Complainants are Votorantim Participações S.A. and Fibria Celulose S.A. of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.
Respondents are Carlos Navarro of Dallas, Texas, United States of America and Netstructure Soluções Ltda. of São Paulo, Brazil, represented internally. 2. The Domain Name and Registrar
The disputed domain name registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent Carlos Navarro 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 Respondents of the Complaint, and the proceedings commenced on August 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2012. On August 15, 2012, the Center received a supplemental filing from Complainants. On August 16, 2012, the Center sent a communication to the parties informing the parties that the supplemental filing would be forwarded to the Panel for admissibility determination pursuant to its discretion. The Response was filed with the Center on August 21, 2012 on behalf of both Respondents.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 31, 2012. 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.
Complainant presented a supplemental filing, on September 26, 2012, alerting the Panel of the decision recently issued by the National Arbitration Forum, regarding the domain name and also involving Respondent Netstructure Soluções Ltda and Complainant Votorantim Participações S.A, where the National Arbitration Forum ordered Respondent to transfer the domain name to Complainant, pursuant to the U. S. Department of Commerce’s usTLD Dispute Resolution Policy. 4. Factual Background
Complainants are Brazilian companies, both headquartered in the city and state of São Paulo. Votorantim Participações S.A’s (“First Complainant”) activities are focused on key sectors of the economy that demand capital intensive and high scale production processes such as cement, mining and metallurgy, steel mill, pulp, concentrated orange juice, and energy self generation.
In the pulp and paper industry, First Complainant operates through Fibria Celulose S.A. (“Second Complainant”), a company created in 2009 as a result of the merger between Votorantim Celulose e Papel S.A. and Aracruz Celulose S.A. Second Complainant is currently a leading company in the hardwood pulp manufacturing segment, and its customers comprise major manufacturers and distributors of products in key consumer markets.
As of July 28, 2009, Complainants applied for over 30 (thirty) trademark registrations for FIBRIA in Brazil and abroad, which have not yet been granted. The trademarks applied-for are in the name of Aracruz Celulose S.A., a Brazilian company now incorporated by Second Complainant (Attachment 05 of the Complaint).
Respondents are Carlos Navarro (“First Respondent”) and Netstructure Soluções Ltda. (“Second Respondent”). In the year of 2008, Votorantim Industrial S.A. – which is also part of the Votorantim Group, as is First Complainant – signed a Service Agreement (Attachment 08 of the Complaint) with Second Respondent in order to obtain technical advice on domain names management and DNS services. First Respondent appears to be the agent of Second Respondent. The disputed domain name was created on August 3, 2009 and is currently registered to First Respondent.
According to Complainants, during the contractual relationship between Votorantim Industrial S.A. and Second Respondent, over 400 domain names owned by the several companies of the Votorantim Group were being managed by Second Respondent.
The Service Agreement mentioned above included relevant clauses specifically related to the protection of Complainants' intellectual property rights, such as clauses 16.6 and 16.8 (Attachment 08 of the Complaint). 5. Parties’ Contentions A. Complainant
Complainants are owners of over 30 (thirty) trademark applications for FIBRIA in Brazil and abroad. Complainants allege that, due to Second Complainant's activities and market share, the trademark FIBRIA reached a well known status in the field of hardwood pulp worldwide, and also that, since its foundation, Second Complainant has been awarded with several prizes, including “The Most Admired Company”, “Best Supplier in the Printing Paper (uncoated) category”, “Efficient Carbon Index (ICO2)”, among others.
Complainants claim that the services contracted in the Service Agreement (“the Agreement”) did not generate to Second Respondent any intellectual property rights over the domain names managed, whose property should remain with Complainants and the other companies of their business group. They also state that during the contractual relationship several technical problems involving many domain names occurred, which justified Complainants’ legitimate intent to change the service provider – at that time, all Complainants' domain names were being held by Second Respondent and managed through its own login ID and password – data which was never shared with Complainants or the other companies of their business conglomerate, preventing them from making any arrangements over their own domain names’ portfolio. Complainants then requested Second Respondent to transfer the domain names back to them and to repair the technical problems that had occurred.
Complainants state that the transfers, which took place in late 2011 - early 2012, only included 88% of the domain names, having Second Respondent not transferred over 50 domain names – including the disputed domain name – despite the contractual clauses mentioned above regarding Complainants' intellectual property (clauses 16.6 and 16.8 – Attachment 08 of the Complaint).
Thereby, as a consequence, on February 28, 2012, during an in-person meeting with First Respondent – Second Respondent’s elected representative (clause 12.23 of the referred Attachment 08 of the Complaint), Complainants delivered a rescission letter in accordance to clause 11.14 of the Agreement, with the legitimate expectation to recover the remaining domain names that were being still managed by Second Respondent (Attachment 11 of the Complaint).
Complainants allege that, from that moment on, Second Respondent started to impose explicit barriers to the transfer of the remaining domain names, with the clear intent to prevent Complainants from changing the service provider and to keep on perceiving financial benefits. First Respondent declared it would not to proceed with the transfer of domain names with no additional costs – even though the amount paid by Complainants in accordance to the contract comprised “all the costs inherent to the rendering of services”, as established in clause 9.2. (Attachment 12 of the Complaint). Despite Complainants’ request for information about these additional costs, no budget was ever informed by Second Respondent.
Complainants then sent a cease-and-desist letter to Respondents, where they stated the absence of any debts regarding the domain names and stressed the request for transfer, not getting any result.
Complainants also claim they realized Second Respondent had registered the disputed domain name in the name of First Respondent, its former employee, in order to unfairly raise barriers to the domain name transference at the end of the Agreement.
Complainants argue that, in view of the narrated facts, there is no doubt that Respondents are clearly “kidnapping” Complainants’ domain names and sabotaging their DNS, in order to keep perceiving financial advantages from Complainants, since it is refusing to proceed with the transfer of the domain names by not disclosing their ID and password, preventing Complainants from managing the domain names registered under their own name and supposedly under their control. B. Respondent
Respondents replied to the Complaint stating they registered the domain names for future sale or lease to Complainants. They also allege they did not intent for any commercial gain, to mislead Consumers or to tarnish the trademarks at issue.
Respondents claim they just want recognition by Complainants that the disputed domain name ownership belongs to Respondents and, therefore, Complainants would need to pay them for the use or transfer of ownership of the disputed domain name.
Respondents allege that some domain names held by them were owned by Complainants and that with the termination of the Agreement, these domain names were duly transferred to Complainants in good faith and without any questioning.
Respondents claim that performing international domain name registrations for Complainants was not the subject matter of the Agreement and that Complainants dispose of the services of large international offices for registering trademarks and domain names, and if they really wanted to register domain names in their name, they would appeal to these offices, not to Respondents.
Respondents argue that during the term of the Agreement, Second Respondent, in good faith, gave free use of several domain names to the Complainants, including the disputed one, and with the termination of the Agreement, Second Respondent started negotiations with Complainants to continue disposing of these domains, but they unfortunately distorted the facts to try to usurp the ownership of domains they know does not belong to them and are not related in any way to the Agreement.
At last, while negotiations were taking place, Second Respondent allegedly continued to provide administration services for internet domains of their property to Complainants without charge. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainants must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in respect of which Complainants have rights; and
(ii) that Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
As indicated above, this case involves two different Respondents with one of them having entered in a contractual relationship in 2008 with Complainants’ group of companies. Based on the case record, and more particularly on the Response filed on behalf of the two Respondents, the Panel is satisfied that the two Respondents are indeed related and controlled by the same entity. This Panel’s decision and its findings shall therefore apply equally to both Respondents in this case. A. Identical or Confusingly Similar
As indicated above, Complainants applied for over 30 (thirty) trademark registrations for FIBRIA in Brazil and abroad, which have not yet been granted.
Based on the evidence submitted by Complainants, the Panel is satisfied that Complainants have proved to have unregistered trademark rights for FIBRIA, which has indeed become a distinctive identifier that has been widely used and recognized in the field of hardwood pulp. Evidence of that are the prizes earned by Second Complainant, as to Attachment 06 of the Complaint.
Complainants have duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of unregistered rights for the trademark FIBRIA, and that such trademark is entirely incorporated in the disputed domain name .
Furthermore, the disputed domain name is identical to its domain names and , which resolve to Second Complainant’s official website.
In the Panel’s view, and in light of the evidence on the record, “fibria” is a neologism with no correspondence in Portuguese or any other language, which was specially coined by Complainants in order to designate their services. Hence, it is clear that any use of the referred trademark as a domain name will be directly associated to Complainants.
The Panel therefore finds that the disputed domain name is identical to Complainants’ trademark, and, thus, that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Second Respondent celebrated the Agreement with Complainants and the other companies of their business group in order to provide technical advisement on domain names management and DNS services.
As stated in the referred Agreement, “the service provider, by itself, its representatives, employees and occasional subcontractors, may not use names, trademarks, signs and distinctive colors, as well as any other means of identification of the company and its products and services, unless with the express authorization of this one” (clause 16.6 of the Agreement). It is also established that “Belongs to the company [in this case, Complainants] any intellectual property rights that may arise as a consequence of the fulfillment of this contract” (clause 16.8 of the Complaint).
Thus, in this Panel’s view, it is clear that Second Respondent was only authorized to manage certain domain names on behalf of Complainants, having no legal rights over the domain names, being also not authorized to transfer the domain names to a third party – as it appears to have done with First Respondent.
Moreover, Complainants have proved to the satisfaction of this Panel that Respondents do not have rights or legitimate interests over the disputed domain name or the expression “fibria” pursuant to the Policy, since they are not, inter alia, commonly known as Fibria, do not run any business under the name Fibria and have never filed trademark applications for FIBRIA.
In view of the above, the Panel finds that Respondents have no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
In this Panel’s view, the reported facts are unequivocal evidence of Respondents’ bad faith. In 2008, Complainants and Second Respondent concluded the Agreement under which Second Respondent was a mere representative of Complainants, entitled only to manage domain names as its agent and on its behalf. The disputed domain name was created on August 3, 2009 and is currently registered to First Respondent.
The Agreement has now come to an end and the disputed domain name is still registered to First Respondent, who is denying Complainants access to the concerned ID and password, preventing them to manage, transfer or use the disputed domain name which was created after the Agreement between Complaints and Second Respondent took place.
In support of their arguments, Complainants cite a number of decisions made by previous panels in similar cases, such as one regarding the withholding of a domain name by the former service provider, where the panel found the registration of the domain name during the contractual relationship in the name of others than the contracting party constitutes bad faith: Nürmont GmbH v. PCC Heilbronn GbR Eberhard Düttra,WIPO Case No. D2001-0954.
In addition, Complainants and the other companies of their business group remain repeatedly facing technical problems, which leads us to believe Respondents are intentionally withholding the disputed domain name in order to prevent Complainants from effectively changing their management provider, keep perceiving financial benefits, which constitutes an unequivocal use of bad faith.
It is clear that Respondents elected the disputed domain name to remain in their possession due to its value as an intellectual property asset, since FIBRIA is a widely-known trademark in the field of hardwood pulp. In this Panel’s view, it appears to be evident that the unavailability of the disputed domain name causes great damage to Complainants’ activities, and Respondents are apparently turning the disputed domain name into an element of coercion for Complainant to pay more money in order to recover it.
Furthermore, in their Response, Respondents confessed to have registered the disputed domain name for future sale or lease to Complainants, and the Panel considers that this should be considered as acting in bad faith, as settled by paragraph 4(b)(i) of the Policy and recognized by previous UDRP panels.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and, thus, that the requirement of paragraph 4(a)(iii) of the Policy is met. 7. Decision
For 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 Complainant Fibria Celulose S.A. as requested by Complainants.
Gabriel F. Leonardos
Sole Panelist
Dated: October 15, 2012
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