WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PT Comuniçacoes, S.A. v. Ignacio Mijares Case No. D2008-1654 1. The Parties
The Complainant is PT Comuniçacoes, S.A., Lisboa, Portugal, represented by Diogo Guia, Portugal.
The Respondent is Ignacio Mijares, South Padre Island, Texas, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 31, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 November 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2008. The Response was filed with the Center on December 12, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on December 22, 2008. 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 Complainant is the owner of trademarks SAPO used in connection with ADSL, cable TV and broadband cable access, including the following trademarks:
- Portuguese registration SAPO (figurative) No. 392651
- Portuguese application SAPO (figurative) No. 404231.
- Portuguese registration SAPO (figurative) No. 411629.
- Portuguese registration SAPO (word mark) No. 331792 of March 10, 1999 in classes 35, 38 and 42 registered by UNIVERSIDADE DE AVEIRO and licensed to - Portugal Telecom, S.A. since September 15, 1998
- Portuguese registration SAPO (word mark) No. 392759 of November 14, 2006 in classes 9, 35, 36, 38, 41 and 42
- Portuguese registration SAPO MESSENGER (word mark) No.391414 of May 26, 2006 in classes 9, 38 and 42
- Portuguese registration SAPO GAME BITS (word mark) No. 395092 of September 22, 2006 in classes 35, 38 and 41
The Complainant is also the owner of the domain names , , , , .
The Respondent registered the disputed Domain Name on September 26, 2006. 5. Parties' Contentions A. Complainant
The Complainant states that the word “sapo” means “Frog” in Portuguese language and, as so, can only be perceived by Portuguese speaking persons and stands for the acronym Serviço de Apontadores Portugueses (Portuguese Search Engine Services).
The Complainant indicates that the image of SAPO (as a frog) as been so well accepted by consumers and general public, that most of the Complainant's trademark and websites contain precisely the image of a “frog” and that TV Spots of the Complainant all contain that character.
The Complainant asserts that the mark SAPO has been in use since 1998 through inter alia websites in the Portuguese Speaking Countries Community (CPLP).
The Complainant informs the Panel that PT COMUNICAÇÕES, S.A is a company belonging to the group Portugal Telecom, telecommunications operator in Portugal and, after the market liberalization, in 2000, is still today the largest operator in fixed telephony services, mobile phone services, broadband, IP-VPN services as well as eCommerce solutions, Web-hosting, and ASP services.
The Complainant indicates that Portugal Telecom has established strategic partnerships with international operators such as Telefonica, British Telecom, Orange and BT Infonet to complement its international strategy and that in Brazil, it has additional partnerships with Microsoft and Globo.
The Complainant underlines that the SAPO mark is considered as the most trusted brand in the field of Internet Services Providers and that Portugal Telecom was the winner in 2005 of the "Most Family-Orientated Company" award and SAPO, the most relevant brand.
The Complainant contends that the disputed Domain Name is confusingly similar to the marks and domain names of the Complainant. The Complainant underlines that the single and determinant element of the main trademarks of the Complainant is “sapo” which means “frog” in Portuguese. The Complainant states that the word “sapo” is meaningless in any other language.
The Complainant points out that the Respondent is using the disputed Domain Name to promote links in the Portuguese language thus, demonstrating the clear intend to parasite and exploit the renown of the Complainant's websites and trademarks.
The Complainant highlights that the Respondent's intention was to affect the Complainant's rights since the disputed Domain Name is currently used to a link entirely in Portuguese language.
The Complainant asserts that the Respondent is damaging and tarnishing the SAPO mark which is the main brand through which the Complainant (and the group Portugal Telecom) promote and sell its products in what concerns Internet services, mobile phones services and so forth.
The Complainant emphasizes that the website corresponding to the disputed Domain Name displays a series of links directed to the Portuguese speaking consumers such as Erótica (written in Portuguese), Lingerie, Sex shop, Sex toys, Adult dating and Webcam (words easily identified by Portuguese consumers).
The Complainant informs the Panel that an increasing number of consumers have been confusing the services and nature of the disputed Domain Name with the services provided by the Complainant and several complaints are being presented by parents concerning the use that is being made of the disputed Domain Name and underlines that the Complainant is part of an economic group that is reputed for directing its activities to families.
The Complainant indicates that its main domain name , is the first website in the Portuguese ranking, with more than the double of the second most visited website, has 32 other sub-domains in the same ranking (over 75 websites) and is the 8th most visited website in the overall universe of domain names in Portuguese language in the world.
With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainant asserts that the Respondent has no rights or legitimate interests in respect to the disputed Domain Name.
The Complainant indicates that the disputed Domain Name was registered and immediately placed by the Respondent for sale at Sedo and that the Respondent detains 54 other registered domain names.
The Complainant informs the Panel that a transfer/acquisition proposal of the disputed Domain Name was made to the Respondent, through Sedo and that the Respondent tried, on the other hand, to sell the disputed Domain Name to the Complainant, through its representative for a purely and exorbitant speculative price of EUR78,000. The Complainant also states that the amount requested through Sedo was of USD106,122.
The Complainant further asserts that the Respondent decreased his proposal to EUR40,000 and that several delays and promises by the Respondent of pacific transfer took place according to the consultants, but the Respondent never ceased to demand for the same level of high amounts.
The Complainant contends that it is, therefore, undisputable that the Respondent registered the disputed Domain Name in order to sell it.
The Complainant states that the Respondent was aware and could not ignore that the Complainant was the largest telecommunications service provider in Portugal, as it is widely known through news articles and several official or non-official sources.
With reference to the circumstances evidencing bad faith, the Complainant contends that the Respondent had never the intent to use the disputed Domain Name for bona fide purposes but has been using the disputed Domain Name and benefiting from the confusion intentionally created by associating the Complainants mark SAPO to his site for the use of banners thus obtaining illegitimate commercial profits at the expenses of the Complainants prestige and renowned marks.
The Complainant also states that the Respondent has no relation whatsoever with the designation “www.” since it is not part of his name, doesn't identify any services he would eventually be providing, it is not an acronym of any kind that could be remotely related with the Respondent and finally the Respondent is not the owner of any trademark or service mark rights relating to the designation SAPO.
The Complainant contends that the Respondent does not make any serious and legitimate use of the disputed Domain Name but is intentionally misleading consumers to believe his website is someway related with the Complainant's activity since the Respondent uses the Portuguese language and directs the content at Portuguese speaking consumers that are the only ones likely to drop in this site once they will identify SAPO as the Complainants ‘frog' and would understand it as an Internet and directories services reputed provider.
The Complainant emphasizes that by promoting and advertising, through banners, the actual contents namely, contents for adults and gamble, the Respondent is tarnishing in a severe way the trademarks, service marks, domain names and the activity and businesses of the Complainant.
The Complainant asserts that the website corresponding to the disputed Domain Name is structured in such a way to ease the reading in a mobile screen and is intentionally and in bad faith directed at misleading consumers making them thinking that this is the mobile phone website of SAPO, the Complainant's mark for the Internet services, search engine and directories (among many others, as described above).
The Complainant points out that the Respondent, right after having registered the disputed Domain Name immediately placed it for sale and has never showed any intention of giving it a serious use. Indeed the unique use the Respondent gave to this disputed Domain Name was for the advertising of links, mostly related with gambling, sex related issues, etc. for profit.
The Complainant also indicates that all the sites corresponding to the disputed Domain Name is written in Portuguese language and those expressions that are not are those that have become already ‘international language' since the consumers identify the services or products by their English designation, the first sentence of this site is, in Portuguese language that “YOU CAN BUY THE DOMAIN SAPO.MOBI “, followed by a direct link to the escrow Sedo.
The Complainant states that disputed Domain Name was registered primarily for the purpose of selling the disputed Domain Name registration to the rightful owner of the trademark and services marks, the Complainant, for an exorbitant valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed Domain Name.
The Complainant further asserts that the Respondent prevented the Complainant from reflecting its trademarks and activities in such a critical area as the TLD for mobile phones, “.mobi” forcing inclusively the Complainant to register and advertise by a provisional domain name.
The Complainant points out that in creating this undeniable confusion and parasitism with the Complainant's mark SAPO, the Respondent has seriously affected the reputation and prestige, damaging the image, disrupting the business since costumers do not understand how SAPO that have multiple activities and sub-domains for children and youngsters announces the kind of products and services of those online at “www.”. B. Respondent
The Respondent states that the word “sapo” means toad in Spanish and that Spanish is spoken by 322,300,000 people while Portuguese is spoken by 177,500,000.
The Respondent indicates that the website corresponding to the disputed Domain Name promotes links in all languages depending on the origin of the visitor.
With reference to rights or legitimate interests in respect of the disputed Domain Name, the Respondent indicates to be a member of Prodan since 1996 and to have taken care of two abandoned dogs.
The Respondent emphasizes that “sapo” is a short word that can be used for anything related to pets and / or children and that “if my entrepreneurial pet related projects don't progress I have thought about a children's shoe store that could be named Sapo.”
The Respondent contends that the Domain Name is parked on Sedo in the meantime and that the Respondent is involved in the pet shop business and bought the disputed Domain Name to open an internet store later.
The Respondent asserts that the term “sapo” in Spanish is generic and by trademark law generics can not be registered.
The Respondent further states to have registered several domain names for potential future commercial use as a “strong believer of the internet economy”
The Respondent indicates to get advertising revenue in the meantime and that “the lifetime value of the domain for me includes internet retail operation.”
The Respondent informs the Panel that two different anonymous parties made formal bids for the disputed Domain Name. The Respondent also states that disputed Domain Names have been sold for millions of dollars and that “EUR$78,000” is in line with generic name sales.
The Respondent asserts that the domain name is owned by Sapo International SA a Luxury Services Company based in Greece.
The Respondent states to have never been contacted by the Complainant and that only two offers were made.
The Respondent denies to have thought that the Complainant would eventually be in the disposition to pay very high amounts for this critical disputed Domain Name bearing in mind the numerous rights and core activity of it most renowned trademark SAPO and the net revenue of the group.
With reference to the circumstances evidencing bad faith, the Respondent contends that the disputed Domain Name was acquired for potential commercial purposes and it obtains advertising revenue in the meantime 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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. A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark rights in the SAPO trademark.
The Panel shares the view held in American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A.,WIPO Case No. D2004-0473 where the Panel stated that “a licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark.”
The Panel finds that the disputed Domain Name is therefore identical to the trademarks owned by the Complainant.
In comparing the Complainant's marks to the disputed Domain Name it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of a domain name. See Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant's trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed Domain Name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed Domain Name in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed Domain Name, has made preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed Domain Name and the Respondent has not provided in the Response any convincing evidence to the contrary.
The Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click (“ppc”) website mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a ppc page which directs visitors to various third party commercial websites does not constitute a legitimate, non
commercial use of the disputed Domain Name under the Policy. See e.g. Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044. See also, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the Respondent's documented out-of-pocket costs directly related to the disputed Domain Name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
As to bad faith at the time of the registration the Panel notes that the disputed Domain Name wholly incorporates the Complainant's SAPO trademark.
The Panel observes that the Respondent stated that “the domain was acquired for potential commercial purposes and it obtains advertising revenue in the meantime” thus demonstrating to be aware of prior trademark rights.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant's trademark at the time of the registration of the disputed Domain Name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
With reference to the use of the disputed Domain Name in bad faith, the Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click website aimed only at directing visitors to competing third party commercial websites. The Panel notes on the issue that the Respondent states in the Response the goal “to get advertising revenue in the meantime the lifetime value of the domain for me includes internet retail operation.” and further commented with regard to the offers submitted to the Complainant as follows “EUR$78,000 is in line with generic name sales ”
The Panel observes that the disputed Domain name is currently pointing to a page of Go Daddy where the disputed Domain Name is offered for sale.
The Panel does not in the circumstances accept that the Respondent registered the disputed Domain name with its generic value only in mind. See also e.g. Asian World of Martial Arts Inc. v. Texas International Property Associates, supra.
The Panel also shares the view held in Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044 in which it was decided that an offer to sell generally was sufficient evidence for a finding of bad faith. Likewise offering domain name for sale on website constitutes offer to sell to complainant, complainant's competitors and others see e.g. VENTURUM GmbH v. Coventry Investments, Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405.
The Panel finds that in light of the above and of the content of the correspondence attached to the Complaint and indeed the statements provided to the Panel in the Response, the disputed Domain Name was registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs directly related to the disputed Domain Name. Therefore the Panel deems paragraph 4(b) (i) of the Policy among others, applicable to the present case.
In view of the above, the Panel finds that the disputed Domain Name was registered and is being used in bad faith. 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 disputed Domain Name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: January 9, 2009
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