WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Burak Akgul
Case No. D2000-0353
1. The Parties
The Complainant is TV Globo Ltda., a company based in Rio de Janeiro, Brazil, with its principal place of business located at Rúa Marquês de São Vicente, 30 - Sobreloja, Depto. Jurídico, Rio de Janeiro, Rio de Janeiro, Brazil (the "Complainant"). Respondent is Mr. Burak Akgul, who resides at Cankaya, Ankara 06500, Turkey (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is <redeglobo.com>. The registrar is Register.com, Inc. (the "REGISTRAR") of New York, New York, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of TV Globo Ltda. on April 28, 2000, by email and on May 1, 2000, in hardcopy.
The Complainant made the required fee payment.
On March 20, 2000, the Center sent to the REGISTRAR, a request for verification of registration data that was answered in May 3, 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 active.
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 May 3, 2000, sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
The Respondent does not answer to the Complaint, and in consequence the Center sent to the parties in May 23, 2000, the Notification of Respondent Default.
On May 24, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Millé as the single member of the Administrative Panel (the "Panelist"). On the same date, the Center notified the parties of this appointment.
On May 29, 2000, the Panelist received via courier a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The trademark upon which the Complaint is based is REDE GLOBO. The Complainant attached copies proving that it registered the trademark in Brazil in the year 1996 (classes 38.10 and 41) having also registered the trademark REDE GLOBO in the European Union, Portugal, Paraguay, Argentina, Bolivia, Ecuador, and Peru. Other copies prove that the Complainant also registered trademarks containing the word "globo" in Brazil, the European Union and 12 other countries.
The Complainant asserts that it is the largest and most famous television company in Brazil and that it is one of the largest television companies in the world, with its television and entertainment products and services available in more than 130 countries. The Complainant declares that it provides these products and services under a number of names and trademarks, including the REDE GLOBO trademark, that it’s used extensively to identify, advertise, market and promote such products and services.
The Complainant affirms that it has continuously and extensively advertised and promoted its REDE GLOBO trademark for more than 35 years in numerous communications media throughout Brazil and other countries, developing substantial goodwill and name and brand recognition in this trademark. The Complainant also utilizes the REDE GLOBO trademark as a domain name, being registrant of the domain name <redeglobo.com.br> where is located the Complainant’s Web site.
5. Parties' Contentions
5. 1 Complainant contends that:
a) The domain name <redeglobo.com> is identical, and therefore confusingly similar to the trademark REDE GLOBO, because:
i) It incorporates fully the REDE GLOBO trademark textual components, with the sole difference being the particle "com" addition.
ii) The use of the phoneme "redeglobo" has suggestions, connotations and commercial impressions associated with the Complainant and with Complainant's television and entertainment products and services.
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 fide offering of goods and services.
ii) The Respondent, is not identified by the name "redeglobo".
iii) The Respondent does not operate a business known as "redeglobo" nor offer goods or services under the "redeglobo" name or trademark.
iv) Respondent has not acquired trademark or service mark rights for the REDE GLOBO mark in Brazil.
v) Respondent is not making a legitimate noncommercial or fair use of the domain name
vi) Respondent was not authorized in any way to use Complainant’s REDE GLOBO trademark nor to use any domain name incorporating such trademark.
c) The <redeglobo.com > domain name has been registered and is being used in bad faith, because:
i) Respondent does not conduct any legitimate commercial or noncommercial business under the REDE GLOBO trademark.
ii) Respondent has registered the <redeglobo.com> domain name for the purpose of selling or renting or otherwise transferring the domain name registrations to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
iii) The Respondent has registered the <redeglobo.com> domain name in order to prevent Complainant from reflecting its marks in corresponding domain name unless Complainant pays to purchase or rent the domain name from Respondent.
d) By registering the < redeglobo.com> domain name, Respondent is diverting consumers away from the official site of Complainant and making it difficult for Complainant's customers and the general public to locate Complainant's official web site.
e) By using the <redeglobo.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's Web site or other on line locations by directly or involuntary linking users to its "Great Domains" site, where Respondent or its affiliates has offered numerous domain names for sale or rent, including the <redeglobo.com> domain name.
f) If Respondent sells the <redeglobo.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.
g) Respondent's use of the <redeglobo.com> domain name is diluting and weakening the unique and distinctive significance of Complainant's REDE GLOBO trademark.
h) Respondent's use of domain name identical to Complainant's trademark has caused serious and irreparable injury and damage to Complainant and to the good will associated with Complainant and its REDE GLOBO trademark.
i) Respondent's conduct is in violation of Brazilian trademark and unfair competition law.
5.2 Respondent does not answer to the Complaint:
Duly notified of the Complaint, the Respondent does not answer to it.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order 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 that the particle "com" is an attribute of the gTLD, common to all the domain names under this TLD, and there being no significance in the absence of a the separation between the words "rede" and "globo", it is beyond question that the trademark REDE GLOBO is identical to the domain name <Redeglobo.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"
Neither "Redeglobo" nor "Rede Globo" are part of the name of the individual registering the <redeglobo.com> domain name. The Respondent has not answered the complaint giving any basis to a right or legitimate interest in respect to the use of the phoneme "redeglobo" as a domain name.
On this basis, the Panelist concludes that the Respondent has not any legitimate interest in the domain name <redeglobo.com>. Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
The Complainant attached a copy of a page of the site <greatdomains.com> devoted to "Buy and Sell Domain Names, Web Sites and Internet-Based Business", where the <redeglobo.com> domain name is offered for sale. In the Complaint, the Complainant affirms that on such site "Respondent or its affiliate has offered numerous domain names for sale or rent".
The Panelist visited the <greatdomains.com> site and asked for the <redeglobo.com> domain name, verifying that at the time of drafting the Decision <redeglobo.com> was not included in the stock of publicly offered domain names. The Panelist does not find on <greatdomains.com> site, nor in the Whois information, evidence showing that this site is owned or operated by the Respondent. The Panelist does not know the identity of Respondent's affiliates, whose existence was not demonstrated by the Complainant in any concrete way.
In spite of the results of the aforementioned researches performed by the Panelist, the documented evidence furnished by the Complainant about at least one public offer to sell the domain name, and the silence that the Respondent keeps before this evidence and the imputation of an intention to sell or rent the domain name that the Complainant clearly and specifically includes in the Complaint, force to the Panelist to consider that in this case exists "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". This conclusion is confirmed by the lack of allegation by the Respondent about the existence of any of the circumstances listed in § 4.c. of the Policy to demonstrate its rights or legitimate interest to use the domain name and the fact that directing a browser to the URL "http://www.redeglobo.com" the Panelist entered in the Register.com Web site in a page displaying the notice "Coming Soon".
Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used the <redeglobo.com> domain name with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is met.
Registrars, Registries and ICANN Policies
The Complainant said that the domain name in dispute is "registered with REGISTER.COM at the time this Complaint was filed". Notwithstanding, in the "Exhibit B" of the Complaint are attached the "Service Agreement" of Network Solutions, Inc. ("NSI"), and the "Uniform Domain Name Dispute Resolution Policy" approved by ICANN in October 24, 1999, as this text is published on the "Domain Magistrate" page of NSI. This ambiguity obliges the Panelist to consider if the applicable rules shall be the ones of NSI or the ones of the REGISTRAR.
As per the information that register.com discloses on its Web site –confirmed by ICANN information- this company is one of the accredited, and currently operational, registrars, "registrar" being defined as "one of the numerous competing businesses that interact with customers, process registration orders, and place registration information into the registry". NSI is a "registry", that is "the database containing all the domain-name registrations in a top-level domain", in this case the ".com" top-level domain. In consequence –without prejudice of the relationship between the REGISTRAR and NSI- the contractual link to be considered in this case is the one connecting the Respondent with the REGISTRAR.
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, the Panelist goes to the REGISTRAR "Registration Agreement" (http://www.register.com/service-agreement.cgi?1|1990642391|) to check the applicable provisions. In this "Registration Agreement", beginning with the statement that "sets forth the terms and conditions of your use of register.com, inc’s … domain name registration services to register an Internet domain name, as well your registration of that domain name" were found the following clauses:
"§ 11. Representation and Warranties: You represent that, to the best of your knowledge and belief, neither the registration of the domain name nor the manner in which it is directly or indirectly used infringes the legal right of a third party …".
"§ 4. Dispute Policy: You agree to be bound by the register.com Domain Name Dispute Policy ("Dispute Policy"), which is hereby incorporated and made a part of this Agreement by reference …" .
Operating the hyperlink to the "Dispute Policy" REGISTRAR’s page, the Panelist found 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", a document with exactly the same text that the one attached by the Complainant in the "Exhibit B" of the Complaint.
In consequence, the Panelist adopted the present Decision on the basis of the Policy and the Rules that are common for NIS clients and REGISTRAR clients and that all the provisions invoked by the Complainant in the Complaint are in force in the present case due to the terms and conditions accepted by the Respondent having consented to the REGISTRAR’s "Registration Agreement".
Complainant 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 <redeglobo.com> be transferred to the Complainant.
Dated: June 2, 2000