WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Belize Domain WHOIS Service Lt
Case No. D2007-0714
1. The Parties
Complainant is TV Globo Ltda., Rio de Janeiro, Brazil, represented by Matos & Associados, Brazil.
Respondent is Belize Domain WHOIS Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2007. On May 16, 2007, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On May 17, 2007, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2007.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on July 26, 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. Factual Background
The following facts are not contested.
Respondent, based in Belize, registered (“the disputed domain name”) on November 15, 2004, using Intercosmos Media Group, Inc. d/b/a directNIC.com. The disputed domain name currently transfers Internet users to the “” website, which contains sponsored links.
Complainant, based in Rio de Janeiro, Brazil, is engaged in producing, exhibiting and providing television and entertainment products and services. These services are provided, in Brazil and internationally, under a variety of names and trademarks, including its GLOBO, GLOBO.COM and REDE GLOBO marks.
Complainant owns trademark registrations in Brazil for the GLOBO.COM mark, Registration No. 821416677, in international class 38, granted on December 31, 2002, and Registration No. 821416669, in international class 41, granted on December 31, 2002, and for the TV GLOBO mark, Registration Nos. 811380602 and 811380599, both renewed on February 2, 2006, in international classes 38 and 41 respectively. Furthermore, Complainant owns a United States Service Mark Registration for GLOBO.COM, Registration No. 2,630,021, granted on October 8, 2002, in international classes 38 and 41, and a Canadian Trademark Registration for GLOBO, Registration No. TMA 586,834, granted on August 7, 2003. In addition, Complainant owns a number of trademark registrations for GLOBO and REDE GLOBO worldwide, including but not limited to Argentina, Bolivia, Chile, Paraguay, Peru, Portugal, European Community, Uruguay, and Czech Republic.
Complainant’s trademark rights predate Respondent’s disputed domain name registration.
5. Parties’ Contentions
A. Complainant
Complainant contested that:
The domain name in dispute is identical or confusingly similar to trademarks in which it has rights.
Complainant has registered, owns and uses in Brazil and worldwide several trademarks including the GLOBO mark, which are well known worldwide as it has been recognized in previous decisions rendered by WIPO UDRP panels. In support of this contention, Complainant quotes TV Globo Ltda. v. Globo Design, WIPO Case No. D2000-1559 and TV Globo Ltda. v. Web Soft, WIPO Case No. D2003-1014.
The domain name is confusingly similar in appearance, pronunciation and sound to Complainant’s GLOBO and GLOBO.COM marks, except for the addition of the letter “i” which may suggest Globo International, which is Complainant’s international TV channel.
Respondent’s domain name registration for , which fully incorporates Complainant’s GLOBO and GLOBO.COM marks, has suggestions, connotations, and commercial impression that are identical, and therefore, confusingly similar.
To the best of Complainant’s knowledge and research made through all major Internet search tools, Respondent’s use of the domain name is not in connection with a bona fide offering of goods and services. Respondent is not commonly known or identified by the name GLOBO, GLOBO.COM and GLOBOI, nor operates a business or other organization commonly known as GLOBO or GLOBO.COM, or offers any goods or services under the GLOBO.COM mark.
Respondent is not making a legitimate noncommercial or fair use of the domain name. A mere addition of a minor misspelling or typographical error of a mark does not create a new or different mark in which Respondent has legitimate interests.
Respondent is not a licensee of Complainant, nor is otherwise authorized by Complainant to use the GLOBO or GLOBO.COM marks or to apply for or use any domain name incorporating the GLOBO.COM mark.
Respondent does not conduct any legitimate noncommercial business under the GLOBO, GLOBO.COM and GLOBOI marks. A person who visits on the Internet sees only a website that links Internet users to several commercial websites of different topics. The use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to several different domain names, represents bad faith registration and use under paragraph 4(b)(iv) of the Policy.
As the website found at “” is in the Portuguese language, it is directed to Brazilian people and/or Portuguese speakers, among which Complainant’s marks are unquestionably well known.
In addition, Respondent’s passive holding of the domain name constitutes bad faith registration and use of the domain name.
Respondent is engaged in a bad faith registration and use of domain names, such as , and , among others.
Considering that the letter “i” is beside letter “o” in the computer keyboard, the Respondent’s domain name constitutes a practice of “typosquating”.
Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other on line locations by directly and involuntarily linking users to websites not related to Complainant, creating a likelihood of confusion with Complainant’s GLOBO and GLOBO.COM marks as the source, sponsorship, affiliation or endorsement of Respondent’s websites or locations or products or services on Respondent’s website.
Respondent has registered the domain name for the purpose of selling or renting, or otherwise transferring the domain name registration to Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is virtually identical to Complainant’s registered trademarks GLOBO and GLOBO.COM, save for the addition of an ‘i’ following the Complainant’s mark, affecting neither the appearance nor the sound of the name GLOBO (See CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493 and Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362). As is discussed further below under Section C, the Panel also notes that Complainant’s rights over its GLOBO and GLOBO.COM marks predate Respondent’s domain name registration.
This form of domain name registration by third parties, as contested by Complainant, has become known as “typo cyber squatting” and has been recognized in several decisions rendered by WIPO UDRP panels. See Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123 and Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd, WIPO Case No. D2004-0459.
For these reasons, the Panel finds that Complainant succeeds on this first element under the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Policy in its paragraph 4(c) sets out various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you (Respondent) of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you (Respondent) are 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.”
Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interest in the domain name in order to refute the prima facie case. The Respondent did not reply to the Complainant’s contentions and therefore has not made such showing.
Furthermore, Complainant has submitted relevant evidence showing that Respondent has not made a bona fide offering of goods or services, and neither is a reseller nor licensor of Complainant’s products and services, nor is it authorized by the Complainant to use the GLOBO or GLOBO.COM marks. In fact, the domain name is used as an intermediary to transfer visitors to the “” website. Additionally, there is no evidence that Respondent is commonly known as or identified by GLOBO, GLOBO.COM or GLOBOI. Furthermore, there is no evidence showing that Respondent operates a business or any other organization, nor does it offer any goods or services under the GLOBO, GLOBO.COM, or GLOBOI. Thus, Respondent’s use of the disputed domain name cannot be considered bona fide use, nor fair or non-commercial use.
Consequently, based on the record and in the absence of a rebuttal by the Respondent, the Panel holds that, as required in paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that Complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in its paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you (Respondent) have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you (Respondent) have 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 you have engaged in a pattern of such conduct; or
(iii) you (Respondent) have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you (Respondent) have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.
As contended by Complainant, the Panel finds that by using the domain name Respondent has undoubtedly attempted to attract, for commercial gain, Internet users to its website or other on-line location (in this case to the “” website), by creating a likelihood of confusion with the Complainant’s marks.
Moreover, there is sufficient evidence showing that Complainant owns trademark registrations in Brazil and worldwide for the GLOBO.COM, GLOBO and RED GLOBO marks, registered before the Respondent registered the domain name on November 15, 2004.
Therefore, since Complainant’s marks are widely – known worldwide (See TV Globo Ltda. v. Globo Design, WIPO Case No. D2000-1559 and TV Globo Ltda. v. Web Soft, WIPO Case No. D2003-1014), the Panel finds that Respondent knew or should have known of them prior to registering the domain name.
For these reasons, the Panel finds that Respondent both registered and uses the domain name in bad faith, and that Complainant has therefore made out the third element of its case.
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.
Gustavo Patricio Giay
Sole Panelist
Dated: August 9, 2007
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