WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV GLOBO LTDA. v. RÁDIO MORENA
Case No. D2000-1685
1. The Parties
Complainant is TV GLOBO LTDA., a company based in Rio de Janeiro, Brazil, with its principal place of business located at Rua Marques de Sao Vicente, 30 Sobreloja, Rio de Janeiro, Brazil, 22210010.
Respondent is RÁDIO MORENA, a corporation duly organized and existing under the laws of the state of Brazil, with its principal place of business located at Av. Buerarema 819 Itabuna, Bahia 45600-000, Brazil.
2. The Domain Name and Registrar
The domain name under dispute is "" (the "Domain Name").
The registrar of the domain name under dispute is Network Solutions, Inc. ("NSI" or the Registrar), with business address in Herndon, Virginia, USA.
3. Procedural History
On December 4, 2000, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the " Rules") approved by ICANN on October 24, 1999, and WIPO�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("WIPO�s Supplemental Rules).
As customary, WIPO sent a "Request for Registrar Verification" via email to NSI requesting, a confirmation that NSI had received a copy of the complaint; that the domain name under dispute is registered with NSI; that Respondent is the current registrant of such domain name and full contacts details available under the WHOIS database. On December 19, 2000,, WIPO received via e-mail from NSI the "Network Solutions� Verification Response" confirming the above as well as that the Domain Name is currently registered to Respondent and is in "active" status, and that a certain Network Solutions 5.0 Service Agreement is in effect.
WIPO completed a "Formal Requirements Compliance Checklist". It is worth mentioning that the undersigned Panel has independently determined and agrees with WIPO�s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and WIPO�s Supplemental Rules.
On December 21, 2000, WIPO properly sent via e-mail and hardcopy through express mail to Respondent and to its administrative, technical and billing contacts, a "Notification of Complaint and Commencement of Administrative Proceedings" enclosing copy of Complainant�s complaint and confirming the formal initiation of this proceedings as of December 22, 2000, and granting a term for providing a response no latter that January 10, 2001. Furthermore, hardcopy of such Complaint as confirmed by Complainant was also previously sent by Complainant to Respondent. A copy has also been communicated to the ICANN and to the Registrar. This Panel considers that the complaint was properly notified to the registered domain-name holder, the technical contact, and the administrative contact as provided for in paragraph 2(a) of the Rules.
This Panel considers that the complaint was properly notified to the registered domain-name holder, as it achieved actual notice, and to the administrative, technical and billing contacts as provided for in paragraph 2(a) of the Rules.
On January 10, 2000, Respondent failed to comply with the deadline to submit its response. On January 11, 2000, Respondent submitted its Response to the Complaint through e-mail, to the WIPO Center. On the same date and on January 12, 2000. Respondent requested via e-mail that the response be accepted as it was sent late due to personal health problems.
On January 11, 2000, WIPO sent via e-mail to Respondent and to its administrative, technical and billing contacts, with copy to Complainant, a "Notification of Respondent Default" confirming that Respondent had failed to comply with the deadline to submit its response.
Respondent failed to elect whether the dispute be decided by a single-member or by a three-member, and therefore a single Panelist was appointed as proposed by the Complainant, as may be evidenced from section 6 of Complainant�s complaint.
On February 12, 2001, the undersigned received an invitation to participate as Panelist in the referred to domain name dispute proceeding. On February 13, 2001, the undersigned signed and sent to the WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.
On February 26, 2001, WIPO sent to Complainant and Respondent a "Notification of Appointment of Administrative Panel and Projected Decision Date", appointing Pedro Buchanan as Sole Panelist and scheduling March 12, 2001, as the date for issuance for the Panel�s decision, notifying the above pursuant to paragraphs 6(f) and 15(b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist, with copy being sent to Complainant and Respondent.
The Panel has not received any further requests from Complainant or Respondent regarding other submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information, statements or documents from the parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, as being the language of the domain registration and Service Agreement, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
Complainant is engaged in producing, exhibiting and providing television and entertainment products and services. Complainant has been in the television and entertainment business for 35 years. Complainant is the largest and most famous television company in Brazil and is one of the largest television companies in the world. Complainant�s products and services are available in more than 130 other countries through Complainant�s international television channel called "TV Globo Internacional". Complainant provides these products and services under a number of names and trademarks, including its JORNAL HOJE mark.
Complainant has used its JORNAL HOJE mark extensively to identify, advertise, market and promote its television and entertainment products and services in Brazil for almost 30 years as well as in and other countries through Complainant�s international television channel "TV Globo Internacional". "Jornal Hoje", identified by Complainant�s JORNAL HOJE mark, is a television news program-airing daily in the afternoon in Brazil. Complainant has used its JORNAL HOJE mark since 1971.
The TV Globo Ltda. television network covers almost the whole of Brazil, with audiences scattered throughout 99.84% of Brazil's 5,043 municipal districts. The figures offer definitive proof of its ongoing growth: 113 broadcast and affiliate stations; audience shares of 74% / prime-time; 56% / morning; 59% / afternoon; and 69% / late-night viewers. TV Globo Ltda. advertising revenues absorb 75% of all Brazil's placement budgets.
In support of its Complaint, Complainant submitted copies of the following Trademark Applications:
A) Brazilian service mark registration n� 800 032 446 for JORNAL HOJE filed before the Brazilian Trademark Office on February 13, 1980 and granted on October 1982 to cover communication, publicity and advertising services in class 38.10;
B) Brazilian service mark registration n� 800 032 454 for JORNAL HOJE filed before the Brazilian Trademark Office on February 13, 1980 and granted on October 1982 to cover entertainment services in class 42.20 and 41.40;
Both registrations are effective as of October 5, 1992.
Complainant has continuously and extensively advertised and promoted its JORNAL HOJE mark for almost 30 years in numerous communications media throughout Brazil and other countries. Complainant also utilizes its JORNAL HOJE mark on Complainant�s website, located at "".
Complainant has developed substantial goodwill and name and brand recognition in its JORNAL HOJE mark, based on its long and extensive use of the JORNAL HOJE mark and on the quality of products and services provided under the JORNAL HOJE mark.
That on November 8, 2000, in the website "" the "" domain name was offered for sale for U$ 2,000.00 and invited offers to buy the domain name at issue in this dispute, as well as other domain names.
Respondent is the main radio station from Itabuna, BA, Brazil, broadcasting since 1987 in a region where it leads the audience. It belongs to a communications group that includes one of the most important newspapers in the state of Bahia (A Regiao), a small record company (Jupara Records), a marketing consultant firm (Morena Pro), a ISP (Grapiuna), a newspaper based in London (The Brazilian), a virtual newspaper (London Daily) and the specialized portal "C".
It also owns some other websites that complements its online projects, including "", "" and "".
Respondent claims to be the first station in Latin America to play only digitally recorded music and commercials. It was the first station in Bahia to broadcast online and one of the few to do this broadcasting 24 hours a day, totally live.
Respondent's 16 websites are among the Internet leaders in Bahia state and its English-version website for the station is the most visited by foreigners.
In 1998 Respondent decided to broaden the information on the radio industry it gives on its own website (""), so it started a news project with the domain "".
As indicated by Respondent, the new service, "jornal Hoje na Web" was aimed to gather in the same place the Brazilian, regional and world news that they publish in their websites: , "", "". That the jornal Hoje name is a very common one (it translates "today's newspaper").
Respondent indicated that although it is a very successful company, it did not had the same amount of money as the big companies like Complainant, and therefore it needed to be more creative on its marketing actions. That one way they found to promote a website without spending any money at all was to list it for sale on the auction sites while they worked on the site. That they did it first with the London Daily newspaper, in 1998, with great success as they had 1,500 visitors in one week before actually having any content online. And after they put the content online it grew fast and today they have in excess of 50,000 unique visitors a month. That they have been doing the same with their sites "", "", "" and "". That such is the reason why "" was listed in BankofDomains until November 10th, when they finally launched the website with its content online. That it was unfortunate that Complainant�s lawyers printed the previous state of the website, just one day before the change.
5. Parties� Contentions
A. Complainant
That Respondent has registered the domain name "" for the purpose of selling or renting it to Complainant or to third parties, and is not using the domain name for any legitimate purposes. The "" domain name is identical, and therefore confusingly similar, to Complainant�s respective JORNAL HOJE mark, in appearance, pronunciation and sound. The "" domain name incorporates fully Complainant�s JORNAL HOJE mark. That the addition of ".com" to the domain name is necessary element of the domain names, and not voluntary and arbitrarily chosen additions; thus, the ".com" does not serve to distinguish the domain name from Complainant�s JORNAL HOJE mark. That Complainant�s JORNAL HOJE mark is uniquely associated with Complainant and its television and entertainment products and services.
That the JORNAL HOJE mark is not legitimately used by any other individual or entity (other than entities properly affiliated with Complainant), nor in relation to products or services other than those offered by Complainant. That for, these reasons, the JORNAL HOJE mark and words uniquely suggest Complainant�s television and entertainment products and services.
That the Respondent has no rights or legitimate interests in respect of the "" domain name. That Respondent�s use of the "" domain name is not in connection with a bona fide offering of goods or services. That Respondent: is not commonly known or identified by the name "JORNAL HOJE"; does not operate a business or other organization commonly known as JORNAL HOJE or offer any goods or services under the JORNAL HOJE mark; has not acquired trademark or service mark rights for the JORNAL HOJE mark in Brazil; and, is not making a legitimate noncommercial or fair use of the domain name but has offered for sale the "" domain name; is not a licensee of Complainant.
That the "" domain name has been registered in bad faith. That Respondent: does not conduct any legitimate commercial or noncommercial business under the JORNAL HOJE mark; has registered the "" domain name for the purpose of selling or renting or otherwise transferring the domain name registration for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain name; has registered the "" domain name in order to prevent Complainant, as the owner of the JORNAL HOJE mark, from reflecting its mark in corresponding domain name unless Complainant pays to purchase or rent the domain name from Respondent; is diverting consumers away from the official site of Complainant by linking Internet users to "" website and making it difficult for Complainant�s customers and the general public to locate Complainant�s official website, thereby disrupting Complainant�s business.
That Respondent�s use of the "" domain name to link users directly and involuntarily to "" which offers products and services completely unrelated to Complainant�s products and services, has created a likelihood of confusion with the Complainant's JORNAL HOJE mark as to the source, sponsorship, affiliation, or endorsement of Respondent�s website or location or of products and services on Respondent�s website.
That Respondent�s use of the "" domain name is diluting and weakening the unique and distinctive significance of Complainant�s JORNAL HOJE mark.
That Respondent is in the practice of cybersquatting as it has registered in its own name a number of third parties well-known marks such as "" which corresponds to a registered mark of Xuxa Promoções e Produções Art�sticas Ltda (XUXA is a famous television shows presenter in Brazil and South America);
That Respondent registered the "" and "" domain names with the purposes of renting or selling them to TV Globo Ltda., which is the owner of the JORNAL NACIONAL and GLOBOESPORTE trademarks in Brazil. That a Complaint was filed against Respondent and the Administrative Panel of the WIPO Arbitration and Mediation Center decided for the transfer of these domain names to TV Globo Ltda. understanding that Mr. Marcel Leal, administrative contact for Respondent, registered these domains names in bad faith.
That Respondent�s use of identical, and therefore confusingly similar to Complainant�s JORNAL HOJE mark has caused and will continue to cause serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its JORNAL HOJE mark.
Lastly, Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.
B. Respondent
That in 1998 before starting a news project with the domain "" they consulted with the trademarks office in Brazil about the Jornal Hoje name. That according to such office, it was protected only for "communication, publicity and advertising services" and for "entertainment services"). That nothing applied to the Internet, so they went ahead.
That Complainant has never promoted the JORNAL HOJE mark outside Brazil.
That Respondent never approached anyone to sell the domain. Nor can the Complainant prove that. That Respondent registered the domain for its own use and always had a project for it.
That getting linked directly and involuntarily to "" was a creative marketing action, already made for other websites they own. That Bank of Domains does not offer domains for sale, but offers full projects - domain + content - for renting, partnership or sale - and it is a legal activity. That they never talked to anybody about selling "".
That "" was linked directly to "" website. That this proved that Respondent had a project for "JornalH". That "" is the portal for their companies and projects, all listed there.
That Respondent is using "" to gather our news services in one place since November 2000, a very legitimate purpose and there's no way somebody would confuse their "jornal Hoje na Web" with Globo's program or Globo itself. That Globo's portal, "" (where all their products are reunited), has been promoted in a huge and millionaire campaign to tell everybody all Globo products should be find there. Even the other domains that Complainant own are being left behind in favor of "".
That with respect to the registration of a number of third parties well-known marks such as "" that the same is a registered mark of Xuxa Promoções e Produções Art�sticas Ltda and is not owned by Respondent.
That on the Internet "jornal hoje" does not relate to Globo's program, but to other websites. That "hoje" is a very common word on the Internet, meaning "today", and is extensively used in other websites.
That Respondent�s use of the "" domain name is in connection with a bona fide offering of goods or services. That Respondent has been using this domain since November 2000, to reunite all its news services in one place. The project has been very successful with their affiliates, that can point their news link to just one place to receive the news services we offer.
That Respondent is commonly known or identified by the name JORNAL HOJE since November 2000. That on the Internet they are more known by the name "jornal hoje" than Globo.
That Respondent does operate a business or other organization commonly known as JORNAL HOJE, as Jornal Hoje na Web is a service from Respondent since November and is broadly recognised on the web.
That Respondent is making a legitimate noncommercial or fair use of the domain name. That Respondent is using the "jornal Hoje na Web" aimed to gather in the same place the brazilian, regional and world news that they publish in their websites: "", "", "". That such is a noncommercial and fair use of the domain. That since November 10th, 2000, much before Complainant filed its complaint with WIPO, users find our news service at this domain.
That Respondent has registered the domain for its own use and is using it since November 2000 for a legitimate service.
That Complainant owned the domain "www..br" from 1996 to 1998, and in 1998 either sold, didn't renew or lost the domain, that was registered again by a church.
That the "official site" of Complainant is "", so respondent cannot divert consumers away from it by offering a service at "".
That it is very easy for the general public to "locate Complainant�s official website" its been the center of a huge advertising campaign and is one of the 10 most visited websites in Brazil according to Media Metrix.
That the users get a news service from Respondent when they arrive at the "" domain.
That Respondents service could never be confused with Globo's program.
That the is no proof of any damage to Complainant�s program image.
Respondent claims that the Internet is supposed to be a democratic place, where every person has a space to promote its own services, products, thoughts, ideas. That the domain name, by the principle that created it, is granted in a "first come, first served". That he agrees that cybersquatting must be fought, but it is very important to distinguish between a domain that is registered only for selling it to a company already with that trademark, and a domain registered to develop a project on the web.
That Complainant failed to prove all three points stated on WIPO'S rules (sic), specially on the "bath faith".
6. Discussion and Findings
The Panel considers that the Respondent by registering the contested domain name with Network Solutions, Inc. (an ICANN accredited domain name registrar), it agreed to be bound by all terms and conditions of Network Solutions Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which policies request that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider's supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondent�s domain name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the parties be notified of the appointment of this Panel; and, that both parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceedings, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond. That the default of the Respondent to submit a response is not due to any omission under these proceedings. That there is sufficient and adequate evidence confirming the above.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the Domain Name has been registered and is being used in bad faith.
That it is a fact that has not been contested by Respondent, that the Complainant has registered the JORNAL HOJE mark before the Brazilian Trademark Office. Furthermore, the JORNAL HOJE mark has not been registrated by Respondent, nor Respondent demonstrated to have any right or title upon such mark, prior to the rights, that to such mark, have in fact been evidenced by Complainant.
That Respondent�s argumentation in the sense that JORNAL HOJE mark was protected only for "communication, publicity, advertisement and entertainment services" and not for "Internet services" has no application in this particular case. As a difference from the trademark regime, on the domain name regime, then same and exact phoneme may not be used by more than one registrant, nor in more that one site. Therefore, the class of services or products protected by a trademark is indifferent for the domain name regime in the Internet. The suggested rule of "first come, first served" defines priorities in the domain name registration. But priority itself is not sufficient. Legitimisation or right to use such domain name must also be evidenced. Even when there is a domain name dispute filed by someone that is a legitimate possessors of a trademark that protects a specific class of product or service, even in the Internet, the current domain name registrant may demonstrate its rights and legitimate interests to a certain domain name on any given class, even different from the Internet, when responding to the complaint, so that pursuant to paragraph 4(a)(ii) of the Policy, if such elements are found by the Panel, the domain name may not be taken from its holder.
The registration provides the "exclusive right" to the use of a trademark within a specific line of business activity. The Panel considers that this proceeding does not pretend to determine who has the right to the exclusive use of a mark within a specific line of business activity, but only to determine who has the priority and right to use the domain name "" in the Internet.
The first element that the Complainant must prove under Paragraph 4(a) of the Policy is that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel notes that the entire mark "JORNAL HOJE" is included in the domain name, the only addition, being the ".com." The addition of the phrase is non-descriptive and does not alter the value of the mark represented in the domain name. In addition, the ".com" is a necessary element required for registration of a domain name under this gTLD, and not voluntary and arbitrarily chosen additions to be included by registering parties.
This Panel considers that Complainant has rights over the JORNAL HOJE mark, and that this mark is identical to the domain name that has been registered by the Respondent. Respondent�s Domain Name is identical to Complainant�s JORNAL HOJE mark and to the name of one of Complainant�s television news program.
This Panel also considers that it is within the spirit of the Internet as well as within that of International Agreements such as the Paris Convention on Intellectual Property that was adopted in Stockholm on July 14, 1967, to prohibit unfair competition, considering as such those acts that are capable of creating confusion with respect to the establishments, products or activities of a competitor. The Paris Convention considers as such, any competition act which is contrary to the honest uses on industrial or commercial matters. Under such Convention it is sufficient to provide evidence that the competitor may subtract for its benefit, the attention from the clientele of a competitor, without compromising or making use of its own forces, resources or inventive, but simply by performing imitation acts, to be considered as carrying on unfair competition practices.
This Panel considers that Respondent, by registering the domain name under dispute, under a very well known JORNAL HOJE mark which Respondent perfectly knew that has been used for a very long period of time by Complainant, was clearly intending to unfairly compete with Complainant and to subtract for its benefit the attention from the clientele of its Competitor, without compromising or making use of its own forces, resources or inventive, but simply by performing such imitation acts in the same line of business activities and within the same regional market from which both parties operate.
This Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the domain name as it has not used or prepared to use the "" domain name in connection with any bona fide offering of goods or services as contemplated under Paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under Paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial 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 as contemplated under Paragraph 4(c)(iii) of the Policy.
The Panel also finds that Respondent registered and has used the Domain Name in bad faith, in particular but without limitation, pursuant to Paragraph 4(b)(i) of the Policy, in view that there are circumstances and conclusive evidence indicating that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of Respondent�s documented out-of-pocket costs directly related to the domain name; and pursuant to Paragraph 4(b)(iv) of the Policy, in view that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant�s mark, as to the source, sponsorship, affiliation, or endorsement of Respondents� website.
Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panel�s decision, which may eventually affect or give ground for termination of this administrative proceedings as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4(k) of the Policy.
7. Decision
Therefore, and in consideration to the Complaint�s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:
(1) that the Domain Name registered by Respondent is identical to the name of Complainant�s JORNAL HOJE television news program and to Complainant�s mark JORNAL HOJE.
(2) that Respondent has no rights or legitimate interests in respect of the "" Domain Name; and
(3) that the "" Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the domain name "" be transferred to TV GLOBO LTDA., Complainant.
Pedro W. Buchanan
Sole Panelist
Dated: March 20, 2001
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