WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Empresa Brasileira de Telecomunicações S.A. Embratel v. Kevin McCarthy

Case No. D2000-0164

 

1. The Parties

The Complainant is Empresa Brasileira de Telecomunicações S.A. - Embratel, a company based in Rio de Janeiro, Brazil, with its principal place of business located at Avenida Presidente Vargas 1638, Rio de Janeiro, Brasil. Respondent is Mr. Kevin G.McCarthy, who resides at 101 Ocean Lane Drive #3014, Key Biscayne, Florida, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <embratel.com>. The registrar is Network Solutions, Inc. ("NSI") of Herndon, Virginia, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Empresa Brasileira de Telecomunicações S.A. - Embratel, on March 13, 2000, by email and on March 16, 2000, in hardcopy.

The Complainant made the required fee payment.

On March 20, 2000, the Center sent to the registrar NSI, a request for verification of registration data that was answered in March 21, 2000, when the registrar confirmed, inter alia, that it is the registrar of the domain name in dispute, registered under the Respondent's name and in "Active" status.

Having 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"), the Center on March 22, 2000, sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.

On April 6, 2000, the Center received the Respondent's Response by e-mail, which the Center acknowledged to the parties on April 7, 2000. A hardcopy of the Response was received by the Center on April 10, 2000.

On April 13, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Mill as the single member of the Administrative Panel (the "Panelist"). On the same date, the Center notified the parties of this appointment.

On April 20, 2000, the Panelist received via courier a complete copy of the Complaint, the Response, and the corresponding enclosures.

On May 2, 2000, the Panelist notified the Center that the decision will be issued at May 16, 2000.

 

4. Factual Background

The trademark upon which the Complaint is based is EMBRATEL. The word "embratel" is an acronym of the Complainant corporate name: EMpresa BRAsileira de TELecomunicações S.A.

The Complainant said that it first registered the trademark in Brazil in the year 1968 and attach a copy of it renewal for ten years in June 6, 1992. The Complainant also allege the condition of "well known" trademark of EMBRATEL, attaching a copy of certification of the "Declaration of Notoriety" issued by the Brazilian Trademark Office.

The EMBRATEL trademark cover communication, publicity and advertising services and the Complainant assert that it has continuously and extensively used and promoted it EMBRATEL trademark since 1965, including to identify it web site with the URL <embratel.com.br>. To support the use and notoriety of its trademark, the Complainant assert that EMBRATEL distinguish domestic Brazilian long distance telephonic services as soon as international communications of voice, data, radio an TV signals, and also mobile telephonic services. The Complainant declares to have the largest telecommunications network in Latin America and revenues on the range of u$ 3 billions during the 1999 fiscal year.

On December 22, 1999, Complainant filed application Serial No. 75/881332 covering the trademark EMBRATEL, for telecommunication services, with the United States Patent and Trademark Office. The Complainant affirms that it has an EMBRATEL trademark registration granted in France as well as applications for the registration of the same trademark in other ten countries.

As per the documentation attached by the Respondent, on December 8, 1999, the registrar NSI opened a record listing Respondent as the registrant of the domain name <embratel.com>. The Respondent has not at that time (nor at the present) trademarks or tradenames including the word "embratel". The Respondent was never related with a private, social or commercial activity identified with the word "embratel" or with any other word or phrase similar to or including "embratel". Beside alleging that he acted in the past as an "small I.S.P." the Respondent does not give to the Panel any notice about his present or past profession or activities.

The respondent affirms that he registered the domain name <embratel.com> whit the intent of possible future use and that he selected it "because it was a short, unique and catchy name with a telecommunications connotation".

The Respondent paid to the registrar an additional fee to "reserve" the domain name. Because of this, from December 8, 1999, up to date the use of the <embratel.com> domain name give access to a general "under construction" web page provided by the registrar.

The Claimant declares that the Respondent does not answer the voice messages regarding the <embratel.com> domain name recorded in the Respondent's answering machine. The Respondent denies to have received such voice messages.

The Claimant provides copy of a print of the report by NSI "Whois" about the domain names which titular identifies himself as "Kevin McCarty". There are 50 domain names listed in this report. The Respondent affirms that "Kevin McCarty" is a very common name in USA, that any of the addresses, phone numbers or e-mail addresses correspond to the Respondent, and that the two domain names that the Respondent acknowledge to have (<embratel.com> and <bitwave.com>) are not included in the Whois report.

 

5. Parties' Contentions

5. 1 Complainant contends that:

a) The domain name <embratel.com> is identical, and therefore confusingly similar to the trademark EMBRATEL, because:

i) The absolute similitude between the word "embratel" in the trademark and in the domain name.

ii) The use of the word "embratel" provoke the suggestion, connotation and commercial impression of the Claimant's reputation in the telecommunication market.

b) Respondent has no legitimate interest in the contested domain name, because:

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 USA.

v) The Respondent is not making a noncommercial or fair use of the domain name.

vi) The Respondent has not 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 corporate name that anyone should use as identification without aim to suggest a connection with this corporation.

c) The <embratel.com> domain name has been registered and is being used in bad faith, because:

i) Respondent does not conduct any legitimate business under EMBRATEL trademark.

ii) The reservation of the <embratel.com> domain name impede the owner of the trademark EMBRATEL to use it as domain name in the gTDL ".com" and the Respondent has engaged in a pattern of this obstructive conduct.

iii) The reservation of the <embratel.com> domain name by the Respondent divert consumers from the Complainant site and difficult the public to locate this site.

iv) The reservation of the <embratel.com> domain name by the Respondent constitutes a false representation of legitimate link between the parties.

v) Respondent has failed to respond to Complainant phone calls regarding the <embratel.com> domain name.

vi) The use of <embratel.com> 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) As the Respondent is domiciled in USA, the legislation of this country should be considered to judge the conduct of the Respondent at the light of the Policy. The Complainant understand as specially important the application section 1125(d) of the Anticybersquatting Consumer Protection Act.

5.2 Respondent contends that:

a) The Complainant provides services almost exclusively in Brazil and consequently it is not famous or well known outside Brazil.

b) The Complainant has not "international trademarks".

c) Not registering before the <embratel.com> domain name, the Complainant committed an act of extreme negligence.

d) The domain name was registered with the intent of possible future use and was selected because it is a short, unique and catchy name with a telecommunications connotation.

e) He never used the domain name and therefore <embratel.com> is not being used in bad faith.

f) The precedent of the administrative panel decision in Case No. D2000-003 Telestra Corporation Limited v. Nuclear Marshmallows is not applicable to this case because:

i) The Respondent never received the voice message that the Complainant affirms having recorded and he is quite certain that such message was never registered by the Complainant.

ii) The NSI Whois report is simply a list of persons named "Kevin McCarthy" having registered domain names and not a list of the domain names registered by the Respondent, not being the Respondent included in this list.

iii) The Respondent has never been involved in "cyber squatting" and have only other domain name registered at his name.

 

6. Discussion and Findings

The Policy institute in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of this elements in the following points.

4.a.(i) Identity or Confusing Similarity

Being the particle "com" an attribute of the gTDL common to all the domain names under this TDL, there are not possibility to discuss that the trademark EMBRATEL is identical to the domain name <Embratel.com>. Therefore, the requirement of Paragraph 4.a.(i) is met.

4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name

"Embratel" is not a generic term, not a common word, not even a word possible to find in the English Dictionary or in a Dictionary of any other language nor a fantasy composition between two or more words included in a dictionary 1.

The trademark EMBRATEL is distinctive and has not acquired secondary meaning.

The English Dictionary 2 shows a brief list of word beginning by "embra":

- Embrace;
- Embraceor;
- Embracery;
- Embranchment;
- Ebrangle; and
- Embrasure.

None of these words have any relationship with telecommunications. The same occurs with the combination of the phoneme "embr" with the vocals "e", "i", "o" and "u".

The sole and only time that the Respondent used the phoneme "embratel" was when it registered it as domain name. As per the evidence, Mr. McCarthy do not have any enterprise or business known with this denomination, nor any trademark containing this word, nor any other link of any kind with the phoneme. The domain name was never used for an Internet service nor for an active web site.

On the other hand, EMBRATEL has the condition of well known mark according section 67 of the Brazilian Trademark Act # 5772 and fulfills the requirements of Article 6bis, section (1) of Paris Convention.

It is sufficiently known that the phoneme "embra" was vastly used from the years 60 of the last century to identify the Brazilian state owned companies, as for example:

· EMBRATUR - Instituto Brasileiro de Turismo - The official tourist service of Brasil - www.embratur.gov.br;

· EMBRAER - Empresa Brasileira de Aeronutica - The manufacturer of Brazilian planes as the well known "Tucano" - www.embraer.com; and

· EMBRAPA - Empresa Brasileira de Pesquisa Agropecuaria - The official agency for agricultural researches - www.embrapa.br.

On this basis, the Panelist concluded that the respondent have not any legitimate interest in the domain name <embratel.com>. Therefore, the requirement of Paragraph a.(ii) is met.

4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith

The key element in the present case (as in many others) is the existence or non existence of bad faith at the moment of the registration and then during the use of the domain name.

As in 4.b., the Policy indicate some circumstances that shall constitute evidence of the registration and use of a domain name in bad faith, we will enter first in this analysis:

i) I do not find evidence showing that Respondent registered the domain name for the purpose of transferring the registration to the Complainant or to a Complainant's competitor for a price.

ii) I do not find evidence about a pattern of conduct of the Respondent registering domain names with the purpose of preventing the owner of a trademark from use it as domain name.

iii) The Respondent is not a competitor in the telecommunications market.

iv) The Respondent is doing a passive holding of the domain name and therefore it use of the domain name do not produce commercial gain nor confusion of the Internet users.

But discarded the existence of the aforementioned circumstances, the good faith / bad faith analysis shall continue as long as these circumstances constitute "particular" evidences of a bad faith behavior but in any way a limit for the Panel to examine other circumstances.

As clearly states 17. (Representations and Warranties) of NIS Service Agreement, the registrant agrees and warrants that: "(ii) 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 name will directly or indirectly infringe the legal rights of a third party". 3 To appreciate if a domain name "has been registered and is being used in bad faith" it is necessary to take into account this provision of the Service Agreement, as soon as any deliberate infringement of the "legal rights of a third party" as consequence of the manner in which the registrant intend to use the domain name would automatically deprive of good faith to the registration and posterior use of this domain name.

The Panelist finds that at the time of choosing "embratel" as domain name because "it was a short, unique and catchy name with telecommunications connotation", the Respondent could not have ignored that he was infringing the legal rights of the Complainant as owner of the well known trademark EMBRATEL. The Panelist arrive to such conclusion because if the word "embratel" evoke to the public something related with the telecommunications is only due to being the corporate name of an important provider of long distance services and also a well known trademark distinguishing long distance telephonic services. As was appraised before, the phoneme "embratel" is not a word of any language and -as the Respondent do not affirm that is a fantasy phoneme that he invented and used for a legitimate non commercial reason- the obligatory conclusion is that the Respondent choose "embratel" as domain name with the purpose to allude to Empresa Brasileira de Telecomunicações S.A. - Embratel and/or to EMBRATEL trademark 4.

To confirm this conclusion, the Panelist recur to the examination of the presence or absence of the circumstances listed in 4.c. of the Policy at the light of the circumstances alleged by the Respondent in the response:

i) The Respondent never used -nor make preparations or demonstrable plans to use- the domain name in connection with an offering of goods or services.

ii) The Respondent nor the Respondent business have been known by the domain name.

iii) The Respondent never make a noncommercial or fair use of the domain name.

iv) The Respondent does not disclose in the Response to which activity is devoted at the present. He not even mentioned a single destination (commercial or non commercial) that he could eventually give to a site identified by the disputed domain name. The Respondent is an individual that in some period in the past was "a small Internet Service Provider" and that does not affirm to be linked at the present in any way with the telecommunications market. The Respondent does not own any venture that can take bona fide profit of the domain name in dispute, neither has built a web site identified with this domain name in spite of the five months passed from the domain name registration data up to the present. In addition, the Respondent does not deny that he have knowledge about the existence of EMBRATEL trademark nor that this denomination is actively used by the Complainant in its telecommunication activities.

In absence of contrary evidence, the Panelist finds that the Respondent choose the word "embratel" as domain name for the sole reason of being a well known trademark in the global telecommunication market.

The requirements of paragraph 4(a)(iii) are cumulative, being required bad faith at the registration time and posterior use of the domain name with the same bad faith. The Panelist find that both circumstances are present in this case because:

· For the aforementioned reasons, only acting with bad faith the Respondent at the registration' time could have selected as domain name the fantasy word "embratel" invented many years ago by the Brazilian government to denominate the Empresa Brasileira de Telecomunicações S.A. - Embratel.

· The "passive holding" of the domain name <embratel.com> with absolute knowledge of the damages that such conduct causes to the legitimate owner of EMBRATEL trademark constitutes a continuous "use" with bad faith of the domain name.

Because of this, the conclusion that the Respondent reserved this domain name with bad faith, only to use it to impede the trademark owner its use or to make unfair competition, is obligatory 5. Therefore, the requirement of Paragraph 4.a.(iii) is met.

Repeated Registration of Identical Domain Names

The Respondent says that not registering earlier the domain name in the gTDL ".com" the Complainant acted with "extreme negligence". The Panelist can not agree. If to avoid abusive registrations each domain name user should register identical domain names in all the possible gTDL and ccTDL, an enormous quantity of I.P. numbers would be squandered and the Domain Names System subjected to an useless overload. This is not the way to encourage the right development of Internet.

In the Panelist opinion a "defensive" policy of domain name reservations its not a manifestation of "diligence" but a conduct contrary to the good uses and practices of the Net. For this reason it seems to be a conscientious conduct of the Complainant to first register and use the <embratel.com> domain name in the ccTDL ".br" and react against the abusive registration of the same name in the gTDL ".com" as soon this infringement was completed and noticed.

Applicable Legislation

The Complainant claim that "because the Respondent is domiciled in the United States, the laws of the United States may assist the Panel in determining that Respondent has violated the Policy". The Complainant also argue that the Respondent:

  • Infringe a service mark in violation of 15 U.S.C. 1125 (a).
  • Dilute a service mark in violation of 15 U.S.C. 1125 (c).
  • Incur in cyberpiracy in violation of 15 U.S.C. 1125 (d).
  • The Respondent does not answer these arguments.

    Notwithstanding the Panelist has decided the case taking in consideration only the Policy's principles, it can be remarked that the legislation of the Respondent domicile and the applicable international law principles confirms the decision 6. Without entering into an analysis that the present decision does not require, it can be remembered that the US Law applicable principles makes liable in a civil action those that with the bad faith intent to profit from the trademark of other register or use a domain name of identical wording, and that the applicable International Treaties extend the protection granted to well known trademark to the ones having the characteristics that the trademark involved in the case has 7.

    gTDL's and "International" Trademarks

    Repeatedly the Complainant refers to the dispute as one submitted to the US Law. Notwithstanding the venue of US Courts agreed by the Respondent, it is opportune to observe that the domain name in dispute correspond to a gTDL without linkage with any national territory, nor with any national legislation in particular. In consequence, the problem of the collision between:

    - the interest of a well known trademark owner about the respect to its exclusive faculties; and

    - the interest of the domain name registrant in being benefited for the application of the principle "first comes first serves";

    shall be analyzed at a global level. Taking into account the scope of the Complainant good will in the global telecommunication market, the Panelist adopted this global approach in the present decision.

    It must be also observed that the Respondent does not succeed when allude to "international trademarks". Any trademark could be considered "national" in this case, because as was remembered the domain name does not correspond to a ccTDL but to a gTDL, global (and in consequence international) by nature. Trademarks and well known trademarks of any country shall be considered on an equal footing with US trademarks in cases similar to the present, because the ".com" gTDL is not a internal division of the ccTDL ".us".

     

    7. Decision

    Claimant has proved that the domain name is identical to it 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 <embratel.com> be transferred to the Complainant.

     


     

    Antonio Mill
    Panelist

    Dated: May 15, 2000


    Footnotes:

    1. The nature of "fantasy" or "invented" word was considered an important element in previous cases related with abusive registration of domain names: "The Court finds that the Panavision marks are famous marks. Panavision owns the federal registration for the Panavision marks. The distinctiveness and fame of the "Panavision" marks are well established and undisputed. Neither mark can be found in the dictionary. The "Panavision" mark in particular has developed strong secondary meaning because of Panavision's long period of exclusive use of the mark and its status as a major supplier of photographic equipment". Panavision Int'l, L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996). (http://www.jmls.edu/cyber/cases/panavis2.html).

    2. Webster's Encyclopedic Unabridged Dictionary of the English Languaje, Gramercy Books, NY 1996.

    3. See ICANN Statement of Registrar Accreditation Policy, Art. III.J.7.g (March 4, 1999), at http://www.icann.org/policy_statement.html.

    4. In reaching this conclusion, the Panelist remembered the decision in the British case Marks & Spencer PLC and others v. One in a Million, where the Court said "The name marksandspencer could not have been chosen for any other reason than that it was associated with the well known retailing group. There is only one possible reason why anyone who was not part of the Marks & Spencer Plc group should wish to use such a domain address, and that is to pass himself off as part of that group or his products off as theirs" (High Court of Justice, Chancery Division). (http://www.nominet.org.uk/news/oiam-judgment.html).

    5. It is clear that if the Respondent would activate the domain name in the future will create a source of confusion for the Internet users those would be fatally attracted to the Respondent web site by a domain name identical to EMBRATEL trademark. These confusions shall be considered as unavoidable: "Although the sophisticated Internet user may discover, after reading the text of one of the links on defendant's home page, that she has not reached plaintiff's web site, some users may not be so immediately perspicacious. Because the sophistication of the user is no guarantee, here, that the consumer will not be confused, I find that this factor is of limited value in determining whether the consumer is likely to be confused". Planned Parenthood Federation of America, Inc., v. Richard Bucci, d/b/a Catholic Radio, 97 Civ. 0629 (KMW) United States District Court for the Southern District of New York 1997 U.S. Dist. LEXIS 3338. (http://www.cmcnyls.edu/public/USCases/Planned.HTM).

    6. "In applying the definition of abusive registration given above in the administrative procedure, the panel of decision-makers appointed in the procedure shall, to the extent necessary, make reference to the law or rules of law that it determines to be applicable in view of the circumstances of the case .. it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition". Final Report of the WIPO Internet Domain Name Process (# 176).

    7. See:

    · Paris Convention, Article 6bis, section (1):

    "The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith".

    · TRIP's Agreement. Article 16.2 and 16.3:

    "2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

    "3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use".