WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Globo Design Ltda.
Case No. D2000-1559
1. The Parties
The Complainant is TV Globo Ltda., a company based in Rio de Janeiro, Brazil, with its principal place of business located at Rua Marqu�s de São Vicente, 30 Sobreloja, Depto. Jur�dico, Rio de Janeiro, Brazil (the "Complainant"). Respondent is Globo Design Ltda., with its place of business located at SMLN � Tr 03 � Conj 03 � Casa 06 � Lago Norte, Brasilia, DF 71540-030, Brazil, (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is . The Registrar is Network Solutions, Inc. NSI (the "REGISTRAR"), 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of TV Globo Ltda. on November 10, 2000, by email and on November 13, 2000, in hardcopy.
The Complainant made the required payment, as informed in item 31. -Communications - of the Complaint.
On November 27, 2000, registration details were sought by the Center from the registrar and these were confirmed by the registrar on December 01, 2000. Those details included that the registrar�s 5.0 Service Agreement (which incorporates the Policy) is in effect, that the domain name in dispute was registered through the registrar, that the "current registrant" is the Respondent, and that the domain name is in "Active" status.
On December 14, 2000, the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.
On January 02, 2001, the Respondent sent to the Center a Response to the Complaint in electronic form, which was acknowledged on January 4, 2001. On January 08, 2001, the Center received the Respondent�s response in hardcopy.
On January 12, 2001, the Center appointed Mr. Jos� Pio Tamassia Santos as the single member of the Administrative Panel (the "Panelist"), after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, and, on the same date, notified the parties of this appointment.
On January 22, 2001, the Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules ") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is TV Globo Ltda., a company based in São Paulo, Brazil, is the largest and most famous television company in Brazil, and is one of the largest television companies in the world.
The Complainant alleges that the trademark upon which the Complaint is based is "clic, clic ", and attached copy and the English translation of the Brazilian Service Mark Application number 821 958 100 for "clic, clic ", in international class 38, filed on January 31, 2000 to protect communication by computer terminals and computer aided transmission of messages and images.
Complainant also attached copies and English translations of the Brazilian Service Mark Application number 821 416 677 for "" filed on June 14, 1999 to protect communications, publicity and advertising services, in Brazilian class 38.10 and the Brazilian Service Mark Application number 821 416 669 for "" filed on June 14, 1999 to protect entertainment services.
The Complainant also attached the US Service Mark Application for "" filed with the United States Patent and Trademark Office on the basis of use in commerce since March 26, 2000.
Complainant affirms that has continuously and extensively advertised and promoted its "clic, clic " and "" marks since March 2000, in numerous communications media throughout Brazil and worldwide to identify, advertise and promote the internet portal site of the group Organizações Globo called , and encloses copies of pages from the portal site as well as some adverting material obtained from prestigious Brazilian newspapers and weekly magazines showing the use of the "clic, clic " and "" marks.
The Complainant claims that has developed substantial goodwill and name and brand recognition in its "clic, clic " and "" marks, based on the extensive use of these marks in the media and on the quality of the services provided under these marks.
The Complainant also calls the Panel�s attention to the fact that the date of the registration of the domain name, May 15, 2000, is very close with the date of the launching of the portal site, March 26, 2000.
5. Parties' Contentions
Complainant contends that:
(1) The domain name is almost identical, and therefore confusingly similar to, Complainant�s "clic, clic " and "" marks, in the following manners:
(a) Is similar in appearance, pronunciation and sound to Complainant�s "clic, clic " and "" marks.
(b) Incorporates fully Complainant�s "clic, clic " and "" marks.
(c) Has suggestions, connotations, and commercial impressions that are identical, and therefore confusingly similar, to those of Complainant�s respective "clic, clic " and "" marks.
Complainant�s "clic, clic " and "" marks, which Respondent has wrongfully incorporated into its domain name, are uniquely associated with Complainant and its television, entertainment and Internet products and services.
The "clic, clic " and "" marks are not legitimately used by any other individual or entity (other than entities properly affiliated with Complainant) or in relation to products or services other than those offered by Complainant. For these reasons, the "clic, clic " and "" marks and words uniquely suggest Complainant�s television, entertainment and Internet products and services, and the marks and words have connotations and commercial impressions of Complainant�s expertise relating to Complainant�s television, entertainment and Internet products and services.
(2) Respondent has no rights or legitimate interests in respect of the domain name, as demonstrated by the following facts:
(a) Respondent�s use of the domain name is not in connection with a bona fide offering of goods or services.
(b) Respondent has not acquired trademark or service mark rights for the "clic, clic " and "" marks in Brazil.
(c) Respondent is not making a legitimate noncommercial or fair use of the domain name
(d) Respondent is neither a licensee of Complainant, nor is the Respondent otherwise authorized by Complainant to use Complainant�s "clic, clic " and "" marks or to apply for or use any domain name incorporating the "clic, clic " and "" marks.
(3) The domain name has been registered in bad faith, as shown by the following:
(a) The Respondent does not conduct any legitimate commercial or noncommercial business under the "clic, clic " and "" marks.
(b) The Respondent has registered the domain name for the purpose of selling or renting or otherwise transferring the domain name registration to Complainant who is the owner of the respective "clic, clic " and "" marks or to a competitor of Complainant for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain name.
(c) The Respondent has registered the domain name in order to prevent Complainant, as the owner of the "clic, clic " and "" marks, from reflecting its marks in corresponding domain name unless Complainant pays to purchase or rent the domain name from the Respondent.
(d) By registering the domain name, Respondent is diverting consumers away from the official site of Complainant and making it difficult for Complainant�s customers and the general public to locate Complainant�s official web site, thereby disrupting Complainant�s business.
(e) If Respondent sells the domain name to a competitor of Complainant, that competitor of Complainant could likewise use this domain name to disrupt the business of Complainant and cause a substantial likelihood of confusion and substantial actual confusion.
(4) Respondent�s registration of the domain name is diluting and weakening the unique and distinctive significance of Complainant�s "clic, clic " and "" marks.
(5) Respondent�s registration of the domain name could tarnish Complainant�s "clic, clic " and "" marks by giving the impression that Complainant, or an affiliate of Complainant, is selling or renting domain name.
(6) Respondent�s use of domain name almost identical, and therefore confusingly similar to, Complainant�s "clic, clic " and "" marks have caused serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its "clic, clic " and "" marks.
(7) Respondent�s conduct is in violation of Brazilian trademark and unfair competition law.
Respondent contends:
(1) That the statements alleged by the Complainant are completely unsubstantiated because:
(a) "clic, clic " trademark does not legally belong yet to the Complainant as it was alleged. The Complainant possesses no definitive registration yet at the INPI, agency in charge of trademark registration in Brazil.
(b) The word �clic� (or �click�), largely used nowadays, has been commercially used by the Complainant since March 2000, and is obviously an invention of its own.
(2) That it must be highlighted the long time interest of the Respondent for the word �click� (or �klick� or �clic�), much earlier than the TV Globo Ltda. plans to use these words as part of a commercial trademark, because:The Respondent has registered in Notary Office, according to Brazilian laws, since 1984, the name D. Klick (where the letter D, in Portuguese, sounds like THE, in English) for the denomination of a musical band.In 1989, the album (LP) "Prova de Amor" (recently re-edited in CD) recorded by a famous Brazilian singer, Ângela Ro-Ro, received wide divulgation in Brazil. In this album there is a music � "VICIADO EM REGRAS" � whose author is Aleph D Clic (without the K), pseudonym for Alfredo Villela de Andrade Mendes (musician and composer), currently director of Globo Design Ltda.In 1995, Alfredo Mendes participated of Music Festivals in Portugal, during which were distributed divulgation pamphlets, utilizing, once more his artistic name D�Click (with the K).Since February 7, 2000, Alfredo Mendes has the electronic address theclick@ (currently theclick@) in the Zaz provider (currently Terra provider).
(3) That it should be considered that the word �globo� refers to a universal concept. It is not possible that a company for as respectable it may be, demands for itself, as a result of its economical power, the exclusive right to the word �globo�. Anywhere in the world, from large metropolis to little communities, the word �globo� is widely used, even in the Internet, with commercial purposes.
(4) That, in opposition to the Complainant�s allegations, the Respondent has never requested any amount of money so as to sell or rent the domain name having, instead, been contacted by the Complainant to sell or give up the rights to the domain at issue.
(5) That the above proves that there has never been bad-faith on the part of the Respondent.
(6) That the site, which has only the index page and a brief summary of contents, is not activated so far, in terms of services and products offerings, exactly as a result of the pressure exerted by the Complainant, having the Respondent no conditions to commit himself with third parties before the domain name ownership issue is resolved.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points:
"4.a.(i) Identity or Confusing Similarity"
The Complainant, TV Globo Ltda., is, as informed before, the largest and most famous television company in Brazil.
Because of its large audience and popularity, the name �GLOBO� became a famous and notorious mark, in connection with television entertainment, well known not only in Brazil but in Latin America and most of the Portuguese speaking countries as well.
If we combine this fact with the vast promotion made in newspapers and magazines, inviting the readers to �double click� (clic, clic) to get in contact with various television celebrities, we can understand that there is a large possibility that people try to get this contact by typing �clicglobo� or �clickglobo�.
That is why, when a well-known and notorious mark is involved, no prefix additions are normally accepted for registration, because they lead to a likelihood of confusion with the main part of the mark.
This is confirmed by what the Respondent says in its Response, that there are no doubts that the expressions and "clic, clic " are similar, exactly because both are prefix additions to the main part of the expression: "".
Thus, the main point is not that the domain name at issue interferes with the expression used in the commercial texts, but that it can lead the Internet users to fail in the attempt of reaching the Complainant�s official site.
Considering the above, the expressions "clic, clic " and , even if not considered identical, have similar sounds, and can be considered confusingly similar, because both are prefix additions to the main part of the expression ��.
Therefore, the requirement of Paragraph 4.a.(i) is fulfilled.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
This panelist must consider that the word "globo" is part of the name of the Respondent "Globo Design Ltda." as well as of the Complainant "TV Globo Ltda.".
However, is a domain name belonging to the Complainant and contains the well-known mark �GLOBO� that identifies the holding company controlling, among others, the Complainant.
Thus, this Panel understands that the expression "" cannot be used as a domain name, even when modified by a prefix addition, without the authorization of the owner.
The Respondent has proved a link between the words �clic�, �klick� and �click� and the Respondent�s responsible, in a moment in time prior to the Complainants use of these words as part of commercial matters.
However, this proved links refer to an activity that is not related to the planned content of the site, and by consequence, not related to the domain name at issue.
On this basis, this Panelist concludes that the Respondent has no rights in respect of the domain name . Therefore, the requirement of Paragraph 4.a.(ii) is fulfilled.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
The Complainant informed, and this Panel confirmed, that the Respondent also owns the domain names and , both registered in May 2000, at the same time than the domain name at issue.
The Complainant informed as well, and the Respondent confirmed, that the latter had at the time the Complaint was filed, a domain name , which was cancelled by NSI in July 2000, according to the Deactivation Notice enclosed to the Response.
If we examine the meaning of the expressions composing these domain names, we find that
a) "teveglobo" means "TV Globo", the name of the Complainant;
b) "globoevoce" means "globo and you", which is the same as "G voc�" translated as "Globo.with you", an expression repeatedly used by the Complainant it its promotions of the official site both in printed matters and in TV programs;
c) "globodicas" means "tips from Globo", an expression frequently used in Globo�s official site as "dicas G".
This examination leads the Panel to conclude that the Respondent has engaged in a pattern of conduct registering expressions commonly used by the Complainant in its promotional material, which is clearly a bad faith attitude.
Because of this, this Panelist arrives to the conclusion that the Respondent has registered and used the domain name with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is fulfilled.
7. Decision
Complainant has proved that the domain name is identical or confusingly similar to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent has registered and used the domain name in bad faith.
Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Jos� Pio Tamassia Santos
Sole Panelist
Dated: January 30, 2001
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