The Complainants are Vivo S.A. of Londrina, Paraná, Brazil, and Portelcom Participações S.A. of São Paulo, Brazil (referred to collectively in this decision as the "Complainant") represented by Silveiro Advogados, Brazil.
The Respondent is Protected Domain Services - Customer ID: NNP-4713284 of Denver, Colorado, United States of America / Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager of Zurich, Switzerland, represented by L, Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2010. On June 28, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Name. On June 30, 2010, N LLC transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 7, 2010. 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” 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 proceeding commenced on July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. The Response was filed with the Center on July 29, 2010. In its Response, the Respondent requested a three-member Panel. However, in its communications with the Center on August 9, 2010, the Respondent indicated that it agreed to the case being decided by a single member Panel.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 11, 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 A. The Complainant
The Complainants in this case are two Brazilian companies, Vivo S.A. and Portelcom Participações S.A. Both companies are commonly controlled by Portugal Telecom and Telefónica Móviles. Portelcom Participações S.A. is the owner (via its subsidiary) of the trade mark registrations relied upon in this proceeding, and Vivo S.A. is an operating entity of the business group, operating as the largest mobile telephone communications carrier in Brazil under the brand VIVO. The two companies have brought this action on the basis that they share a common interest in the trade marks involved, and are referred to in this decision as the "Complainant".
The Complainant has registered a number of trade marks in Brazil that consist of or incorporate the words "vivo" and "vivo celular". The earliest of these marks was applied for in 2001 and granted in August 2008.
The Complainant carries on business in Brazil as a mobile telecommunications service provider, and operates the largest mobile telecommunications network in Brazil, with more than 46 million customers. As well as the provision of a mobile telephone network, the Complainant offers other related products and services, such as mobile telephones, mobile accessories, Internet services, and download capabilities.
According to the Complainant, the term "Vivo" was chosen as a brand name to reflect the "playful energy" of the Brazilian people because of its meaning in Portuguese as “alive”. The Complainant has consistently and extensively marketed its products and services under the VIVO brand, such that the VIVO brand has come to be one of the most well-known and valuable brands in Brazil. B. The Respondent
According to the Registrar’s verification report, the Respondent is registrant of the Domain Name. According to the WhoIs search result, the Domain Name was created on May 24, 2006. At the time of the Panel's decision, the Domain Name resolved to a website displaying sponsored advertising links, some of which advertise products and services that directly compete with the Complainant's products and services. From the evidence provided by the Complainant, when accessed from Brazil, the website to which the Domain Name resolves displays links in Portuguese, including "Celulares", "Modelos de Celulares Vivo" and "Vivo Pre". 5. Parties’ Contentions A. Complainant's Contentions
The Complainant's contentions can be summarised as follows:
(a) the Domain Name consists of the Complainant's trade mark VIVO in its entirety, the addition of the descriptive term "celulares" doing nothing to distinguish the Domain Name from the Complainant's trade mark and dispel any confusion in the minds of Internet consumers;
(b) alternatively or additionally, the Domain Name is confusingly similar to the Complainant's VIVO CELULAR trade mark, the only differences being the reversal of the word order and the addition of "es" to the end of CELULAR (signifying the plural in the Portuguese language);
(c) due to the fame and use of the VIVO and VIVO CELULAR trade marks, any Domain Name incorporating these terms will immediately be associated with the Complainant in the minds of Internet users;
(d) the Respondent is not affiliated with the Complainant, and the Complainant has not authorised or otherwise permitted the Respondent to use its trade marks;
(e) the Respondent is not commonly known by the Domain Name, and (unlike the Complainant) has no trade mark registrations for this expression;
(f) the Complainant’s trade marks are famous in Brazil and worldwide, and have been used by the Complainant since 2001, such that the Respondent must have been aware of them when it registered the Domain Name in 2008;
(g) the fact that the Respondent is using the Domain Name to operate a pay-per-click website that advertises products and services that compete with those of the Complainant confirms that the Respondent was aware of the Complainant’s trade marks and is using the Domain Name to attract Internet users to its website for commercial gain;
(h) prior UDRP panel decisions indicate that the Respondent cannot rely on the use of an “advertising algorithm” to absolve the Respondent of responsibility for the use of the website to which the Domain Name resolves; and
(i) the fact that the Respondent has used a privacy shield in registering and holding the Domain Name indicates bad faith in the circumstances of the case. B. Respondent's Contentions
The Respondent's contentions can be summarised as follows:
(a) as the words "vivo" and "celulares" are reversed and "es" has been added to "celular", the Domain Name is not identical nor confusingly similar to the Complainant's trade marks, and Internet users are not likely to be confused into assuming the Domain Name relates to the Complainant;
(b) the words "vivo" and "celulares" are generic and descriptive, and are not exclusively associated with the Complainant so that Internet users will assume the Domain Name is associated with the Complainant;
(c) the Complainant's trade marks are not famous, and even if they were famous, they are not well-known outside of Brazil;
(d) the evidence of trade mark rights provided by the Complainant is in Portuguese, so that it is difficult to determine what rights are held by the Complainant, and accordingly, the Complainant has failed to meet the burden of showing that it has rights in a trade mark to which the Domain Name relates;
(e) the Complainant has failed to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name;
(f) the Respondent has rights and legitimate interests in the Domain name, having used the Domain Name to point to a website providing information that relates to the subject matter of the Domain Name itself, such use being fair use;
(g) the terms "vivo" and "celulares" are not used exclusively in relation to the Complainant, but have generic meanings, such that the use of a generic or descriptive Domain Name as a search tool for information related to the subject matter of the Domain Name is a legitimate use;
(h) the Respondent is not required to show a right or legitimate interest superior to that of the Complainant in order to prevail, but only a right or legitimate interest in the Domain Name;
(i) the Respondent is not required to have been known by the Domain Name, nor does it require a license or other authorization from the Complainant to use the Domain Name;
(j) the Respondent did not register the Domain Name with the intention to sell it to the Complainant or its competitors, but to use the Domain Name;
(k) the Respondent has no presence in Brazil and had no knowledge of the Complainant’s alleged trade mark rights when it registered the Domain Name, and the Complainant is not entitled to preclude all other parties from registering domain names that it considers to be similar to its trade marks;
(l) the Complainant’s trade marks are not inherently distinctive or famous, such that it should not be assumed that the Respondent registered the Domain Name with the Complainant’s trade marks in mind;
(m) the use of a privacy shield does not evidence bad faith, and was used avoid spam and other unsolicited materials, rather than the Respondent's identity, which the Respondent has made no attempt to hide; and
(n) the Respondent argues that the Complainant’s delay in pursuing this action is evidence that registration of the Domain Name did not cause the Complainant a significant problem. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts the Complainant's evidence that it has trade mark registrations in Brazil for VIVO and VIVO CELULAR, and that these trade marks were well-known in Brazil as early as 2006. The location of a registered trade mark is irrelevant when finding rights in a mark (see Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,WIPO Case No. D2003-0661 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). The first threshold of paragraph 4(a)(i) is therefore met.
The Domain Name differs from the VIVO CELULAR mark of the Complainant by (a) the reversal of the word order and (b) the addition of the letters “es” to CELULAR, to form the plural in both Portuguese and Spanish.
The Panel considers that these two differences do not dispel the likelihood of confusion between the Domain Name on the one hand and either of the Complainant's trade marks (VIVO and VIVO CELULAR) on the other. First, the Domain Name incorporates the Complainant's trade marks VIVO and VIVO CELULAR in their entirety; in the case of VIVO, with the addition of a descriptive term that is related to the Complainant's trade mark and business, which further adds to the potential for confusion, and in the case of VIVO CELULAR merely reversing the word order. Secondly, the addition of "es" is a minor difference, which is a grammatical feature, and does not change the meaning, visual impression or sound of the Domain Name.
The Panel determines that the Domain Name is confusingly similar to the Complainant’s VIVO CELULAR and VIVO trade marks, and accordingly paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts the Complainant's contention that it has not authorised, licensed or otherwise assented to the Respondent's use of the Domain Name. The Panel also considers that the evidence presented by the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Once a prima facie case is made out, it is for the Respondent to show that it does have such rights and interests. Based on the evidence before the Panel, the Respondent has no trade mark, service mark or unregistered trademark rights (common law or otherwise) in the Domain Name, nor has the Respondent asserted that it has such rights. The Panel will therefore assess the Respondent's rights or legitimate interests in the Domain Name (or lack thereof) on the basis of the Respondent's use of the Domain Name.
The Respondent asserts that it has used the Domain Name in connection with a bona fide offering of goods or services, and that such use is fair and legitimate. Essentially, the Respondent's submissions on this issue are based on the contention that the words "celular" and "vivo" are generic and descriptive, so that the Complainant cannot claim a monopoly over use of these terms in domain names.
The Panel rejects this contention. “Vivo’ means “live” or “alive” in Portuguese and Spanish. "Celulares" is also a Portuguese and Spanish phrase, with the same meaning as the English "cellular". While these terms are of themselves plainly generic and/or descriptive, when combined together they have no inherent meaning in relation to telecommunications or mobile telephones technology, but are distinctive, and are a source indicator relating to the Complainant's goods and services.
On this basis, the Respondent has not used the Domain Name as a generic term combined with a search function. Instead, the Respondent has used a phrase that is distinctive to the Complainant as the Domain Name, and used the Domain Name to resolve to a website that provides sponsored links for goods and services, including goods and services that compete with the Complainant’s own goods and services. The Respondent presumably receives referral fees for these sponsored links. It is well established that such use, in similar circumstances, is neither fair nor a bona fide offering of goods and services: PRL USA Holdings, Inc. v. LucasCobb,WIPO Case No. D2006-0162; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139.
The Panel considers that the Respondent lacks rights or legitimate interests in the Domain Name. Paragraph 4(a)(iii) is made out. C. Registered and Used in Bad Faith
The Panel considers that the Complainant's trade marks are well-known in at least Brazil, and have a level of recognition elsewhere in the world. The Panel also notes the following facts: (a) the Domain Name was registered in 2006, some time after the Complainant had begun using its marks commercially and had applied for trade mark registrations; (b) the Domain Name consists of Portuguese/Spanish words; and (c) the Respondent was the registrant of another domain name, , incorporating the Complainant's trade marks. That domain name was the subject of a recent panel decision that found against the Respondent and transferred the Domain Name to the Complainant (who is also the Complainant in the present proceeding) (see Vivo S.A. and Portelcom Participações S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925).
Having considered all the circumstances of the case, the Panel considers it highly unlikely that the Respondent did not have knowledge of the Complainant and its trade marks when registering the Domain Name. The fact that the Domain Name incorporates words from the Portuguese language suggests that the Respondent did not choose the terms by mere coincidence, but had the Portuguese and/or Brazilian market, the Complainant and its business in mind when registering the Domain Name. Likewise, the fact that the Respondent registered another domain name incorporating the same trade marks (in the original word order of the Complainant's trade marks) suggests that the Respondent was targeting this particular brand and registering domain names incorporating various word combinations relating to it.
Moreover, although the Respondent claims that it has no presence in Brazil, and has made no attempt to disguise its identity, the Panel notes that the registrant listed on the WhoIs database is “Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager”. A proxy is by definition a person who is acting on behalf of another. The true registrant is not revealed, nor are any details of the registrant, such as the principal place of business of the registrant, or the corporate entity/individual who is the ultimate owner of the Domain Name. While it is true that the use of a privacy shield does not automatically result in a finding of bad faith, the Panel must consider the submissions of the parties in light of the evidence before it. The Respondent has not provided any evidence to support its submission that it has no knowledge of the Complainant or its trade marks. No information has been provided to the Panel regarding the true identity and business of the Respondent.
It is clear from the circumstances of this case and the fact that the website to which the Domain Name resolves contains links to mobile telecommunications products and services that the Respondent has intentionally registered and used the Domain Name incorporating the Complainant's trade marks, and is trading on the likelihood that Internet users will assume that there is some connection between the Respondent and the Complainant, to derive commercial advantage from that assumption in the form of increased Internet traffic and the resultant referral fees. This is indicative of bad faith: Control Techniques Limited v. Lektronix Ltd.,WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Dated: August 25, 2010
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