WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Alvaro Collazo
Case No. D2003-1013
1. The Parties
The Complainant is TV Globo Ltda., Sobreloja, Rio de Janeiro, of Brazil, represented by Matos & Associados, Brazil.
The Respondent is Alvaro Collazo, Tarariras, Colonia of Uruguay.
2. The Domain Name and Registrar
The disputed domain name is registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2003. On December 22, 2003, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name at issue. On December 29, 2003, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 26, 2004.
The Center appointed Daniel Peña as the sole panelist in this matter on February 3, 2004. 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.
4. Factual Background
Given the lack of response by the Respondent and after the exam of the evidence presented with the Complaint, the following facts shall be deemed as duly proved:
• TV Globo Ltda. based in Rio de Janeiro, Brazil, is engaged in producing, exhibiting and providing television and entertainment products and services.
• Complainant has been in the television and entertainment business for more than 35 years.
• Complainant owns a trademark registration in Brazil for (i) the REDE GLOBO mark, Registration No. 817 665 633 in Class 38.10, filed with the Brazilian Patent and Trademark Office on December 28, 1993, and in force since February 21, 1996, for communication, publicity, and advertising services; and (ii) the REDEGLOBO mark, Registration No. 817 665 625, in class 41, filed on December 28, 1993, and in force since February 13, 1996, for entertainment services.
• Complainant also owns a Community Trademark Registration for REDE GLOBO, Registration 000721738, filed with the OHIM - Office for Harmonization in the Internal Market, in January 7, 1998, and granted in November 22, 1999, to cover television broadcasting; cable television transmission; television transmission; entertainment in the nature of games, television production, television programs, television show production, in International Classes 38 and 41. Besides that, Complainant owns a number of trademark registrations for REDE GLOBO and GLOBO worldwide.
• TV Globo Ltda. is the largest and most famous Television Company in Brazil and is one of the largest television companies in the world.
• TV Globo Ltda.'s products and services are available in more than 130 other countries.
• TV Globo Ltda. provides these products and services under a number of names and trademarks, including its REDE GLOBO mark
• TV Globo Ltda. has used its REDE GLOBO mark extensively to identify, advertise, market and promote its television and entertainment products and services in Brazil and worldwide through its international television channel called TV Globo Internacional.
5. Parties� Contentions
A. Complainant
TV Globo Ltda. employs more than 8,000 permanent employees and Complainant�s television network outsources jobs to an additional 4,000 professionals, including writers, directors, actors, journalists, producers, musicians, set and costume designers, technicians, and backstage staff, who work in areas directly involved in Complainant�s programs, i.e., soap operas, telenovelas, television movies, sports, variety, comedy and other television programs. Complainant�s advertising revenues absorb 75 percent of all of Brazil�s placement budgets.
REDE GLOBO mark is well known in Brazil and other countries.
REDE GLOBO 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. Its advertising revenues absorb 75% of all Brazil's placement budgets.
Making good use of its high audience ratings, Rede Globo has been subtly slipping community benefit messages into its wildly popular soap-operas for the past eleven years. Known as social merchandising, this ploy weaves information of public utility into their plots. These issues include equal gender rights, and the relationship between population growth and birth control. In fact, UNICEF has officially acknowledged the importance of this method in lowering the infant mortality rate in Brazil.
Complainant has continuously and extensively advertised and promoted its REDE GLOBO mark for more than 35 years in numerous communications media throughout Brazil and other countries. Complainant also utilizes its REDE GLOBO mark on Complainant�s website, located at .
The domain name is identical to Complainant�s REDE GLOBO mark, except for the addition of the acronym for World Wide Web "www" before the mark, and confusingly similar, in appearance, pronunciation and sound to Complainant�s REDE GLOBO mark. The domain name incorporates fully Complainant�s REDE GLOBO mark, because most URLs include followed by a period before the second level domain name, and Internet users would most likely not notice the omission of the period. Furthermore, the addition of ".com" to the domain name is necessary elements of the domain name, and not voluntary and arbitrarily chosen additions; thus, .com does not serve to distinguish the domain name from Complainant�s REDE GLOBO mark
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds this first element to exist given an evident similarity between trademark REDEGLOBO owned by the Complainant and the domain name registered by the Respondent. Therefore, it is of great importance the fact that the Respondent�s domain name reproduces exactly the registered trademark of the Complainant, which is broadly known in multiple jurisdictions.
The addition of the letters "www" as a distinctive part of the domain name does not affect the similarity criterion. On the contrary, it suggests that the Complainant was trying to hide his intention of taking advantage of the domain name and even creating an obstacle to the application of the UDRP.
B. Rights or Legitimate Interests
Complainant has evidenced a legitimate interest on the intellectual property of its distinctive signs by the registrations made as well as by the extensive use of trademark REDEGLOBO for the services covered by such trademark registrations.
By not responding to the Complaint, Respondent lost his right to argue in his defense any of the legitimate interest criteria established under paragraph 4 c of the UDRP.
C. Registered and Used in Bad Faith
There is no evidence about a possible relationship between the Respondent and the Complainant justifying the use of trademark REDEGLOBO as a domain name by Respondent. No authorization or license has been granted to Respondent; on the contrary, there is evidence about the fact that the domain name registration was made with the intention of profiting from the recognition existing in the public regarding trademark REDEGLOBO.
It is not possible to argue that the registration of a sign, which is identical to a widely known trademark was a mere coincidence. On the contrary, it is likely that the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
Complainant has argued that the domain name registration that coincides with its widely known trademark dilutes and weakens its trademark. Although these arguments are not specifically within the requirements of the UDRP, this Panel has taken them into consideration as an indication of bad faith of Respondent regarding the registration and use of the domain name.
There is no evidence showing that Respondent used the domain name for a bona fide offering of goods and services. There is however evidence about an incipient use of the domain name, a use that was limited and non-commercial. Such use does not legitimate the domain name titleholder to maintain its right against the legitimate owner of a widely known trademark.
Complainant has presented evidence regarding other similar proceedings where other domain names held by Respondent and having a direct relation with well-known trademarks have been transferred to their legitimate owners. The foregoing indicates that Respondent has incurred more than once in the same conduct of registering domain names corresponding to widely known trademarks of third parties.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Daniel Peña
Sole Panelist
Date: February 13, 2004
Full & Egal Universal Law Academy