WIPO Domain Name Decision D2006-1572 for camisariacolombo.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Colombo Franchising Ltda. v. Mehdi Tchavosinia

Case No. D2006-1572

1. The Parties

The Complainant is Colombo Franchising Ltda., of Sao Paulo, Brazil, represented by Montaury Pimenta, Machado & Lioce, Brazil (the “Complainant”).

The Respondent is Mr. Mehdi Tchavosinia, of Hamburg, Germany (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name is (the “Domain Name”). The Domain Name is registered with Cronon AG Berlin.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�11,�2006. On December�12,�2006, the Center transmitted by email to Cronon AG Berlin a request for registrar verification in connection with the Domain Name. On January�9,�2007, after several requests, Cronon AG Berlin transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the registrant.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January�26,�2007. The Center verified that the Complaint together with the amendment to 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 (hereinafter, 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 proceeding commenced on January�31,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�20,�2007. On February 16,�2007 the Respondent sent the Center an email including a number of arguments relating to the Complaint, the registration, and use of the Domain Name. In this email, the Respondent objected the use of the Portuguese language in the Complaint. On February 20, 2007, the Center acknowledged receipt of the email of February 16, 2007 indicating that the contentions contained therein would be forwarded to the Panel for consideration on appointment. No other submission, in form of a formal response, was filed with the Center by the specified due date. In a fax received at the Center on February 26, 2007, the Respondent made a supplemental filing objecting to the use of the Portuguese language on the Complaint and asserting the right to use the disrupted domain name on the basis of a German trademark.

On February�27,�2007, the Center notified the parties the Respondent’s default to file a formal response by the specified date and attaching for information a copy of the Respondent’s Supplemental Filing of February 26, 2007. On March�1,�2007, the Complainant electronically made a supplemental filing, providing comments on some of the statements made by Respondent in his previous email. On March 5, 2007, the Respondent made a further supplemental filing insisting on the arguments indicated in its previous email, requesting that such a communication be deemed as its response to the Complaint.

The Center appointed Mr. Albert Agustinoy Guilayn (the “Panel”) as the sole panelist in this matter on March�19,�2007. 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. Language of Proceeding

The Complaint was originally filed in Portuguese. The Respondent addressed several communications to the Center in English indicating that the use of the Portuguese language in the present proceeding was not acceptable for him, since it was a language that the Respondent did not understand. The Panel finds that this statement from the Respondent is somehow contradictory with his own behavior prior to the filing of the Complaint. Indeed, the Respondent contends that he is unable to understand Portuguese but—as further indicated—he has been able to create and post all the texts originally included in the website connected to the Domain Name in Portuguese. This fact seems to indicate that the Respondent is able, at least, to understand Portuguese.

According to paragraph 11(a) of the Rules, unless agreed by the parties, the language of the registration agreement shall be the language of the proceedings, subject to the authority of the Panel to determine otherwise. The Panel has noted the stated reluctance of the Respondent to use Portuguese as the language of this proceeding. The Panel further notes the use of the German language in the registration agreement and the use of the English language in the communications among the Center and the parties.

Taking into account the circumstances surrounding this proceeding (and especially that both parties are evidently able to communicate in English, a possibility which is not as likely in the case of the German language), the Panel considers that English is an appropriate language of proceeding in the present case, and will accordingly render its decision in English.

In the present case, the Panel, however does not consider necessary requiring the Complainant to translate the Complaint or any other document written in Portuguese because of the following circumstances: (i) as indicated above, the Respondent has evidently been able to develop a website in Portuguese; because of this, the Panel finds that the Respondent should be able to understand the Complaint; and (ii) translating the Complaint and its attached documents into English would have caused a delay in the proceeding.

The Panel considers that this approach is fully compatible with the criteria set out by precedent decisions adopted under the Policy (see, for example, decisions in L’Oreal S.A. v. Munhyunja, WIPO Case No. D2003-0585; or in Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

5. Supplemental Filings

As indicated in the Factual Background section of this decision, both the Complainant and the Respondent have made unsolicited supplemental filings.

According to the criteria set out in previous decisions adopted under the Policy (see, for example, decisions in Delikomat Betriebsverpflegung Gesellshcaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Autonation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058; or De Dietrich Process Systems v. Kemtron Ireland, Ltd., WIPO Case No. D2003-0484), unsolicited supplemental filings should be accepted by the Panel if the following two circumstances are given:

(i) the eventual acceptance of such filings should not suppose a breach in the guarantee to both parties to be treated equally, so each one of them has had a fair opportunity for presenting its case; and

(ii) the supplemental filings should include relevant issues which were not known by the filing party at the moment it was granted the right to file the documents supporting its position in the proceeding and that could affect the decision.

On February�26,�2007 the Center received a communication from the Respondent (the “Respondent’s Supplemental Filing”) insisting on the arguments included in his precedent filings and indicating that Exclusive Fashion House GmbH owns a German trademark based on the name “Camisaria Colombo” since January 2006. This communication included a copy of a document issued by the German Patent Trademark Office relating to the trademark the Respondent claimed to own.

On March�1,�2007 the Complainant sent a communication (the “Complainant’s Supplemental Filing”) commenting the Respondent’s Supplemental Filing. The Complainant questioned the statements made by the Respondent on its German trademark (as explained below).

Taking into account the contents of the above-mentioned documents, the Panel deems that they do indeed pose relevant issues in connection with this proceeding that must be taken into account in its decision. Moreover, the fact that each one of the parties has been able to file its comments on the other party’s filings leads the Panel to consider that the acceptance of such filings would suppose treating both parties equally. Consequently, the Panel will consider in its decision the supplemental filings made by the Respondent and the Complainant.

6. Factual Background

6.1. The Complainant

The Complainant is a Brazilian company that belongs to a group of companies owned by a Brazilian corporation named Arc Com�rcio de Roupas, Ltda. This corporation was originally named Camisaria Colombo, Ltda. and it was incorporated in 1967 and ever since it has focused its commercial activities in the sale of men’s wear products mainly in Brazil. Nowadays, Arc Com�rcio de Roupas, Ltda. owns a network of more than 75 stores in Brazil. The Complainant has been using the name “Camisaria Colombo” for almost 40 years for the operation of its commercial activities.

In September 1999, Arc Com�rcio de Roupas, Ltda. incorporated the Complainant. According to the documentation provided in the Complaint, the purpose of Colombo Franchising, Ltda. is the commercial exploitation of the CAMISARIA COLOMBO brand by means of a network of fully-owned and franchised stores.

The Complainant is the owner of the Brazilian trademark CAMISARIA COLOMBO – FUNDADA EM 1917, no. 816922659 and registered since November�9,�1992 under Class 25 of the International Nomenclator. Additionally, on June�26,�2006, the Complainant filed before the Brazilian Trademark Office (Insituto Nacional da Propiedade Industrial) two applications for registration of Brazilian trademarks based on the name “Camisaria Colombo”. At the time of filing of the Complaint it would appear that such applications have not matured into registrations.

The Complainant has a presence on the Internet through its corporate website, linked to the domain name . This domain name was registered on February�19,�1998.

6.2. The Respondent

The Respondent is an individual with his registered address in Hamburg (Germany). He is the director of a German company named Exclusive Fashion House, GmbH. According to the information provided both by the Complainant and the Respondent, this company focuses its business on distribution of men’s wear products.

In accordance with the documents provided by both parties, the Respondent used to be a provider of the Complainant. The relationship between both parties seems to have eroded due to some business differences. In this regard, the Panel notes the following communications:

- A facsimile dated May�23,�2006 forwarding another facsimile originally sent to the Respondent by one of its providers, complaining about the lack of payment by the Complainant of several debts. This text is complemented by another one written directly by the Respondent stating: “I received this fax from […] so you better pay my money now. Mehdi.”;

- An email dated December�17,�2006 stating the following: “If you want to avoid more problems you have to start paying your debts. Please remember you have destroyed my life by not paying me and you can be sure that you won’t get away with it. I have only done good to you and you fucked me for half a Million dollar. I pray to God you would suffer all your life and don’t see a day of happiness any more as I know you are suffering. But if you pay me I will pray for you and wish all the best. Regards. Mehdi.”;

- An email dated December�24,�2006 which, apart from a Christmas virtual card, includes the following text: “I hope Jesus would help you to become a correct person and start fulfilling your commitments.”

The Panel has not been provided with the answers sent by the Complainant to these communications.

6.3. The Domain Name and Resolving Website

The Domain Name was registered on May�17,�2006. At the time of filing the Complaint, the Domain Name was connected to a website whose content was in Portuguese. The website accused the Complainant, and more in particular one of its directors, of operating its commercial activities in a criminal fashion and without care and ethics. These texts were complemented by the inclusion of one of the brands used by the Complainant as well as a picture used by the Complainant in its corporate website. Finally, the website included a list of suppliers and companies that allegedly have been damaged by the Complainant.

At the time of writing this decision, the website originally connected to the Domain Name has apparently been modified. The version currently being assessed by the Panel shows a large logo with the words “Camiseria Colombo” jointly with the following text: “The truth about the Camiseria Colombo and informations about the Camisaria Colombo can be found here soon! If you want to know more about Colombo, e-mail us: info@.” This text is complemented by another statement, located at the bottom of the screen, stating: “Camisaria Colombo � is a Trademark, Registered and protected by German law!”

5. Parties’ Contentions

A. Complainant

The complainant contends in the Complaint that:

- The Domain Name is identical to the CAMISARIA COLOMBO trademarks and tradename on which it has held rights for almost forty years as well as to the domain name ; and

- The Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, the Complainant states that the Respondent has never been known under the name “Camisaria Colombo” or any similar term. Moreover, the fact that the website connected to the Domain Name contains defamatory statements against the Complainant and its directors impedes considering that there has been a fair and legitimate non-commercial use is of the Domain Name. Such a conclusion is reinforced by the fact that the Domain Name is used by the Respondent in order to publicize his commercial differences with the Complainant; and

- The Respondent registered and uses the Domain Name in bad faith as it is used in order to attract Internet users to a website clearly related to the Complainant’s business.

Additionally, the Complainant contends in the Complainant’s Supplemental Filing that:

- The Respondent changed the layout of the website connected to the Domain Name after the Complaint had been filed. Therefore, the Complainant considers that this change happened because the Respondent fully understood the contents of the Complaint and decided to amend its website; and

- The Respondent alleges in its Supplemental Filing that he holds registration of a German CAMISARIA COLOMBO trademark since January 2006. Nevertheless, after having reviewed the German Patent and Trademark Office, the Complainant has been able to prove that the filing for registration of such trademark took place on December�21,�2006 (i.e., ten days after the Complaint was filed).

B. Respondent

As indicated in the Procedural History, the Respondent has not filed a response fulfilling the requirements set out by the Policy, the Rules and the Supplemental Rules. The Respondent has only filed a number of emails defending his registration and use of the Domain Name. Such arguments can be summarized as follows:

- In an email of February�17,�2007, the Respondent contends that he is not able to understand the Complaint as it is written in Portuguese, a language he does not know. Moreover, the Respondent indicates that Exclusive Fashion GmbH has registered a trademark based on the name “Camisaria Colombo” before the German Patent and Trademark Office and, hence, it is fully entitled to use the Domain Name. Finally, the Respondent states that the Complainant is a Brazilian company that focuses its activities in the territory of Brazil. As a consequence, the Respondent considers that the Complaint should not be accepted as it refers to a domain name that has been registered by a German individual.

The same arguments were included in the email sent by the Respondent to the Center on March�5,�2007.

- In a facsimile received by the Center on February�26,�2007, the Respondent insists that he is unable to respond to the Complaint as it is written in Portuguese. The Respondent further states that the registration and use of the Domain Name is backed by a German trademark, CAMISARIA COLOMBO, held by the Respondent’s company since January 2006.

6. Discussion and Findings

In accordance with paragraph�4(a) of the Policy, the Complainant must prove to the Panel the following three circumstances in order to obtain the transfer of the Domain Name:

(A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) that the Respondent does not have any rights or legitimate interests in respect of the Domain Name; and

(C) that the Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

Under the Policy, the first element that must be established by the Complainant is that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant bases its Complaint on the tradename CAMISARIA COLOMBO, on two trademark-registration applications and on a trademark CAMISARIA COLOMBO – FUNDADA EM 1917.

The Panel notes, however, that tradenames have been expressly excluded from the scope of applicability of the Policy. Such a position was recognized in WIPO’s Report on the Second Internet Domain Names Process (available at the following address: ). This exclusion is stated to be based on the fact that “fundamental problems exist in identifying across differing national approaches what constitutes a protectable trade name,” and consequently a tradename cannot be considered as a “mark” for the purposes of the first element of the Policy.

A similar conclusion must be reached in connection with trademark applications that have not been granted yet. Indeed, previous panels applying the Policy have recurrently considered that a mere trademark application cannot be considered by itself as a “mark” for the purpose of the first element of the Policy (see, for example, decisions in Cox & Kings India Limited v. Rakesh Said, WIPO Case No. D2000-0411; Amsec Ent. v. McCall, WIPO Case No. D2001-0083; PRGRS, Inc. v. BPB Prumerica Travel, WIPO Case No. D2002-0076; or Front Range Internet, Inc. v. David Murphy a/k/a This Domain Is for Sale, NAF Case No. FA0302000145231). The Panel, hence, finds that the two applications filed by the Complainant before the Brazilian Instituto Nacional da Propiedade Industrial in 2006 cannot ground the Complainant’s contentions in this proceeding.

As a consequence, the analysis of the first requirement set out by the Policy shall require a comparison between the Complainant’s trademark CAMISARIA COLOMBO – FUNDADA EM 1917 and the Domain Name. Such a comparison shows two main differences: the trademark includes an additional text apart from “Camisaria Colombo” and the Domain Name includes the “.com” suffix. These differences are analyzed below.

The first difference existing between the Complainant’s trademark and the Domain Name is not, in the Panel’s view, sufficient to conclude that there is no confusing similarity between them. The text “Fundada em 1917” is a secondary element of the Complainant’s trademark which complements the name “Camisaria Colombo”. Therefore, in the view of the Panel, the Domain Name incorporates the principal words of the Complainant’s trademark and, hence, the composition of the Domain Name may confuse Internet users. This approach has already been taken in previous decisions dealing with similar circumstances (see, for example, decisions in Archer-Daniels-Midland Company v. Robyn Bodine (a.k.a. D.L. Tate, Donnie Tate, WIPO Case No. D2002-0482; March of Dimes Birth Defects Foundation v. Modwalk America, WIPO Case No. D2003-0062; or Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656).

The second difference existing between the Complainant’s trademark and the Domain Name (the inclusion of the .COM suffix in the latest) is due to the current technical specificities of the Domain Name System (DNS). Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the Domain Name and the Complainant’s trademark (see, for example, New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No.�D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No.�D2003-0172).

Consequently, the Panel considers that the Domain Name is confusingly similar to the CAMISARIA COLOMBO – FUNDADA EM 1917 trademark owned by the Complainant. Consequently, the condition set out by paragraph�4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph�4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, paragraph�4(c) of the Policy foresees a number of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and/or services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark rights had been acquired; or

- To make 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.

In the present case, the following circumstances have been be taken into account on the

second requirement of the Policy:

(a) The Respondent claims that his company owns a German trademark that is based in the name “Camisaria Colombo” and, consequently, he is fully entitled to have registered and use the Domain Name; and

(b) The Respondent has been using the Domain Name for publicly posting texts criticizing the Complainant’s commercial behavior.

These circumstances are analyzed below, to determine if the Respondent has a legitimate right or interest in the Domain Name.

According to the Respondent’s Supplemental Filing, Exclusive Fashion House GmbH holds a German trademark registration since January 2006. Nonetheless, after having consulted the German Patent and Trademark Office’s online database (available at ), the Panel has been able to find out that the application for registration alleged trademark (no. 30679038.6) was actually filed on December�21,�2006 instead of January 2006 (as indicated by the Respondent). This leads the Panel to conclude that the above-mentioned application was filed by the Respondent once the Complaint had been already filed before the Center. Thus it is obvious to the Panel that the German trademark alleged by the Respondent for justifying the registration of the Domain Name should not be considered as persuasive evidence of rights or legitimate interests under the Policy. Therefore, the Panel finds that the Respondent does not have any right or legitimate interest in the Domain Name.

A similar conclusion can be reached in connection with the use of the Domain Name for publicly criticizing the Complainant. As indicated in Est�e Lauder, Inc. v. E, E and Jeff Hanna, WIPO Case No. D2000-0869: “Respondent may well, and likely does, have extensive rights of free speech to provide a platform to criticize Complainant and a right to the fair use of Complainant’s marks in so doing. The contents of the Respondent’s websites may also be a perfectly legitimate use of those rights. But Respondent could well have chosen to use a domain name that was not confusingly similar to Complainant’s and/or in which Complainant had no rights; It intentionally chose not to do so […]. Respondent’s free expression rights do not here give it a right or legitimate interest in the domain name at issue.” The Panel considers that this reasoning applies to the present case.

The same interpretation has been given in numerous decisions dealing with similar circumstances (see, for example, decisions in Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020; Brandon Dunes L.P. v. Default Data, WIPO Case No. D2000-0431; Bonneterie Ceveniole SARL v. Sanyon Huagong, WIPO Case No. D2001-1309; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Texans for Lawsuit, Inc. v. Nelly Fero, WIPO Case No. D2004-0778; or Promotorauno, S.A. v. Jos� M. Ceballos, WIPO Case No. D2005-0558).

No other circumstances seem to apply in the present case for considering that the Respondent holds a legitimate right or interest on the Domain Name. Therefore, the Panel considers that the condition set out by paragraph�4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements set forth by Paragraph�4(a) of the Policy is that the Complainant establishes that the Respondent has registered and uses the Domain Name in bad faith.

i. Registration of the Domain Name in bad faith

The Panel is satisfied that the Complainant has established that at the registration of the Domain Name, the Respondent was guided by bad faith purposes. In this respect, the Respondent has not filed any convincing argument justifying the registration of the Domain Name for any reason other than what appears to be a commercial dispute including a desire to obtain monies felt to be owed by the Complainant. In this connection, after having reviewed the parties’ allegations, the Panel considers that the Respondent registered the Domain Name basically in order to use it as a platform for publicly expressing his indignation against the Complainant with a view to settling accounts. Whatever grievances the Respondent may have with the Complainant, the Panel is not in position to assess them here and in the circumstances finds that such behavior constitutes a registration in bad faith for the purpose of the Policy.

Such an interpretation is fully coincident with those adopted by other panels dealing with similar cases (see, for example, decisions in Metro Bilbao, S.A. v. Ignacio Allende Fern�ndez, WIPO Case No.�D2000-0467; Tarjeta Naranja, S.A. v. Mr. Dominio and Alejandro Sanjose, WIPO Case No.�D2001-0295; Medtel Outcomes, LLC v. IT Healthtrack, Inc., WIPO Case No.�D2004-0282; and Robilant & Associati SrL v. Power Lab snc (ROBILANTE6-DOM), WIPO Case No.�D2006-0991.

Consequently, the Panel considers that the Respondent registered the Domain Name in bad faith.

ii. Use of the Domain Name in bad faith

As previously indicated, the Domain Name has been used to post critical content against the Complainant in an apparent attempt to settle accounts with the Complainant.

It also seems clear that the Respondent has used the Domain Name for diverting Internet users looking for the corporate website of the Complainant. As a result, it is also clear to the Panel that the likely purpose of use of the Domain Name by the Respondent was to harm the Complainant’s reputation. The lack of existence of a legitimate interest or right by the Respondent in the Domain Name combined with the potential loss by the Complainant of visitors to its corporate website and the diffusion of critical contents by means of the website associated to the Domain Name is found, in this case, to be a use in bad faith under the Policy.

The Panel finds that the arguments established in Fadesa Inmobiliaria, S.A. v. Flemming Madsen, WIPO Case No. D2001-0570, in connection with a similar use of the disputed domain name are fully applicable to this case. In particular, the following statement seems to be especially material: “Use�specifically made for the purpose of damaging or tarnishing the reputation of the company who owns the trademark and who is commonly known to the sectors of interest by the name in dispute and thus natural owner of the domain name must certainly be considered to be illegitimate use and use in bad faith.”

Such an approach has been adopted in other numerous decisions adopted under the Policy and dealing with similar circumstances (see, for example, decisions in Bett Colmes Limited and Bett Brothers PLC v. Hill McFadyen, WIPO Case No. D2001-1018; British Nuclear Fuels, PLC v. Greenpeace International, WIPO Case No. D2001-1318; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Hollenbeck Youth Center, Inc. v. Stephen Rowland, WIPO Case No. D2004-0032; Justice for Children v. RNeetso/Robert W. O’Steen, WIPO Case No. D2004-0175; or Tecnolog�a de la Construcci�n, S.A. (TECONSA) c. Asociaci�n de T�cnicas de Construcci�n Sa, WIPO Case No. D2004-0786).

Consequently, the Panel considers that the Respondent has used the Domain Name in bad faith.

Therefore, the Panel considers that the condition set out by paragraph�4(a)(iii) of the Policy has been met by the Complainant.

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.

Albert Agustinoy Guilayn
Sole Panelist

Dated: April�12,�2007

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