WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Green Card Transportes e Eventos Ltda.
Case No. D2000-0351
1. The Parties
1.1 Complainant: TV Globo Ltda., with a place of business at Rua Marquês de Sao Vicente, 30, Rio de Janeiro, Brazil, represented by Luis F Matos Jr. and Luis Fernando Matos of the Matos & Asociados law firm with offices at Rua 7 de Setembro, 99 6th Fl., Río de Janeiro, RJ RJ, - Brazil.
1.2.- Respondent: Green Card Transportes e Eventos Ltda., with a place of business at Rua Pedroso Alvarenga 831, Sao Paulo, SP 04531-011, Brazil.
2. The Domain Name and the Registrar
2.1. The subject of the complaint is the domain name < "REDEGLOBO.NET> ".
2.2- The registering entity is REGISTER.COM.
3. Procedural History
3.1 A complaint was submitted to the WIPO Arbitration and Mediation Center
(hereinafter called the Arbitration Center) on 28 April 28, 2000, in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called the "Uniform Policy" as adopted by ICANN on 24 October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.
3.2. The Complainant wrongly includes in the Exhibit B of the Complaint the "Service Agreement" of NSI notwithstanding identifying Register.com as the registrar of the domain name in conflict, a fact that is not in discussion.
As Register.com's "Registration Agreement" provides in its section 4 for the application of the "Uniform Domain Name Dispute Resolution Policy as Approved by ICANN on October 24, 1999, and implemented by Register.com, Inc. on December 1, 1999", the Panel has adopted the present DecisionResolution on the basis of such Policy without taking into account the error in the attached documentation. That one, that is irrelevant and was not impugned by the Respondent (Case N° D2000-0353 "redeglobo.com").
Copies of the complaint were submitted electronically to the Registrar and to the respondent, who replied to the complaint on 22 May 22, 2000.
3.3 The respondent requested that the dispute be resolved by a panel formed by three panelists selected after consulting with the parties as to their appointment. WIPO finally appointed a panel formed by Antonio Millé, Wolter W. Bettink and Luis H. de Larramendi, the latter acting as Presiding Panelist.
4. Factual Background
4.1 - TV Globo Ltda. is a company operating in the telecommunications field via television. It is present mainly in Brazil, the country of both the complainant and the respondent.
4.2. TV Globo Ltda. is proprietor of trademarks consisting of the word REDEGLOBO in Brazil, at the Community Trademark Office in Alicante, in Portugal, Paraguay, Argentina, Bolivia, Ecuador and Peru. It is likewise owner of GLOBO marks in Brazil, Paraguay, Argentina Uruguay, Chile, Bolivia, Ecuador, Colombia, Mexico, Canada, The Czech Republic, Slovakia and Russia.
4.3. The respondent admits to knowing of the existence of TV Globo Ltda.
4.4 The following facts must also be taken into account for purposes of these proceedings:
T- Those who log onto < "REDEGLOBO.NET> " are redirected to " < GGREATDOMAINS.COM> ".
- - The most relevant word element displayed on that page is
- In addition to the above domain name, the following phrases appear:
- BUY AND SELL DOMAINS NAMES, WEB SITES, AND INTERNET-BASED BUSINESSES USING THE INTERNET'S #1 RESELLER.
- T0 MAKE AND OFFER ON THIS DOMAIN NAME, PLEASE ENTER AN AMOUNT, BELOW (IN U.S. DOLLARS).
This is followed by a space for inserting the amount offered.
- THE INTERNET'S MARKETPLACE FOR DOMAIN NAMES AND WEBSITES.
- A WIPO Administrative Panel issued a decision on case D2000-0353, with the same complainant whereby the ownership of the "REDEGLOBO.COM" domain name was transferred to TV Globo Ltda.
5. Parties' Contentions
The complainant contends:
- that it is the most important television company in Brazil and one of the most important in the world, being present in over 130 countries.
t- that it is present publicly in the communications and television field through use of several trademarks, including the REDEGLOBO mark.
- that it also uses the REDEGLOBO mark as a domain name and it is the registrant of the "REDEGLOBO.COM.BR" domain name.
- that the word elements of its REDEGLOBO mark are identical to the "REDEGLOBO.NET" domain name, with the exception of the ".NET" element.
- that the respondent had no legitimate interest and no rights whatsoever in the domain name under debate; and
- that the respondent has registered and used the "REDEGLOBO.NET" domain name in bad faith.
The complainant petitions that the "REDEGLOBO.NET" domain name registration be transferred to it.
The respondent has replied to the complainant's contentions as follows:
- The importance of TV Globo Ltda. as a company (which it acknowledges) is irrelevant.
The REDEGLOBO mark has been registered in 8 countries where languages of Latin origin are spoken.
The trademarks have been registered for only seven years;
Complainant owns and uses several other domain names;
"REDEGLOBO.NET" is unable to attract TV Globo consumers because the businesses are different
- The complainant effectively uses only the "GLOBO.COM" domain name which is linked to "REDEGLOBO.COM.BR".
- TV Globo Ltda. does not own the < REDEGLOBO.NET.BR> domain name, a point that evidences TV Globo's lack of interest in the < REDEGLOBO.NET> domain name.
- "REDE" is a common word and not understood beyond Brazil.
- "REDE", "GLOBO" and variations thereof are common words used by numerous trading companies in Brazil.
- The word "GLOBO" is not associated with TV Globo Ltda. because there are many entities whose names include the word GLOBO in Brazil.
- Although the REDEGLOBO marks and the < REDEGLOBO.NET> domain name are similar, the pronunciation of the trademark and domain name is not the same in all countries of the world;
- Although respondent does not currently do business under either the name REDEGLOBO or under the < REDEGLOBO.NET> domain name, it will be doing business in the future in relation to the global rental of automobiles, a business that will not adversely affect the complainant.
- It has registered the < REDEGLOBO.NET> domain name in the United States where TV Globo Ltda. does not own the REDEGLOBO trademark; and
- It has not offered to sell the < REDEGLOBO.NET> domain name nor does it want to negotiate with it. Respondent has not put < REDEGLOBO.NET> up for sale; it is now to be found on the GREATDOMAINS.COM site under "free parking".
- It has not put REDEGLOBO up for sale, despite its being on GREATDOMAINS.COM, given that, to do so, an agreement between the respondent and GREATDOMAINS.COM would be necessary, agreement that does not exists as "parking" and "sale" are two different things.
6. Discussion and Findings
6.1 Applicable Rules
Paragraph 15( a) of the Rules instructs the Panel to render its decision on the basis of:
- the statements and documents submitted by the parties;
- the provisions of the "Uniform Policy" and of the "Rules" themselves; and
- any rules and principles of law that it deems applicable.
Considering that both the complainant and the respondent are of Brazilian nationality, the law and principles of law of Brazil are particularly pertinent together with the Rules of the Uniform Policy.
6.2. Examination of the Premises for Admissibility of the Complaint set out in Paragraph 4 a) of the Uniform Policy
These premises are:
- the domain name registered by the respondent must be identical or confusingly similar to an earlier product or service mark in which the complainant holds rights.
- the respondent must have no rights or legitimate interest in respect of the domain name; and
- the domain name must have been registered and used in bad faith.
6.2.1. Analysis of the Identity or Similarity of the Trademark and the Domain Name
A) Exhibits C and D of the complaint evidence the rights that TV Globo Ltda. holds in the REDEGLOBO and GLOBO marks in various jurisdictions. The trademark rights concern a device of which the main element is the word <REDEGLOBO>.
The Respondent's contention about the lack of registration in USA of the Complainant REDE GLOBO trademark it is irrelevant, taking into consideration the global nature of the gTDL ".net" that have not any particular link with the US trademark registrations (Case No. D2000-0164 "embratel.com").
B) The dominating element in the domain name "REDEGLOBO.NET" is REDEGLOBO, as "NET" is the generic TLD extentionextension. Therefore, its is evident that trademark and domain name are counfusingly similar.
C) C) The Uniform Policy does not require that the trademark reproduced in an identical or similar manner in the subsequent domain name be renowned. Likewise it is irrelevant for the question of similarity that there may be other firms who use elements included in the trademark or that the trademark in question is registered for only certain products or services may be relevant.
6.2.2. Analysis of the Existence or Non-Existence of Rights or Legitimate Interests in the Domain Name in Conflict held by the Respondent
The panel has reached the conclusion that Green Card Transportes e Eventos Ltda. has no rights in view of the following:
(i) Respondent has not claimed to have a trademark right or other right in a name corresponding to the domain name, other than its registration of the domain name itself;
(ii) Respondent has not demonstrated that before the date of notice of the dispute it used or prepared to use the domain name in connection with a bona fide offering of goods or services. Respondent’s alleged preparations to use the domain name for rental of cars have not been substantiated by documentary evidence.
(iii) The respondent has not claimed to have itself been commonly known by the domain name .
(iv) The respondent has not claimed that it is making fair or legitimate non-commercial use of the domain name REDEGLOBO.NET.
6.2.3 Analysis of the Existence or Non-Existence of Bad Faith in the Registration of the "REDEGLOBO.NET" Domain Name.
The Panel has found that there is evidence of bad faith registration in view of the following:
A) Respondent admits to having prior knowledge of the complainant TV Globo Limitada and of its GLOBO and REDEGLOBO marks;
The existence of a long list of domain names registered in the name of Mr. Freidenson, who is responding to WIPO on behalf of Green Card Transportes e Eventos Ltda and who is listed as the contact person for domain names for the names attached to the response to the complaint, is evidence that registration has been effected in bad faith. The number of domain names registered by the complainant (which apparently could be derived from the titles of television programs) is not relevant, whereas the statements made by the respondent concerning its domain names, holding the registration of unregistered domain names to be legitimate, are revealing.
B) Respondent has offered the domain name for sale to the complainant as owner of the trademark involved , to his competitors and to any third party through the greatdomains.com website.
Reference is made to Case No. D2000-0001 MUSIC-WEB where the domain name musicweb.com was offered for sale at GREATDOMAINS.COM.
The slogan of that website is:
"Buy and Sell Domain Names, Web sites, and Internet-Based Businesses using the Internet's number one Reseller"
When typing URL WWW. REDEGLOBO.NET, one is logged on to the great domains.com website and the following word content appears, as has been demonstrated and the panel has verified:
"REDEGLOBO.NET - This Domain Name is for sale"
and below in a box:
" to make an offer on this domain name, please enter an amount below (in U.S. dollars)"
The following box then appears:
"offer Amount: $..... Submit"
If one enters an amount below USD 2500 the message appears:
Offer less than $2500 not accepted. Please increase the amount. Offer Amount: $
Offers clearly below market value will not be forwarded to the domain name owner. If you have any questions regarding the value of a particular domain name, or to determine whether your offer is appropriate, please read our . Listing prices and availability are subject to change at any time.
Respondent alleges that the domain name REDEGLOBO.NET is "parked" at greatdomains.com, and is not offered for sale. It alleges it has not concluded an agreement for sale with greatdomains.com.
. However, in view of the above quoted messages and set-up of the great domains.com website and
given that Respondent has not issued any advisory to keep third parties who log onto the said site from having an opportunity to make a bid for that parked domain name, it should be held that Respondent is offering the domain name for sale through greatdomains.com.
Additionally, the link that exists between the "redeglobo.net" domain name and the domain name sale publicity in "greatdomains.com" could induce Internet users to assume that is the Complainant -as owner of the trademark they are entering as "address" in the navigation device- the one looking for obtaining gain from the domain name transference. That is an additional demonstration of bad faith in the domain name use as soon as it constitutes a practice to "attract, for commercial gain, Internet users to .. other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation of .. (the) location .. § 4. (b) (iv)".
Therefore, the panel concludes that respondent has registered or acquired the domain name REDEGLOBO.NET for the purpose of selling it to an interested party, including complainant as the owner of the trademark REDEGLOBO, and any competitor of complainant, for valuable consideration in excess of documented out of pocket costs directly related to the domain name.
7. 7. Decision
For all the foregoing reasons, the Administrative Panel decides that the complainant has proven the presence of the three premises set out in Paragraphs 4( a) (i), (ii) and (iii). Consequently, the Administrative Panel requires that the "REDEGLOBO.NET" domain name be transferred to the complainant.
The Panel has rendered a unanimous decision on this case, there being no dissenting opinions by any of the panelists.
Luis H. de Larramendi, Esq.
Wolter W. Bettink, Esq. Antonio Millé, Esq.
Dated: 17 July 17, 2000