Complainants are Votorantim Participações S.A. and Citrovita Agro Industrial Ltda. both of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.
Respondents are Citrovita, Rodrigo Borsato and Netstructure Soluções Ltda. both of São Paulo, Brazil and Carlos Navarro of Dallas, Texas, United States of America (“US”), represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with R (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 Citrovita (Rodrigo Borsato) 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 August 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2012. The Response was filed with the Center on August 21, 2012 by Netstructure Soluções Ltda. and an individual named C. Navarro.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 5, 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. 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.
Specifically in the agribusiness field, it operates through Citrovita Agro Industrial Ltda. (“Second Complainant”), a leading producer of concentrate orange juice and industrialized orange by-products such as essential oils and animal feed, which are exported to over 75 countries on five continents (Annex 5 to the Complaint).
Complainants, being in the same business group, are the legitimate owners of several trademark registrations for the brand CITROVITA, in Brazil, Australia, US and Japan (Annex 6 to the Complaint). In Brazil there are 4 (four) registered trademarks for CITROVITA in the name of Second Complainant: registrations nos. 815166583 (filed on October 10, 1989 and granted on March 31, 1992, in former Brazilian class 35.10); 815422032 (filed on March 2, 1990 and granted on January 09, 1996, in former Brazilian class 35.10); 901329258 (filed on November 26, 2008 and granted on March 1, 2011, in class 31), and; 901329207 (filed on November 26, 2008 and granted on March 1, 2011, in class 3).
The disputed domain name was created on December 30, 1998 by “Votorantim International Europe GmbH”, and it stood under that same ownership until 2008. During such time, Rodrigo Borsato was an employee from Complainants, in charge of the IT department and responsible for managing all Complainants’ domain names (The disputed domain name is currently registered in the name of First Respondent).
Respondents are Citrovita, Rodrigo Borsato (“First Respondent”) and Netstructure Soluções Ltda. (“Second Respondent”). First Respondent is identified in this Complaint as “Citrovita, Rodrigo Borsato”. However, it is important to take note that such company does not exist in Complainant’s business group, thus, First Respondent is not the same person as Second Complainant, but rather another entity.
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 7 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 managed by Second Respondent.
The Service Agreement included relevant clauses specifically related to the protection of Complainants’ intellectual property rights, such as clauses 16.6 and 16.8 (Annex 7 to the Complaint). 5. Parties’ Contentions A. Complainant
Complainants are owners of several trademark registrations for CITROVITA in Brazil and abroad.
Complainants allege that the trademark CITROVITA has reached a well-known status since First Complainant is the world’s largest manufacturer of concentrated orange juice.
Complainants claim that the services contracted in the Service Agreement (“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, see Annex 7 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 7 to the Complaint), Complainants delivered a rescission letter in accordance with clause 11.14 of the Service 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 receiving financial benefits. Second Respondent’s representative 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 Second Respondent, where they stated the absence of any debts regarding the domain names and stressed the request for transfer. Complainants did not get 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 transfer of the disputed domain name at the end of the Agreement.
Complainants argue that, in view of the narrated facts, there is no doubt that Second Respondent is clearly “kidnapping” Complainants’ domain names and sabotaging their DNS, in order to keep receiving 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.
Moreover, Complainants responded the Procedural Order issued by this Panel stating the disputed domain name was registered on December 30, 1998 by the Votorantim business group, and that its former employee and now Respondent Rodrigo Borsato was at the time responsible for the group’s IT department, reason why he was the one who registered and managed the disputed domain name on behalf of Complainants.
Complainants allege that after the execution of the Agreement, Second Respondent became responsible for the management of all Complainants’ domain names, included the disputed on, and DNS services. Subsequently, the ownership of the disputed domain name was assigned from “Votorantim International Europe GmbH” to First Respondent, and, according to Complainants, “Votorantim International Europe GmbH” never authorized such assignment. Since then, Complainants claim that Respondents have been illegitimately holding the disputed domain name. B. Respondent
A Response was filed only by Second Respondent.
Second Respondent 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, mislead consumers or tarnish the trademarks at issue.
Second Respondent claims it just wants recognition by Complainants that the disputed domain name belongs to Second Respondent and, therefore, Complainants would need to pay them for the use or transfer of ownership of the disputed domain name.
Second Respondent alleges that some domain names held by them were owned by Complainants and that with the termination of the Agreement, these domains were duly transferred to Complainants in good faith and without any questioning.
Second Respondent claims that performing international domain name registrations for Complainants was not the subject matter of the Agreement and that Complainants – part of a major Brazilian company – 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.
Second Respondent argues that during the term of the Agreement, Second Respondent, in good faith, gave free use of several domain names to Complainants, including the disputed domain name, 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 domain names that they know do not belong to them and are not related in any way to the Service Agreement.
At last, while negotiations were taking place, Second Respondent allegedly continued to provide administration services for Internet domain names of their property to Complainants without charge. 6. Discussion and Findings
Respondents are Citrovita (Rodrigo Borsato) and Netstructure Soluções Ltda. Second Respondent is acting as manager and DNS service provider of the disputed domain name and First Respondent is currently holding the disputed domain name before the Registrar.
As indicated above, this case involves two different Respondents with one of them having entered in a contractual relationship in 2008 with Complainant’s group of companies. Based on the case record, and more particularly on the Response filed on behalf of Second Respondent, the Panel is satisfied that the two Respondents must indeed be related and controlled by the same entity. This Panel’s decision and its findings shall therefore apply equally to both Respondents in this case.
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.
These three elements are considered hereinafter. A. Identical or Confusingly Similar
Complainants have duly proved the first element under paragraph 4(a) of the Policy by attesting that they are the owners of several trademark registrations for CITROVITA in Brazil and abroad, and that such trademark is entirely incorporated in the disputed domain name. The disputed domain name also reproduces the central and distinctive portion of Second Complainant’s company name - Citrovita Agro Industrial Ltda.
In the Panel’s view, and in light of the evidence on the record, “citrovita” is a neologism with no meaning 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 in a domain name will be directly associated with Complainants.
The Panel therefore finds that the disputed domain name is identical to Complainants’ trademark and company name CITROVITA, and, thus, that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Second Respondent concluded 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 referred Service 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 register and manage Complainants’ domain names on their behalf, having no legal rights over the domain names, being also not authorized to transfer the domain names to a third party – as it did with First Respondent.
Moreover, Complainant has proved to the satisfaction of this Panel that Respondents do not have rights or legitimate interests over the disputed domain name on the expression “citrovita” pursuant to the Policy, since they are not commonly known as “citrovita”, do not run any business under the name “citrovita” and have never filed trademark applications for “citrovita”.
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 Complainants, entitled only to manage domain names as its agent and on its behalf. The disputed domain name was created on December 30, 1998 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 UDRP 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 receiving financial benefits, which constitutes an unequivocal use of bad faith.
Moreover, this Panel acknowledges that the disputed domain name was before 2008 being managed by First Respondent Rodrigo Borsato because he was an employee of “Votorantim International Europe GmbH” and at that time he was responsible for the group’s IT department, but after the execution of the Agreement Second Respondent took over this responsibility. Complainants have proved that at some point in time the disputed domain name was unduly assigned from “Votorantim International Europe GmbH” to First Respondent and that since then Respondents have been illegitimately holding the disputed domain name in a clear act 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 Second Complainant is a leading manufacturer of concentrated orange juice and, consequently, widely recognized. Evidently, 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.
Lastly, in its Response, Respondent Netstructure Soluções Ltda. confessed to have registered the disputed domain name for future sale or lease to Complainants, in a clear act of bad faith, as settled by paragraph 4(b)(i) of the Policy and recognized by previous UDRP panels.
Finally, the Panel notes that in VOTORANTIM PARTICIPAÇÕES S.A. v. Carlos Navarro / NetStructure, NAF Claim No. FA1207001456005, which involved Respondent Netstructure Soluções Ltda and Complainant Votorantim Participações S.A, and where the facts were similar to this case, the panel ordered the domain name be transferred to Complainant.
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 Citrovita Agro Industrial Ltda. as requested by Complainants.
Gabriel F. Leonardos
Sole Panelist
Dated: October 15, 2012
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