WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Empresa Brasileira de Telecomunicações S.A. - Embratel v. Gustavo Teles
Case No. D2000-0155
1. The Parties
Empresa Brasileira de Telecomunicações S.A. –
Avenida Presidente Vargas, 1638
Rio de Janeiro, Brazil
Mark S. VanderBroek, Esq.
Jeri N. Sute, Esq.
Troutman Sanders LLP
600 Peachtree Street, Suite 5200
Atlanta, Georgia, USA 30308
Mr. Gustavo Teles
Rua Frei Caneca, 122 Bloco B1
Florianopolis, SC 88025, Brazil
Alexandre Machado Navarro Stotz – OAB/SC 13.304
Harger, Porath, Sell & Stotz Advogados Associados – OAB/SC 389/99.
Rua Irmão Joaquim, 113 – Centro, Florianópolis – Santa Catarina
Brasil – CEP 88020-620
2. The Domain Name and Registrar
The disputed domain name is: <embratel.net>. The registrar for this domain name is Network Solutions Incorporated (NSI), Herndon, Virginia, USA.
3. Procedural History
This domain name dispute is to be decided under the International Corporation for Assigned Names and Numbers (ICANN) Policy and Rules (the Policy and the Rules) and the Supplemental Rules of the World Intellectual Property Organization’s Arbitration and Mediation Center (the Center).
The Center received the Complaint of Empresa Brasileira de Telecomunicações S.A. – Embratel on March 13, 2000, by e-mail and on Marh 16, 2000, in hardcopy. The Complainant paid the required fee.
On March 21, 2000, the Center received the response of the request that have been made to the registrar NSI, concerning the verification of registration data, when the registrar confirmed, inter alia, that it is the registrar of the domain name in dispute, that <embratel.net> is registered in the Respondent's name and it is in "Active" status.
On March 22, 2000, having verified that the Complaint satisfies the formal requirements, the Center sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
On April 10, 2000, the Respondent sent by e-mail a request for extension of the period for the filing of a response. On April 11, 2000, the Center sent an Acknowledgement of Receipt to the Complainant emphasizing that before granting the required extension of time, the Center would request the Complainant’s confirmation.
On April 13, 2000, the Center received the e-mail informing that an extension was not acceptable by the Complainant. On the same date, the Center sent to the parties the acknowledgment receipt of the response by the Respondent, considering the first e-mail as a response and proceeding to appoint the Administrative Panel.
On May 15, 2000, the Center appointed Mr. Luiz Edgard Montaury Pimenta as the single member of the Administrative Panel (the "Panelist") and notified the parties of this appointment.
This Decision is due by May 29, 2000.
4. Factual Background
4.1 The Trademark
The complaint is based on ownership of the trademark EMBRATEL, consisting in the beginning letters of the Complainant trade name: Empresa Brasileira de Telecomunicações.
According to document filed as Annex D and search at the data base system of Brazilian Patent and Trademark Office, the Complainant is the owner of the registration No. 004504143 for the trademark EMBRATEL filed on April, 9 1968 and renewed for ten years on June 6,1992.
The above mentioned registration has special protection under the laws of Brazil, since it has achieved "notorious" status, according to certification of the "Declaration of Notoriety" issued by the Brazilian Trademark Office attached, which protects the mark in all classes of goods and services.
The Complainant affirms that it has continuously and extensively used and promoted its EMBRATEL trademark since 1965, including the identification of its web site <embratel.com.br>.
In order to support the use and notoriety of its trademark, the Complainant alleges that same distinguishes domestic and international services in the field of long distance telephone calls, data communication, teleinformatic services, text communication, broadcasting of radio and television signals and mobile communication, as well as the employment of more than 9,800 employees. The Complainant also declares that has the largest telecommunications network in Latin America and revenues on the range of U$ 3 billions during the 1999 fiscal year.
The Complainant also alleges that it has an EMBRATEL trademark registration granted in France as well as applications for the registration of the same trademark in eleven countries.
4.2 The Complaint
The Complainant submitted the complaint regarding the domain name <embratel.net> based on the following:
a) The domain name <embratel.net> is identical, and therefore confusingly similar to the trademark EMBRATEL, whereas:
i) There is a similitude, in appearance, pronunciation and sound to the EMBRATEL mark, so the addition of ".net" to the domain name is a necessary element of the domain and not a voluntary chosen addition;
ii) The use of the word "embratel" provoke the suggestion, connotation and commercial impression of the Complainant’s reputation, since that the uniqueness of EMBRATEL mark is demonstrated by the fact that a trademark search of Brazil’s trademark registry disclosed only Complainant’s trademark.
b) Respondent has no legitimate interest in the contested domain name, whereas:
i) The domain name is not being utilized in connection with a bona fine offering of goods and services;
ii) The Respondent, as an individual, is not identified by the name "Embratel";
iii) The Respondent does not operate a business known as "Embratel" nor offer goods or services under the "Embratel" name or trademark.;
iv) The Respondent has not rights of any class on the trademark EMBRATEL in Brazil;
v) The Respondent is not making a legitimate noncommercial or fair use of the domain name;
vi) The Respondent has no authorization of the Complainant to use its trademark EMBRATEL;
vii) The word "Embratel" is an invented word formed by the initials of the words composing the Complainant's trade name.
c) The <embratel.net> domain name has been registered and is being used in bad faith, whereas:
i) Respondent does not conduct any legitimate business under the EMBRATEL mark;
ii) Respondent have been contacted by phone by the Complainant and stated that the registered <embratel.net> domain name in order to sell it to Complainant;
iii) Respondent has registered the above domain name in order to prevent Complainant from reflecting its mark, unless Complainants pays to purchase the domain name from Respondent;
iv) The registration of the <embratel.net> domain name by the Respondent divert consumers from the Complainant site and difficult the public to locate this site;
v) The registration of the <embratel.net> domain name by the Respondent has created a likelihood of confusion as to his affiliation with Complainant and Complainant’s EMBRATEL mark, since that constitutes a false representation of legitimate link between the parties;
vi) The use of <embratel.net> domain name by a competing company acquiring it or by the Respondent, could disrupt Complainant's business and cause substantial confusion among the public trying to reach the web site of the Complainant;
vii) As per the doctrine in Telstra Corporation Ltd. V. Nuclear Marchmallows case, even a passive holding of a domain name amounts to "acting in bad faith".
d) Maintaining a web site that does not work, the Respondent tarnish the prestige of the trademark EMBRATEL.
e) The use of identical and confusingly similar domain name has caused, and if not altered, will continue to cause serious damages to Complainant and to the goodwill associated with the Complainant and its EMBRATEL mark.
f) As the Respondent is domiciled in Brazil, the legislation of this country should be considered to judge the conduct of the Respondent at the light of the Policy. The Complainant understands that the conduct of the Respondent is in violation of Brazilian trademark law.
4.3 The Response
The Respondent required an extension of the period of time for the filing of the response to the Center. However, the Center denied the requirement and accepts the requirement as a response.
5. Discussion and Findings
According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must proof each of the following circumstances:
i) The domain name is identical or confusingly similar to the EMBRATEL trademark; and
ii) Gustavo Telles, 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 in bad faith.
The policy furthermore describes illustrative circumstances, without limitation, which form the basis of the above-mentioned proof.
5.1 Identity and confusing similarity
It is clear that the domain name <embratel.net> is identical to the trademark registered and used by Complainant.
The additional particle ".net" is not sufficient to distinguish the domain name from the EMBRATEL trademark, since ".net" is a common particle in domain names.
5.2 Rights or legitimate interests
Inasmuch the fact that the Respondent has not given indication whatsoever that they have any right or legitimate interest in the sign EMBRATEL, it is also clear that the Respondent has no rights or legitimate interests in respect of the domain name. Both parties are established in Brazil and the trademark search at the database system of the Brazilian Patent and Trademark Office did not disclose any similar mark to EMBRATEL in the name of a different company or individual other than the Complainant.
Moreover, the EMBRATEL mark has the status of "notorious" mark according to the Brazilian trademark law, that protects the mark in all classes of goods and services.
The Complainant, Empresa Brasileira de Telecomunicações S.A.- Embratel, has the largest telecommunications network in Brazil and a goodwill in the global telecommunication market.
On the other hand, the Respondent does not have any enterprise or business known by EMBRATEL, neither any trademark containing this word and the
domain name has never being used for an Internet service nor for an active web site.
5.3 Bad faith
The Panelist is of the opinion that the registration of the domain name <embratel.net> took place in bad faith. As circumstances supporting this conclusion, it should be mentioned first of all that no legitimate interest or use in or with respect to the sign EMBRATEL could be established on the side of the Respondent.
Secondly, Respondent was not using the disputed domain name and only uses it to block the trademark owner to use it.
Respondent’s registration of the disputed domain name with full knowledge that the name belonged to Complainant infringed the Registrar Service Agreement in §17 (ii), that states:
"to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain will directly or indirectly infringe the legal rights of a third party".
The evidence on Respondent’s attempts to sell the disputed domain name to Complainant for more than he paid for it is unclear, however, in view of the already discussed indicia of bad faith, this practice is hereby recognized.
In resume, the Panelist finds that the Respondent registered the domain name <embratel.net> in bad faith.
In light of the foregoing, the Panelist decides that the domain name registered by Mr. Gustavo Telles (Respondent) is identical to the trademark EMBRATEL of Empresa Brasileira de Telecomunicações S.A.- Embratel, that Mr. Gustavo Telles has no legitimate interests in respect of this domain name, and that the domain name in issue has been registered in bad faith.
Accordingly, this Panelist requires that the registration of the domain name <embratel.net> be transferred to Empresa Brasileira de Telecomunicações S.A.- Embratel.
Luiz Edgard Montaury Pimenta
Dated: May 29, 2000