WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Guia de Motéis Comunicação Ltda., formerly known as Studio Comunicação S/C Ltda. v. Belize Domain WHOIS Service Case No. D2009-0711 1. The Parties
Complainant is Guia de Motéis Comunicação Ltda., formerly known as Studio Comunicação S/C Ltda., São Paulo, Brazil, represented by Leonardi Advocacia, Brazil.
Respondent is Belize Domain WHOIS Service, City of Belmopan, Belize. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Contender, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009. On June 2, 2009, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the disputed domain name. On June 3, 2009, Domain Contender, LLC 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” 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 Respondent of the Complaint, and the proceedings commenced on June 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 30, 2009.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 8, 2009. 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
Complainant has registered word and design service mark GUIA DE MOTÉIS on the register of the Instituto Nacional da Propiedade Industrial (INPI) of Brazil, registration number 826905048, dated October 30, 2007, in international class (IC) 16, covering publications. Complainant applied for registration of the aforesaid service mark on December 15, 2004. Complainant also applied for registration of the word and design mark GUIA DE MOTÉIS with INPI on December 8, 2000, “No. de Processo” 822855852, in IC 38, covering communications. This application is apparently still pending.
Complainant operates a commercial Internet website at , as well as at , and asserts that its use of the domain name preceded Respondent's registration of the disputed domain name by more than five (5) years. Complainant has provided evidence of its current usage of the domain name. It has not provided evidence of the historic usage of that domain name to substantiate the asserted early start date of usage (in connection with an active website or business).
Complainant indicates that the term “motéis”, Portuguese for “motel” in English, has a different connotation than the English term. In Brazil, a “motéis” or motel refers to a hotel-type establishment that caters to a short-term clientele, as Complainant describes, mainly for the purpose of “sexual liaisons”. Complainant notes that this provision of service is a legitimate enterprise in Brazil, and that married and unmarried couples seeking privacy often use these “motéis”.
According to the Registrar's verification, Respondent is the registrant of the disputed domain name, . According to the Registrars verification, the record of registration of the disputed domain name was created on August 27, 2004.
The disputed domain name is used to direct Internet users to a “link farm” parking page that at the time of filing of the Complaint, and at the present date, advertises and provides links on its home page to hotels in Germany. Clicking-through on the links identifies further links to hotel reservation and related services, primarily with respect to Germany, but also providing options for further links for hotels and travel services for other countries.
Complainant has provided a list of previous administrative panel proceedings under the Policy in which Respondent is the named Respondent, asserting that this demonstrates that “Respondent is well-known for those practices, as can be seen on several previous cases, such as the following” (listing, e.g., Pension Benefit Guaranty Corporation v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1371 and Danfoss A/S v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2008-1274).
The Registration Agreement in effect between Respondent and Domain Contender, LLC., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties' Contentions A. Complainant
Complaint alleges that it has rights in the trademark GUIA DE MOTÉIS as evidenced by its registration in Brazil, applied for on December 15, 2004 and granted on October 30, 2007. Complainant also alleges registration on June 27, 2006 of the same trademark in a different class based on an application filed on December 8, 2000. Complainant alleges that it registered the domain name on July 7, 1999, and the domain name on October 22, 2007. Complainant argues that its “trademark rights predate Respondent's disputed domain name registration”.
Complainant contends that the disputed domain name is confusingly similar to its trademark in that the disputed domain name merely substitutes the Spanish term “moteles” for the Portuguese term “moteis”, and that the two terms are confusingly similar. Complainant states “it is obvious that the name Guia de Moteles is a direct Spanish translation for the expression Guia de Motéis, which is confusingly similar to the trademark in which Complainant has rights”.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant indicates that because Respondent registered the disputed domain name five years after Complainant's registration of its own domain name and following its application for trademark registration, Respondent must have registered the disputed domain name with knowledge of Complainant's trademark. Complainant further argues that Respondent has not been commonly known by the disputed domain name, is not affiliated with Complainant, and has never been authorized by Complainant to use its trademark or any confusingly similar mark.
Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. Complainant argues (in respect to bad faith), that Respondent's use of the disputed domain name in connection with a link farm parking page does not constitute a bona fide offering of goods or services. Instead, according to Complainant, Respondent is creating a likelihood of confusion with respect to Complainant's mark as to the source, sponsorship, affiliation or endorsement by Complainant of Respondent's website. Complainant argues that Respondent has engaged in a pattern of such practices as evidenced by a series of prior administrative panel decisions under the Policy. Complainant argues that it is very likely the disputed domain name was registered in order to prevent Complainant from reflecting its mark in a corresponding domain name, and to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion regarding Complainant as source, sponsor, affiliate or endorser of Respondent's website.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent be given notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The courier tracking record in the files of the Center indicates that the hard copy Complaint dispatched to Respondent was successfully delivered at the address indicated in its record of registration. There is no indication of technical difficulties in the transmission of e-mail notices from the Center to Respondent. The Center has taken those steps specified in the Policy and Rules designed and presumed to provide adequate notice to Respondent. The Panel determines that Respondent was provided adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has alleged trademark rights in the term GUIA DE MOTÉIS.1 Such rights must arise within a national (or in some cases regional) jurisdiction. Complainant alleges trademark rights arising in Brazil as evidenced by registration at INPI. Although Complainant has alleged first registration of its trademark on June 27, 2006 (based on an application in 2000), the supporting documentation furnished by Complainant does not confirm this registration. The earliest registration confirmed by supporting documentation was granted on October 30, 2007 (based on an application submitted on December 15, 2004) (see Factual Background supra).
Complainant has further alleged trademark rights arising out of registration of the domain name in 1999, and the application at INPI for registration of the trademark GUIA DE MOTÉIS in 2000 (pending application “No. de Processo” 822855852). Complainant has not provided any reference to Brazilian law that would substantiate a finding of rights in a trademark arising prior to registration. Even assuming that Brazil recognizes rights in unregistered marks (which the Panel does not assume), Complainant has not provided evidence of actual use of the domain name dating back prior to 2004, nor does it provide evidence of use of the trademark GUIA DE MOTÉIS dating back prior to 2004 (or to any other particular date). The mere fact that Complainant registered a domain name in 1999 does not establish its use (in connection with an active website or business).
It must further be noted that Complainant has registered a word and design mark. This is important because the “words alone” in Complainant's mark appear to be common descriptive terms (using Complainant's translation). The term “motéis” describes a motel in Brazil, even if the connotation is different than the one in English, and “guia de” means “guide to” or “guide of”. The combination term means “motel guide” or “guide to motels” in English.
The Panel finds that Complainant has rights in the trademark GUIA DE MOTÉIS arising as of the earliest date of registration by INPI in Brazil, that is, October 30, 2007.
Complainant argues that the disputed domain name, , is confusingly similar to its GUIA DE MOTÉIS trademark. Confusing similarity as between trademarks and domain names is assessed by examining the visual impression, sound and meaning of the terms. The first two components of the disputed domain name and Complainant's mark (i.e., “guia de”) are identical. The Portuguese term “MOTÉIS” and Spanish term “moteles” are similar in appearance, and fairly similar in pronunciation. Furthermore, because of the proximity between Spanish-speaking countries in Latin America and Portuguese-speaking Brazil, many individuals on the continent are used to reading equivalent terms in the two languages. The Panel concludes that a Spanish-speaking or Portuguese-speaking Internet user seeing the disputed domain name would be likely to confuse it with Complainant's trademark because of the substantial similarity in visual impression, sound and meaning.
Complainant has established rights in a trademark and that the disputed domain name is confusingly similar to that mark. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 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 are 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.” (Policy, paragraph 4(c)”
Respondent has not provided evidence it has been commonly known by the disputed domain name.
The term “guia de moteles” adopted by Respondent in the disputed domain name is commonly descriptive in Spanish for the term “motel guide” or “guide to motels” in English. Respondent is using these terms in the disputed domain name for a link farm that directs Internet users mainly to hotels in Germany. It is not specifically directing Internet users to motels in Brazil or Portugal. Respondent is not using Complainant's trademark design on its link farm website. It appears to be the design portion of Complainant's trademark that distinguishes it from the common descriptive term for “guide to motels” in Portuguese.
Respondent is using the disputed domain name that is a common descriptive term in Spanish to direct Internet users to the type of service commonly denominated by the term. This may be a “fortuitous” circumstance if indeed Respondent has previously run afoul of the Policy, but it is nevertheless difficult for the Panel to escape concluding that Respondent is making a bona fide offering of services using the domain name, and that it did so prior to notice of the dispute.2 In other words, Respondent is using the term “motel guide” (in Spanish) to direct Internet users to link farm identifying hotel and related travel services, and without particular focus on the country in which Complainant uses its mark or on the type of establishment promoted by Complainant.
The Panel determines that Respondent has a legitimate interest in the disputed domain name. For this reason, Complainant fails in demonstrating abusive domain name registration and use.
Having determined that the Complaint must be rejected, this Panel for reasons of administrative economy might not go on to address the element of bad faith. However, the Panel considers it useful to point out that it would reject the Complaint on alternate grounds. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name on August 27, 2004. The Panel determined that Complainant demonstrated rights in a trademark arising as of October 30, 2007. Pursuant to paragraph 4(a)(iii) and 4(b) of the Policy, Respondent must have registered the disputed domain name in bad faith for a finding of abusive registration and use. Complainant did not have trademark rights in GUIA DE MOTÉIS at the time Respondent registered the disputed domain name.
Complainant has failed to demonstrate that Respondent registered the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Dated: July 15, 2009
Full & Egal Universal Law Academy