v.
Artmidia Comunicação Visual Criação E Arte Ltda.
[Indexed as: Globo Comunicações v. Artmidia Comunicação]
[Indexed as: GLOBOPAR.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0606
Commenced: August 31, 2000
Judgment: September 13, 2000
Panelist: José Pio Tamassia Santos
Domain name - Domain name dispute resolution policy - Brazilian
Trademark - U.S. Trademark - Identical - Confusingly similar - Bad faith
registration - Bad faith use - Respondent registered many domain names
corresponding to the trademarks of many local companies - Dead Page -
Pointer sites.
Complainant is the registered holder of the Brazilian and U.S trademark
GLOBOPAR, and used the mark in relation to the telecommunications industry.
Respondent claimed it created GLOBOPAR.com for the non-commercial goal
of spreading awareness of ecological problems. The name of the site stands
for "GLOBAL AMBIENT RIVER PROTECTION" (Globo Proteção Ambiental
dos Rios). The site is a dead page, i.e. without active link.
Respondent had registered the domain names for several well-known Brazilian
companies. Respondent did not offer the domain name for sale.
Held, Name Transferred to Complainant.
That Respondent had to register the domain name under ".com" because
in Brazil Respondent would need to open a business in order to make the
registration under ".com.br" with a high cost procedure is not a valid
reason since Respondent is already a registered business organization.
The domain name is identical to Complainants Trademark. Respondents
claim that it created the site for awareness purposes was not supported
by visits to the site. Further, other sites which Respondent claimed
were a part of the same project were either inactive or pointer sites.
Respondent failed to show it had legitimate interests in the domain name.
The fact that almost all the domain names registered by Respondent
or the Administrative Contact for these domains are inactive and redirected
to a site apparently dedicated to the commerce of domain names forced the
Panelist to consider that there exist circumstances indicating that Respondent
had registered the domain name primarily for the purpose of selling, renting
or otherwise transferring the domain name registration to the Complainant
or to a Complainant's competitor for valuable consideration.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decisions Referred to
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Cases Referred to
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Santos, Panelist: -
1. The Parties
The Complainant is Globo Comunicações e Participações
S.A., a company based in Rio de Janeiro, Brazil, with its principal place
of businesslocated at Avenida Afrânio de Melo Franco, 135, Rio de
Janeiro - RJ, Brazil (the "Complainant"). Respondent is Artmidia Comunicação
Visual Criação e Arte Ltda., with its place of business located
at Rua Rocha Pita 173, Pompéia, Belo Horizonte - Minas Gerais, 30120-470,
Brazil, (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is "globopar.com". The Registrar is Network
Solutions, Inc. NSI (the "REGISTRAR"), 505 Huntmar Park Drive, Herndon,
VA 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Globo Comunicações e Participações
S.A.. on June 15, 2000, by email and on June 19, 2000, in hardcopy.
The Complainant made the required fee payment, as informed in item
31. -Communications - of the Complaint.
On June 20, 2000, the Center acknowledge receipt of the Complaint and
sent to the REGISTRAR, a request for verification of registration data
that was answered in June 25, 2000, when the REGISTRAR confirmed, inter
alia, that the domain name in dispute was registered through the REGISTRAR,
that the "current registrant" is the Respondent, and that the domain name
is in "Active" status.
On June 30, 2000, the Center verified that the Complaint satisfies
the formal requirements of the ICANN Uniform Domain Name Dispute Resolution
Policy (the "Policy"), the Rules, and the Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the "Rules"), by running the Formal
Requirements Compliance Checklist.
On June 30, 2000, the Center notified the Respondent under Paragraph
2(a) of the Rules together with copies of the Complaint.
On July 31, 2000, the Center sent to the parties the Notification of
Respondent Default, considering that the Respondent failed to send a Response
to the Complainant within the prescribed time limit.
On August 4, 2000, the Center received a Respondents Response.
On August 4, 2000, the Center sent e-mail to the Respondent informing
that the Panelist should decide about the acceptance of the response.
On August 31, 2000, the Center appointed Mr. José Pio Tamassia
Santos as the single member of the Administrative Panel (the "Panelist"),
after receiving his completed and signed Statement of Acceptance and Declaration
of Impartiality and Independence, and, on the same date, notified the parties
of this appointment.
On September 5, 2000, this Panelist received, via courier, a complete
copy of the Complaint and the corresponding enclosures.
4. Factual Background
The Complainant is Globo Comunicações e Participações
S.A. - Globopar, a company based in Rio de Janeiro, Brazil, owner of TV
Globos television production facilities and a holding company for a number
of subsidiaries and associated companies involved in pay television (including
a leading cable/satellite television program producer and a cable/satellite
distribution system), publishing, telecommunications (including a Band-B
cellular communications service provider, a leading paging systems operator
and a satellite data transfer provider) and real estate.
The trademark upon which the Complaint is based is GLOBOPAR. The Complainant
attached copies proving that owns the Brazilian Trademark Registration
N° 816 297 428 for GLOBOPAR, in class 41, filed on August 1, 1991 and
registered on May 4, 1993 for entertainment services.
Complainant also owns the US trademark application n° 75/628,234
for GLOBOPAR, in classes 38 and 41, filed with the United States Patent
and Trademark Office on January 26, 1999.
The Complainant affirms that this registered mark GLOBOPAR has been
used in Brazil and other countries for more than 27 years in numerous communications
media, and that has developed substantial goodwill and name and brand recognition
in its GLOBOPAR mark, based on its long and extensive use of GLOBOPAR mark.
Complainant also utilizes its GLOBOPAR mark on Complainants Brazilian
web site, located at "globopar.com.br". Copies of certain pages from Complainants
Internet web site utilizing its GLOBOPAR mark were attached to the Complaint.
5. Parties' Contentions
Complainant contends that:
(1) The domain name "globopar.com" is identical, and therefore confusingly
similar to Complainants GLOBOPAR mark, in the following manners:
(a) Is identical, and therefore confusingly similar, in appearance,
pronunciation and sound to Complainants GLOBOPAR mark.
(b) Incorporates fully Complainants GLOBOPAR mark being the only difference
between the "globopar.com" domain name and Complainants GLOBOPAR mark,
the domain name addition of ".com".
(c) Has suggestions, connotations, and commercial impressions associated
with Complainant and Complainants expertise relating to Complainants
television and entertainment products and services.
(2) Respondent has no rights or legitimate interests in respect of
the "globopar.com" domain name, because of the following facts:
(a) Respondents use of the "globopar.com" domain name is not in connection
with a bona fide offering of goods or services.
(b) Respondent is not commonly known or identified by the name "GLOBOPAR".
(c) Respondent does not operate a business or other organization commonly
known as "GLOBOPAR" nor offers any goods or services under the GLOBOPAR
mark.
(d) Respondent has not acquired trademark or service mark rights for
the GLOBOPAR mark in Brazil.
(e) Respondent is not making a legitimate noncommercial or fair use
of the domain name.
(f) Respondent is not a licensee of Complainant, nor is the Respondent
otherwise authorized by Complainant to use Complainants GLOBOPAR mark
or to apply for or use any domain name incorporating the GLOBOPAR mark.
(3) The "globopar.com" domain name has been registered in bad faith,
because:
(a) Respondent does not conduct any legitimate commercial or noncommercial
business under the GLOBOPAR mark.
(b) The Respondent has registered the "globopar.com" domain name for
the purpose of selling or renting or otherwise transferring the domain
name registration to Complainant or to a competitor of Complainant for
valuable consideration in excess of Respondents documented out-of-pocket
costs directly related to the domain name.
(c) The Respondent has registered the "globopar.com" domain name in
order to prevent Complainant from reflecting its mark in corresponding
domain name unless Complainant pays to purchase or rent the domain name
from the Respondent.
(d) By registering the "globopar.com" domain name, Respondent is diverting
consumers away from the official site of Complainant and making it difficult
for Complainants customers and the general public to locate Complainants
official web site, thereby disrupting Complainants business.
(e) By registering the "globopar.com" domain name, Respondent is giving
the impression that Complainant does not have a web site.
(f) If Respondent sells the "globopar.com" domain name to a competitor
of Complainant, that competitor of Complainant could likewise use this
domain name to disrupt the business of Complainant and cause a substantial
likelihood of confusion and substantial actual confusion.
(4) Respondents use of the "globopar.com" domain name is diluting
and weakening the unique and distinctive significance of Complainants
GLOBOPAR mark.
(5) Respondents use of domain names identical to Complainants GLOBOPAR
mark has caused serious and irreparable injury and damage to Complainant
and to the goodwill associated with Complainant and its GLOBOPAR mark.
(6) Respondents conduct is in violation of Brazilian trademark and
unfair competition law.
Respondent contends that:
(1) It has never received any Notification of Commencement of Administrative
Proceeding setting a specified date for the submission of a Response to
the Complaint, nor even the "Notification of Respondent Default".
(2) Considering that it has never received a copy of the statements
and allegations in the Complaint, there was no way to answer them. The
Respondent would only describe the reasons why it has the domain name disputed.
(3) It created several sites to discuss and spread his ideas about
several different Brazilian problems, giving as examples "brasilebrazil.com"
and "aldeiaglobal.com". These sites are used to show the Brazilian culture,
with several poetries, song lyrics, paintings and all kinds of pictures
of the Brazilian hand made art stuff. Also "globosat.com" and "globosat.net"
(stands for transgenic aliments global service) are used as a weapon against
the sale of transgenic aliments to the starving and non-educated majority
of the Brazilian population, without the warnings that have to be done
about them.
(4) "globopar.com" was created with a non-commercial goal by the Respondent.
The name of the site stands for "GLOBAL AMBIENT RIVER PROTECTION" (Globo
Proteção Ambiental dos Rios).
(5) The Respondent created also three other sites to make the non-commercial
ecological projet viable: "sosh2o.com", "projetoagua.com" and "sosagua.com".
(6) The site was registered under ".com" because to register it under
".com.br" the Respondent would need to open a business what should represent
a high cost procedure.
(7) The site has links to newspapers where there are discussions about
ecological problems and the latest news considering the Brazilian Consumers
Act.
(8) The domain name was not created to be sold or rent to somebody
else, and that the Respondent never contacted the Complainant to offer
any business about the object of the Complaint.
It makes a few political considerations in reference to the Complainant,
being these considerations not pertinent to the matter at issue.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that
the Complainant shall prove in order to succeed in an administrative proceeding
for abusive domain name registration. We will examine each one of these
elements in the following points:
"4.a.(i) Identity or Confusing Similarity"
Since the particle "com" is an attribute of the gTLD, common to all
the domain names under this TLD, it is beyond question that the trademark
GLOBOPAR is identical to the domain name "globopar.com". Therefore, the
requirement of Paragraph 4.a.(i) is fulfilled.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the
Domain Name"
"GLOBOPAR" is not part of the name of the entity registering the "globopar.com"
domain name.
The Respondent has presented his arguments to justify his rights and
legitimate his interest in respect to the use of the phoneme "GLOBOPAR"
as a domain name.
Though this response was filed after the deadline stated in the Notification
of Complaint and Commencement of Administrative Proceeding, this Panelist
accepts examining the presented arguments and considerations.
When visiting the site "globopar.com", this Panelist found a single
nicely produced but dead page, without any active link, except for a link
to the e-mail address of the Respondent. Therefore, was not verified the
allegation of the Respondent about "links to newspapers, where there are
discussions about ecological problems and the latest news considering the
Brazilian Consumers Act".
Also a visit to the other three sites informed by the Respondent as
having been created to make the ecological non-commercial project viable,
namely "sosagua.com", "sosh2o.com" and "projetoagua.com", merely redirected
the visitor to the site "artmidia.com".
A visit to the informed site "brasilebrazil.com" used to "show the
Brazilian culture, with several poetries, song lyrics, paintings and all
kinds of pictures of the Brazilian hand made art stuff", just returned
the well known message: "Host name lookup for 'www.brasilebrazil.com' failed".
On this basis, this Panelist concludes that the Respondent has not
any legitimate interest in the domain name "globopar.com". Therefore, the
requirement of Paragraph 4.a.(ii) is fulfilled.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad
Faith"
The Respondent affirms that he registered the domain name under ".com"
because in Brazil the Respondent would need to open a business in order
to make the registration under ".com.br" with a high cost procedure. This
is not a valid reason since the Respondent is already a registered business
organization, and the costs for registration of domain names are about
the same as in U.S.A.
The Complainant attached a list of about 100 domain names registered
by the Respondent and by the Administrative and Billing Contact for the
domain at issue, corresponding to well-known marks in Brazil. The Panelist
verified this, and when trying to access most of them, was redirected to
a page informing that the URL was under the administration of Domains Bank,
"domainsbank.com", a domain name belonging also to the Respondent.
Among the domains verified one can find "alpargatas.com", "walita.com",
"oxiteno.com", "uniao.com", "santista.com", "copene.com", all of them large
Brazilian organizations and well-known trademarks.
The site of Domains Bank was at the moment of the visits, "under maintenance"
and its use could not be verified. However, the name has a connotation
related with the commerce of domain names.
The Complainant did not demonstrate having received any offer from
the Respondent for selling the domain names at issue.
However, the fact that almost all the domain names registered by the
Respondent or the Administrative Contact for these domains are inactive
and redirected to a site apparently dedicated to the commerce of domain
names, force this Panelist to consider that, in this case, exist "circumstances
indicating that the Respondent has registered the domain name primarily
for the purpose of selling, renting or otherwise transferring the domain
name registration to the Complainant or to a Complainant's competitor for
valuable consideration".
Because of this, this Panelist arrives to the conclusion that the Respondent
has registered and used the "globopar.com" domain name with bad faith.
Therefore, the requirement of Paragraph 4.a.(iii) is fulfilled.
Registrar and ICANN Policies
As confirmed by Network Solutions in response to the Centers request,
Network Solutions Inc., NSI, is the Registrar of the domain name "globopar.com"
and Network Solutions4.0 Service Agreement is in effect.
As the basis for the application of the Policy and the Rules are the
contractual obligations accepted by the domain name user when applying
for it registration, this Panelist went to the REGISTRAR "Service Agreement"
(http://www.networksolutions.com/legal/service-agreement.html) to check
the applicable provisions.
In item 8 of this "Service Agreement", - Domain Name Dispute Policy
-, is informed that the current version of the dispute policy may be found
at (http://www.netsolutions.com/legal/dispute-policy.html).
A visit to this location resulted in a redirection to (http://www.domainmagistrate.com/dispute-policy.html)
where can be found the Uniform Domain Name Dispute Resolution Policy (the
"Policy") adopted by the Internet Corporation for Assigned Names and Numbers
("ICANN").
In consequence, this Panelist adopted the present Decision on the basis
of the Policy and the Rules approved by the Internet Corporation for Assigned
Names and Numbers ("ICANN"), that are in force for NSI clients in the present
case due to the terms and conditions accepted by the Respondent having
consented to the REGISTRARs "Registration Agreement".
7. Decision
Complainant has proved that the domain name is identical to its trademark,
that Respondent has no rights or legitimate interest in the domain name,
and that Respondent registered and used the domain name in bad faith.
Therefore, according to Paragraph 4.i of the Policy, the Panel requires
that the registration of the domain name "globopar.com" be transferred
to the Complainant.