Complainants are Votorantim Participações S.A. and Fibria Celulose S.A., both of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.
Respondents are Domains By Proxy, LLC, S LLC and Netstructure Soluções Ltda, of Scottsdale, Arizona, United States of America, Cambridge, Massachusetts, United States of America and São Paulo, Brazil, respectively. 2. The Domain Name and Registrar
The disputed domain name is 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on august 3, 2012 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 august 9, 2012.
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 proceedings commenced on August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 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. A communication from C. Navarro and NETSTRUCTURE SOLUÇÕES LTDA. was received on August 21, 2012. The Center requested to the Respondent confirmation of the final Response. On August 29, 2012 the Center received an email communication from S LLC. S, LLC’s Response was filed with the Center on August 30, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 7, 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.
Complainants 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.
The Panel issued a Procedural Order on September 28, 2012 requesting the Parties to clarify some uncertainties on the case record, namely the ownership and control of the disputed domain name at the time of its creation, between the time of its creation up to the entry into force of the Service Agreement, and after the entry into force of the Service Agreement to the time it appears to have been assigned to Respondent Netstructure Soluções Ltda. Complainants’ reply to Procedural Order No. 1 was received on October 8, 2012. S LLC’s reply to Procedural Order No. 1 was received on October 15, 2012. 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. The company 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.
Respondents are Domains By Proxy, LLC. (“First Respondent”), Netstructure Soluções Ltda. (“Second Respondent”) and S LLC (“Third Respondent”). Second Respondent is acting as manager and DNS service provider of the disputed domain name - . The disputed domain name was registered on August 1, 2003, in the name of RegistrarAds, Inc. (according to Complainants’ reply to the Procedural Order), and is currently registered to Third Respondent, although the Panel understands that Second Respondent is the beneficial owner of the disputed domain name. (Third Respondent has submitted evidence that the disputed domain name was transferred to Second Respondent in September 2009).
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 (Annex 8 to the Complaint) with Second Respondent in order to obtain technical advice on domain names management and DNS services.
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 above-mentioned Service Agreement included relevant clauses specifically related to the protection of Complainants' intellectual property rights, such as clauses 16.6 and 16.8 (Annex 8 to 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 above-mentioned Service Agreement (“the Agreement”) did not generate to Second Respondent any intellectual property rights over the domain names it managed for Complainants, whose property should remain with Complainants and the other companies of their Votorantim 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 – Annex 8 to the Complaint).
Thereby, as a consequence, on February 28, 2012, during an in-person meeting with Second Respondent’s elected representative (clause 12.23 of the referred Annex 8 to the Complaint), Complainants delivered a rescission letter in accordance with clause 11.14 of the Agreement, with the legitimate expectation to recover the remaining domain names that were being still managed by Second Respondent (Annex 11 to 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 receiving financial benefits. Mr. Paulo Navarro declared it would not proceed with the transfer of domain names without additional costs – even though the amount paid by Complainants in accordance with the Agreement comprised “all the costs inherent to the rendering of services”, as established in clause 9.2. (Annex 12 to 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. Complainant did not get any result.
Complainants also claim they realized Second Respondent had registered the disputed domain name in the name of First Respondent to unfairly raise barriers to the transfer of the disputed domain name at the end of the Agreement and the disputed domain name holder is deliberately being covered by the use of a proxy service (First Respondent), in order to mask the real domain owner and manager, although the disputed domain name still resolves to Complainants’ website.
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.
Moreover, Complainants replied the Procedural Order No. 1 issued by this Panel stating the disputed domain name was registered on August 1, 2003 by RegistrarAds, Inc., and in September 2009, it appears to have been transferred to S, LLC. Then, Complainant Fibria Celulose S.A, a company created only in 2009, ordered Second Respondent Netstructure Soluções Ltda to start negotiations for the purchase of the disputed domain name. Second Respondent was at the time contractually in charge of the implementation and registration of international domain names on behalf of Complainants, reason why this task was entrusted to it.
Complainants allege that on September 14, 2009 Second Respondent’s legal representative wrote an email to them informing of the conclusion of negotiations with S, LLC for the purchase of disputed domain name (Annex 4 of the Procedural Order response), thereby it is clear that Second Respondent was only acting on behalf of Complainants. Complainants also argue that they were the ones who payed for the transfer of disputed domain name. B. Respondent
First Respondent replied to the Complaint stating that Complainants have filed this UDRP proceeding in error, since First Complainant is not and has never been the owner of the disputed domain name.
First Respondent clarifies it is an online international marketplace for registered users to buy and sell domain names that have been previously registered by such registered user and are owned in such registered user’s name. It also provides a domain name transfer service by which it “holds” a domain name in escrow on behalf of a domain seller and buyer, at a domain name registrar while awaiting payment from a buyer of such domain.
First Respondent claims the buyer of the disputed domain name was Second Respondent, by its’ representative, Mr. Paulo Navarro, who completed a purchase and sale of disputed domain name over First Respondent’s marketplace, utilizing its’ transfer service to facilitate the transfer of the domain name.
Once the transfer was completed, First Complainant alleges it relinquished any and all control over disputed domain name to Second Respondent’s representative informing him that the transfer was complete and it was now his responsibility to go into his GoDaddy account (its’ preferred domain name registrar) and update the contact details with his information as he/his company were the new owners of the disputed domain name.
However, instead of updating the contact details to its’ own information, First Respondent claims Second Respondent’s representative employed a privacy protection shield to the disputed domain name, never removing First Complainant from the WhoIs contact details. Therefore, the WhoIs details continue to erroneously state that First Respondent is the owner of disputed domain name, due to a hidden privacy protection shield instituted by Second Respondent. Due to the registrar lock that was instituted as part of this UDRP, GoDaddy was not able to change the contact details.
First Complainant claims this is inaccurate and incorrect information, as the current domain name owner is the Second Respondent, thereby, this proceeding should have been commenced against it. Also, since receiving notice of this proceeding, First Complainant has contacted Second Respondent’s representative via email to inform him of this erroneous Complaint, who claimed Second Respondent was aware of the proceeding.
Second Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant 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 three different Respondents with one of them being a Privacy Proxy and another having entered in a contractual relationship in 2008 with Complainants’ group of companies. The Third Respondent, S LLC, is, according to the Registrar, the registrant of record of the disputed domain name. Based on the evidence submitted by the parties, , the Panel is satisfied that the Second Respondent is the beneficial owner of the disputed domain name and that the name of the Third Respondent only appears on the Registrar’s database due to the Second Respondent’s omission to update its registrant’s details. In order to ensure implementation of its decision, the Panel will treat “Domains By Proxy, LLC”, “Netstructure Soluções Ltda” and “S LLC” (the registrant of record for the disputed domain name) as Respondents, but it should be understood that the Panel’s findings, particularly those under the second and third element, are directed at First and Second Respondent, and not necessarily at S LLC. 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 phonetically identical to Complainant’s trademark and Second Complainant’s company name. Also, the disputed domain name still resolves to Second Complainant’s official website.
Complainants proved to have rights over the expression “fibria”, which has been widely used and recognized worldwide. Evidence of this is the prizes earned by Second Complainant, as to Annex 6 to the Complaint.
In the Panel’s view, the term “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 applications and company name FIBRIA, and, thus, that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Second Respondent conclude 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, including the disputed domain name.
As stated in the 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 Agreement).
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 itself or to a third party.
Moreover, Complainants have proved to the satisfaction of this Panel that Respondents do not have rights or legitimate interests over the disputed domain name and 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 deemed to be 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 Complainant, entitled only to manage domain names as its agent and on its behalf.
In September 2009, Second Respondent acquired the disputed domain name via the services of S LLC. The Panel is satisfied by the evidence submitted that this transaction was done pursuant to the Agreement.
The Agreement has now come to an end and the Panel acknowledges that the disputed domain name is currently registered in the name of Third Respondent, although there is evidence that its beneficial owner is Second Respondent, who employed a hidden privacy protection shield to the disputed domain name, preventing anyone to alter the registrant details, and is denying access to the concerned ID and password by Complainants, preventing them to manage, transfer or use of the disputed domain name which has been managed on their behalf since 2008.
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 Second Respondent is intentionally withholding the disputed domain name in order to prevent Complainants from effectively changing their management provider, and keep perceiving financial benefits, which constitutes an unequivocal use of bad faith.
This Panel finds Complainants have duly proved the disputed domain name was only registered in the name of Respondents because Second Respondent was at the time contractually in charge of the implementation and registration of international domain names on behalf of Complainants, as per the Service Agreement, and the fact that Respondents appear to be holding the disputed domain name in order to gain profits from Complainants (who have already acquired the disputed domain name before from S, LLC., and should now be its legitimate registrant of record) indicates bad faith.
The Panel acknowledges that there is proof in this proceeding that Complainants made the payment of the price for which S assigned the disputed domain name and, at that moment, the ownership of the disputed domain name should have been transferred to Complainants. The disputed domain name remained, however, under Third Respondent’s name, as it was following the instructions received by Second Respondent. As Second Respondent was always acting on behalf of Complainants, Second Respondent could not have failed to comply with Complainants’ instructions to assign the disputed domain name to the ownership of Complainants and, by doing so, Second Respondent acted in bad faith.
Finally, in NAF Claim No. FA1207001456005, which involved Respondent Netstructure Soluções Ltda and Complainant Votorantim Participações S.A, the same facts as the ones of the current proceeding and the domain name , the panel found the domain name was registered and used in bad faith by Respondent.
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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