WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager Case No. D2010-0925 1. The Parties
Complainant is VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. of Brazil, represented by Silveiro Advogados, Brazil.
Respondent is Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager of Switzerland, represented by L, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Spot Domain LLC dba D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2010. On June 9, 2010, Complainant filed an amendment to the Complaint. On June 8 and 9, 2010, the Center transmitted by email to Spot Domain LLC dba D a request for registrar verification in connection with the disputed domain name. On June 9, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar indicated that registration of the disputed domain name had expired on May 17, 2010. In subsequent correspondence with the Center, the Registrar further indicated it had renewed the registration to prevent deletion, and that the disputed domain name registration would remain “locked” pending completion of the administrative proceeding. 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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2010. The Response was filed with the Center on July 4, 2010. On July 6, 2010, Respondent sent an email to the Center and to Complainant indicating the withdrawal of its election of a 3-member panel.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 14, 2010. 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 two enterprises acting as co-Complainants, VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A., are organized and headquartered in Brazil, and are commonly controlled by Portugal Telecom and Telefónica Móviles. VIVO S.A. operates as the largest mobile telephone communications carrier in Brazil, and PORTELCOM PARTICIPAÇÕES S.A. is the owner of the trademark registrations relied upon in this proceeding.1 Co-Complainants are hereinafter referred to as “Complainant” except as may be expressly indicated.
Complainant has registered the word and design trademark VIVO on the register of the National Institute of Intellectual Property (Instituto Nacional da Propiedad Industrial (“INPI”) of Brazil, registration number 823895270, applied for on November 1, 2001 and granted August 26, 2008, in international class (IC) 38, covering telecommunications; and the word and design trademark VIVO CELULAR, registration number 823895033, applied for on November 1, 2001 and granted August 26, 2008, in IC 38, covering telecommunications in general (“TELECOMUNICAÇÕES EM GERAL”), disclaiming exclusive right to use of the term “CELULAR”. Complainant has also registered the word, and word and design, trademark VIVO and certain VIVO-formative marks in Brazil in other classes, some unrelated to the field of telecommunications.
Complainant is the operator of the largest mobile telecommunications network in Brazil, with more than 46 million customers. Complainant operates storefront vendors of cellular telephone equipment and services, and operates a commercial Internet website at “.” At that Internet website prominently identified by the VIVO trademark, Complainant offers a variety of products and services, including cellular telephones and telecommunications services, Internet services, music, video and television downloads, and so forth. Complainant has provided substantial evidence that the VIVO trademark is well-known in Brazil, having been identified as one of the strongest brands in Brazil, the fifth or sixth most valuable brand in Brazil, and the most valuable telecommunications brand in Brazil, by various independent sources.
According to Complainant, the term VIVO was chosen because of its Portuguese meaning “alive” to express the “vivacity of Brazil”.
According to the Registrar's verification report, Respondent is registrant of the disputed domain name. According to a R WhoIs database report provided by Complainant, the record of registration of the disputed domain name in the name of Respondent was created on June 25, 2008. According to the Registrar, registration of the disputed domain name expired on May 17, 2010.2 Complainant and Respondent have provided WhoIs database reports showing that the disputed domain name was registered as early as May 17, 2006, but these reports do not identify Respondent as the registrant. The Registrar has indicated to the Center that it renewed registration of the disputed domain name subsequent to its expiration on May 17, 2010, and that registration currently is in “locked” status.
Respondent uses the disputed domain name to direct Internet users to a S parking page that provides links to products and services of Complainant, as well as to products and services of third parties that compete with Complainant. When accessed from Brazil (according to a screenshot of the parking page provided by Complainant) links include “Celulares”, “Ringtones Para Celular”, “Celular Com Touch Screen” and “Gsm Nokia”.
The Registration Agreement in effect between Respondent and Spot Domain LLC dba D 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
Complainant alleges ownership of rights in the trademarks VIVO and VIVO CELULAR as evidenced by registration on the register of INPI in Brazil.
Complainant states that the foregoing trademarks “were initially filed under the Brazilian Industrial Property Office in 2001, being used by the Complainants in order to distinguish their services. Consequently, when the Respondent registered the domain name in 2008, Complainant had already trademark rights for the brand ‘VIVO', massively using this brand around the country, alone and along with the term ‘CELULAR'.”
Complainant argues that its VIVO trademark is very well known in Brazil, and is used mainly for providing cellular telephone services.
Complainant contends that the disputed domain name is confusingly similar to its VIVO CELULAR and VIVO trademarks, differing from VIVO CELULAR only by addition of “es” that signifies the plural in Portuguese.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with nor has it been licensed by Complainant to use the trademarks; (2) Respondent has not been commonly known by the disputed domain name, and (3) Complainant is legitimate owner of the trademarks.
Complainant contends that the disputed domain name was registered and used in bad faith because: (1) Complainant's trademarks are famous in Brazil and worldwide, and Respondent must have been aware of them when it registered the disputed domain name; (2) Respondent is operating a pay-per-click landing page offering goods and services competing with those of Complainant at Respondent's website, confirming that Respondent was aware of Complainant's trademarks and is using them to attract Internet users to its pay-per-click website for commercial gain; (3) prior decisions under the Policy confirm that use of a trademark to divert Internet users to a pay-per-click webpage offering competing goods and services constitutes bad faith, and; (4) Respondent's use of a privacy shield evidences bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent argues that the trademarks and the disputed domain name are comprised of generic or descriptive terms.
Respondent alleges that “a famous mark is one which is widely known by the public outside of the classification of goods for which it was registered”, and that Complainant's trademarks do not satisfy this criterion.
Respondent contends that if Complainant's trademarks are well-known in Brazil, they are not well known outside Brazil.
Respondent argues that because the evidence of trademark registration provided by Complainant is in Portuguese “It is difficult to determine exactly what rights are held by the Complainant”.
Respondent alleges that “even though Complainant may have established rights to pass the threshold test in paragraph 4(a)(i) of the Policy (rights in a mark), these rights are limited. In the UDRP procedure, the strength of a mark is usually discussed only under the 2nd and 3rd elements, but the test of confusing similarity must take into account whether there is an actual risk of confusion.”
Respondent argues that Complainant has the burden of proving Respondent's lack of rights or legitimate interests. Respondent contends that it is making a bona fide use of the disputed domain name “to provide information, links, advertising, and other content related to cellular phones. The links correspond to the subject matter of the Domain, i.e. goods and services related to cell phone usage, such as ring tones and other mobile applications. The connotation is to indicate services that make an ordinary cell phone come alive in every sense.” Respondent argues this is “fair use” of the disputed domain name.
Respondent indicates that a simple Google search shows that the terms “live” and “cellular” shows that they are common search terms, and that the use of the terms is not limited to mobile phones. Respondent also indicates that a search for the Spanish or Portuguese terms “vivo” and “celulares” results in 6.25 million references. Respondent includes several examples of search results incorporating those terms unrelated to Complainant.
Respondent argues that “the use of a generic/descriptive domain name as a search tool for information related to the subject matter of which the name is descriptive is a legitimate use”. Respondent further contends that it is not required to show a right or legitimate interest “superior” to that of Complainant in order to prevail in this dispute, but only “a” right or legitimate interest.
Respondent contends that it is not required to have been known by the disputed domain name, nor does it require a license or other authorization from Complainant.
Respondent contends that it did not register and use the disputed domain name in bad faith. Respondent alleges that Complainant's trademarks do not have worldwide notoriety, and that Respondent had no knowledge of Complainant's alleged trademarks when it registered the disputed domain name. Respondent states that it is not located in Brazil and does not do business there. Respondent contends that it registered the disputed domain name “because it consists of popular generic search terms. For that same reason, at the same time, Respondent also registered the domain name .” Respondent states that the website identified by the disputed domain name does not target or compete with Complainant, but rather refers to general mobile phone goods and services offered all over the world. Respondent states “[t]hey are all relevant to the descriptive meaning of the Domain Name in its wide sense as a reference to ‘live' or ‘living' mobile telephony.”
Respondent argues that Complainant's trademarks are not inherently distinctive or famous so that it should not be assumed that Respondent registered the disputed domain name with Complainant's trademarks in mind. Respondent states that it did not have constructive knowledge of Complainant's marks, which it had never heard of.
Respondent contends that use of a privacy shield does not evidence bad faith, as this is done to avoid spam and other unsolicited materials. Respondent states that it has made no attempts to hide its identity and that its name appears in the WhoIs listing. Respondent indicates it has not provided false contact information.
Respondent argues that Complainant's delay in pursuing this action is evidence that registration of the disputed domain name did not cause Complainant a significant problem.
Respondent requests the Panel to reject Complainant's request for an order to transfer the disputed domain name. 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 Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have 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 Center notified Respondent of the Complaint and commencement of the preceding, and Respondent furnished a Response. The Panel is satisfied that Respondent received 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 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 submitted evidence of registration of the trademarks VIVO and VIVO CELULAR on the register of INPI in Brazil (see Factual Background, supra). Complainant has submitted substantial evidence of use of these trademarks in Brazil, including evidence that the trademarks were well known in Brazil as early as 2006. The Panel determines that Complainant has rights in the VIVO and VIVO CELULAR trademarks.
The disputed domain name differs from the VIVO CELULAR mark of Complainant only by addition of the letters “es” constituting the plural form in both Portuguese and Spanish.3 This minor difference in visual impression, sound and meaning is not sufficient to dispel confusing similarity between the disputed domain name and the VIVO CELULAR trademark.
The disputed domain name also incorporates Complainant's VIVO trademark and adds the descriptive term “celulares”, the plural for a common reference to a mobile phone in Portuguese and Spanish.4 Addition of the term “celulares” to Complainant's VIVO trademark that Complainant uses to identify a mobile telephone service would be expected by consumers/Internet users. This additional term does not serve to distinguish the disputed domain name from Complainant's VIVO trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's VIVO CELULAR and VIVO trademarks.
Complainant has established rights in two trademarks and that the disputed domain name is confusingly similar to those trademarks. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that 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))
It is not clear that Respondent renewed registration of the disputed domain name prior to its expiration, but the Registrar undertook such renewal in order to preserve the status of the disputed domain name pending the outcome of this dispute. The Panel will assume that Respondent is the current owner of registration of the disputed domain name, even if Respondent may have permitted its ownership to expire prior to the initiation of this administrative proceeding.
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent alleges that it made a bona fide offering of goods or services prior to notice of the dispute, and that it has made fair use of the disputed domain name. The bona fide character of Respondent's use and its assertion of fair use depend on an assessment of the same issue: namely, Respondent's contention that Complainant's trademark terms are generic or descriptive, and that Respondent's use of those terms to provide links to goods and services, including goods and services that compete with Complainant's, constitutes bona fide or fair use.
It is common ground among the parties that the term VIVO means “live” or “alive” in both Portuguese and Spanish and, as Respondent notes, also represents the first-person singular verb in Spanish for the English “I live”. In the Panel's view, there is no inherent correlation between the terms “live”, “alive” or “I live” and mobile telephones such that a person would expect those terms to be used in combination with CELULAR (Spanish or Portuguese) or “cellular” (English). There is not an inherent anticipated meaning to “alive telephone” or “alive mobile telephone” such that the phrase is generic or commonly descriptive. From the standpoint of trademark classification, the terms VIVO CELULAR or “vivo celulares” might be considered “suggestive”. An exercise of imagination may result in an association of the terms with a mobile telephone service. But, in the Panel's assessment, from a trademark law standpoint that phrase would be inherently distinctive, not descriptive or generic.
The terms VIVO and CELULAR taken independently have meanings that could be used in a descriptive or generic sense, but Respondent has not used them independently in a domain name. It has combined them in the disputed domain name to form a phrase that is distinctive to the trademark usage of Complainant. In this regard, Respondent's usage of the terms in connection with a pay-per-click link farm parking page is not one of merely associating a generic term with a search function. Respondent instead is using a specific combination unique to Complainant to direct Internet users to vendors of goods and services competing with Complainant.
The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use. See, e.g., Intelligen LLC v. Converg Media LLC,WIPO Case No. D2010-0246; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
Respondent has argued that it was unaware of Complainant's trademarks when it registered the disputed domain name. Respondent suggests that any overlap between the disputed domain name and Complainant's trademarks was not intended to take advantage of Complainant's rights or goodwill. This argument is considered below in the context of whether Respondent acted in bad faith.
Respondent has failed to persuade the Panel that use of a trademark combination that is inherently distinctive (and not generic) in connection with a pay-per-click link farm parking page establishes rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent's] web site or location or of a product or service on [respondent's] web site or location”.
Respondent's pay-per-click link farm parking page uses the disputed domain name incorporating Complainant's trademarks intentionally to attract for commercial gain Internet users to Respondent's website by creating a likelihood of confusion as to Complainant acting as the source, sponsor, affiliate or endorser of Respondent's website. Complainant's trademarks are without doubt very well-known in Brazil, and Internet users in Brazil (and perhaps elsewhere) conducting searches for Complainant's goods or services would be likely to use or recognize the terms in the disputed domain name as being associated with Complainant. Respondent will generate income based on the goodwill associated with Complainant's trademarks.
Respondent has argued that it was unaware of Complainant's trademarks when it registered the disputed domain name, and has argued that it did not seek to take advantage of that trademark. As a central part of its argument, Respondent stresses that it is not located in Brazil, and thus was unaware of Complainant and its trademarks.5 Respondent further contends that it has not taken steps to disguise its identity by use of a privacy shield, and that its identity is listed in its WhoIs data record.
The Panel agrees with Respondent that use of a privacy shield does not in itself constitute evidence of bad faith. There is good reason why the average Internet user will purchase a privacy shield service when registering a domain name, such as to avoid the attention of spam providers.
But, the identity of Respondent disclosed on its WhoIs record and by the Registrar is “Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager”, with an address in Zurich, Switzerland and no individual contact person listed. A “proxy” is by definition a person acting on behalf of someone else.6 In this regard, Respondent has not provided credible evidence that it is located outside of Brazil or that it does not have a specific interest in the Brazilian market. There is no evidence as to the actual identity of the Respondent lying beneath the proxy. From the facts presented to it, the Panel is unable to draw the conclusion that Respondent was unaware of Complainant and its trademark when it registered the disputed domain name.
Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. 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 Complainant.
Frederick M. Abbott
Sole Panelist
Dated: July 28, 2010
1 The trademark registrations relied upon are in the name of Tagilo Participações Ltda., a subsidiary of PORTELCOM PARTICIPAÇÕES S.A.
2 May 17, 2010 was indicated as the anticipated expiration date of the registration on the R WhoIs database report.
3 Addition of the generic top-level domain (gTLD) is not relevant to the issue of confusing similarity in circumstances such as this under the Policy.
4 Confirmed by “Google translate”. The parties are in agreement concerning the meaning of “celular” in Portuguese and Spanish.
5 Complainant has asserted trademark rights arising prior to the date that Respondent registered the disputed domain name based on Complainant's use of the trademark and acquisition of well-known status prior to the grant of registration by INPI. Respondent has not specifically challenged Complainant's claim of rights based on its application in 2001 and subsequent usage prior to the grant of registration. The Panel notes that the status of applied for but not yet granted trademark registrations in Brazil might have been pursued by Respondent, but the Panel does not pursue this on its own initiative.
6 See, e.g., Merriam-Webster Online Dictionary, with “proxy” defined as “the agency, function, or office of a deputy who acts as a substitute for another” or “a person authorized to act for another”. Panel search of July 23, 2010.
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