. 1996). The Respondent claims that this case is authority for the proposition that "ownership of a registered trademark, even corresponding to a well-known brand, does not automatically entitle its owner to use the corresponding domain name"
As regards bad faith, the Respondent states that the alleged telephone conversation between himself and the Respondent "related in the complaint is completely false and mere fruit of the imagination." He further states that "[t]his "alleged" conversation never took place as commented by the complainant."
He denies that there is any attempt at confusion by his use of an e-mail address similar to the element of the Complainant�s name. He states that the e-mail address existed before the Complainant changed its trade name to . Furthermore the Respondent submits that e-mail addresses with the word before the symbol are commonplace, especially in Brazil and in the United States, because it suggests an appropriate word linking to "information" ("informação", in Brazilian Portuguese).
The Respondent also submits that his registration of the domain name does not prevent Complainant from reflecting its mark in a corresponding domain name.
He denies that there is any pattern of conduct on the part of the Respondent to show that he registered the said domain name in order to sell the domain name. The Respondent states that does not want to sell the said the domain name, even if there were to be a good financial offer.
Addressing the Complainants allegation regarding the Complainant's registration of the domain name , the Respondent states that firstly, this registration is not relevant in these Administrative Proceedings; secondly, the word which can be translated into English as "lozenge" means a geometrical figure and is a generic and common word; thirdly, the word also represents an African language called which is subject of study in many countries in the globe. The Respondent submits that there are many domain names registered, incorporating the word . The Respondent submits that it is impossible to presume the bad faith from this registration.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that(i) the domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant is obliged to prove each of these three elements in order to succeed in its application.
Identical or Confusingly Similar to a Trademark or Service Mark in Which the Complainant has Rights
The Complainant has established that it is the owner of a number of registered trademarks for device marks incorporating the word in Brazil and the USA. The Respondent accepts this although the Respondent alleges that these trademarks lack distinctiveness. He points out that this word means in the English language and that there are many trademarks registered in Brazil and in other jurisdictions incorporating the word or .
In the view of this Administrative Panel the word element is the dominant element in these above referenced registered trademarks of the Complainant and that the said domain name is identical to this dominant element of the said device marks and it follows that the said domain name is identical or confusingly similar to the said registered trademarks in which the Complainant has rights.
Rights and Legitimate Interest of the Respondent The Policy sets out how the Respondent can demonstrate rights to and legitimate interests in the domain name in responding to a Complaint. Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) : (i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name in issue or a name corresponding to the said domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the said domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent submits that before any notice to him of the dispute, he had used the said domain name or made demonstrable preparations to use said domain name in connection with a bona fide offering of goods and services unrelated to the Complainant's business and he takes the position that this use does not represent any kind of violation of the Complainants rights.
Furthermore the Respondent submits that his use of the said domain name represents a legitimate, non-commercial, fair use of the said domain name without any intention for commercial gain to mislead or divert customers or to tarnish the Complainant's activities.
This Administrative Panel does not accept that the Respondent commenced use of the said domain name prior to the date on which he was alerted to the existence of this dispute.
Taking the dates relied upon by the Complainant, it would appear that on March 3, 2000 the Complainant through its attorneys notified the Respondent that the Complainant was claiming the right to the said domain name.
There is a conflict of evidence as to what happened next. The Complainant states that following this notification, the Respondent made telephone contact with a representative of the Complainant asking if the Complainant had any proposal with regard to the transfer of the domain name and that the Respondent was advised that the Complainant would not be making any proposal. According to the Complainant's submissions, it was only after this conversation that the Respondent established a www site at this address sometime around the third week in May 2000 "pretending to be doing a legitimate non-commercial or fair use of the domain name in a web page".
The Respondent submits that this conversation never took place and that the Complainant in fact made an offer to buy the domain name which the Respondent refused.
Nonetheless it would appear from the Respondent's submission that he accepts that he did not establish a www site or make any preparations to use said domain name until the month of May 2000. Furthermore, in his Response, the Respondent claims to have been aware of the dispute since the year 1997. The following quotation from the Response illustrates this: "If the domain name was and is not being used, it's certainly because of the many and countless threats, that started in 1997. Complainant never let the Respondent in peace, using regrettable procedure to avoid regular use of the domain name."
Regardless of whether one takes the dates relied upon by the Complainant or by the Respondent, it seems clear that the Respondent was alerted to the dispute either in the year 1997 or in the month of March 2000 and it would appear that both Parties accept that the Respondent did not establish a www site at the address until the third week in May 2000.
It further seems clear to this Administrative Panel that the Respondent cannot claim to have any rights or legitimate interest based on use of the domain name in pursuit of non-commercial or fair use of the domain name as it seems that the Respondent only commenced use following receipt of the Complainant's letter of March 3, 2000 setting out the Complainant's claim to the domain name. It is significant in this regard that the Respondent registered the domain name on April 20, 1997 and only commenced use in May 2000.
The reality of the situation is that the Respondent has not engaged in any activities of any substance whatsoever, whether they be commercial activities or legitimate non-commercial activities which might have established rights or legitimate interest in the said domain.
This Administrative Panel therefore concludes that the Respondent has established that the Respondent has no rights or legitimate interest in the said domain name.
Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:(i) circumstances indicating that the Respondent has registered or has 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 or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. There is a conflict of evidence as to whether the Respondent asked for payment for the domain name. The Complainant states that the Respondent made contact with the Complainant and asked for the Complainants proposals. The conversation is described in the Complaint in the following terms: " A telephone conversation took place between the Respondent and one of the Complainant's legal representatives � on May 9, 2000 concerning the registration of the domain name. [The Respondent] said that he would transfer the domain name "O GLOBO" to the Complainant depending on what the Complainant would offer him back, and the Respondent kept asking several times what would be the OFFER (sic), in other words, how much the Complainant would pay to have the domain name transferred. The Complainant's representative said the Complainant was not open to OFFER (sic) anything, and there was no other conversation." The Respondent denies that this conversation, as described by the Complainant, ever took place. There is no documentary or other corroborative evidence submitted by the Complainant relating to this alleged conversation or any offer by the Respondent to sell the domain name. Without the benefit of oral testimony and the possibility of having the evidence tested in cross-examination, and in the absence of any corroborative evidence, this Administrative Panel is not in a position to decide as to which of the Parties is correct in this.
In this regard this Administrative Panel must conclude that the Complainant has failed to prove that the Respondent registered the domain name with the intention of selling it to the Respondent or a competitor of the Respondent.
As to the other matters referred to in the Complainants submissions relating to its allegations of bad faith on the part of the Respondent, the Respondent denies that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and further denies the allegation that the Respondent has engaged in a pattern of such conduct.
The Respondent states that the Complainant is the owner of a domain name and consequently has not been denied the opportunity of reflecting the said mark in a corresponding domain name.
The Complainant has submitted evidence that the Respondent has registered the domain name which according to the Complainant is identical to a famous registered trademark. The Respondent has not denied this but has essentially argued that the word is a generic word.
The Respondent has not satisfactorily explained how he had come to be the owner of two domain names viz. and , each of which are identical or similar to trade marks apparently owned by undertakings with which he has no connection.
This Administrative Panel is satisfied on balance that the Complainant has established that the Respondent has registered the said domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.
In reaching this decision, this Administrative Panel notes that it is significant that the Respondent registered the domain name on on April 20, 1997 and only commenced use in May 2000.
This finding is sufficient to allow the Complainant to succeed in these Administrative Proceedings, however, for completeness addressing the other grounds on which the Complainant alleges bad faith this Administrative Panel concludes as follows:
The Respondent further denies the allegation that he registered the domain name primarily for the purpose of disrupting the business of a competitor. It would seem clear that there is no question of the Parties being in competition with each other in business.
Furthermore the Respondent has denied the allegation that by using the said domain name , the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a www site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his www site or location or of a product or service on his www site or location. This Administrative Panel accepts the Respondent's submission in this regard also as there has been no evidence adduced by the Complainant to support any such claim.
This Administrative Panel therefore must conclude that the Complainant has established the three elements of the test set out in Paragraph 4(a) of the Policy viz that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the said domain name and that the Respondent has registered and is using the said domain name in bad faith.
7. Decision
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name identical or confusingly similar to the Complainant's service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name should be transferred to the Complainant.
James Bridgeman
Presiding Panelist
Date: August 24, 2000
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