WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Editora Globo S.A. v. MUNDO ON LINE NET

Case No. D2000-0604

 

1. The Parties

The Complainant is Editora Globo S.A., a company based in São Paulo, Brazil, with its principal place of businesslocated at Av. Jaguarť, 1485 Ė GerÍncia de Apoio Editorial, São Paulo, São Paulo, Brazil 05346-902 (the "Complainant"). Respondent is MUNDO ON LINE NET, with its place of business at a reported invalid address at São Paulo, Brazil, (the "Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <editoraglobo.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 Editora Globo S.A. on June 15, 2000, by email and on June 19, 2000, in hardcopy.

The Complainant made the requiredfee payment, as informed in item 31. -Communications - of the Complaint.

On June 20, 2000, the Center 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 "Hold" status.

On June 21, 2000, the Center notified the Complainant, by e-mail, about formal deficiencies in the Complaint, according to Paragraph 3(b) of the Rules, Paragraph 19(a) of the Supplemental Rules and Paragraph 3(b)(xiv) of the Rules. A copy of that notification was sent to the Respondent, by e-mail.

The requested amendments to Complaint were received by the Center on June 27, 2000.

On June 28, 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 28, 2000 the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.

The Respondent did not answer to the Complaint, and in consequence the Center sent to the parties in July 18, 2000, the Notification of Respondent Default.

On August 3, 2000, the Center appointed Mr. Josť 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 August 7, 2000, the Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.

 

4. Factual Background

The Complainant is Editora Globo S.A., a company based in São Paulo, Brazil, the second-largest publishing company in Brazil.

The trademark upon which the Complaint is based is EDITORA GLOBO. The Complainant attached copies proving that owns the Brazilian Trademark Registration number 814 745 245 for EDITORA GLOBO, in class 11.10, filed on March 28, 1989 and registered on October 2, 1990 for newspapers, magazines and periodicals in general and the Brazilian Trademark Registration number 814 745 253 for EDITORA GLOBO, in class 16.20, filed on March 23, 1989 and registered on July 7, 1998 for books, albums, paper patterns and printed material in general.

The Complainant also owns the Portuguese Trademark Registration number 257473 for EDITORA GLOBO, in international class 16, filed on July 31, 1989 and granted on December 10, 1992 for newspaper, magazines e periodicals in general, books and printed material in general.

This registered mark EDITORA GLOBO ("the EDITORA GLOBO mark"), have been used by Complainant in Brazil and other countries, to identify publishing and entertainment services, namely newspapers and magazines.

The Complainant attached informative copies demonstrating that EDITORA GLOBO publishes, among others, magazines and books in the following areas:

Womenís Magazines, General Interest Magazines, Comics, Part works, Reference Works, Encyclopedias, Practical Life, Books for Children, Books of Brazilian and Foreign Authors, Journalistic Books, Biographies, Dictionaries and Multimedia.

The Complainant affirms that has developed substantial goodwill and name and brand recognition in its EDITORA GLOBO mark, based on its long and extensive use of EDITORA GLOBO mark.

Complainant also utilizes its EDITORA GLOBO mark on Complainantís Brazilian web site, located at <editoraglobo.com.br>. Copies of certain pages from Complainantís Internet site utilizing its EDITORA GLOBO mark were attached to the Complaint.

 

5. Parties' Contentions

 

Complainant contends that:

(1) The domain name <editoraglobo.com> is identical, and therefore confusingly similar to, Complainantís EDITORA GLOBO mark, in the following manners:

(a) Is similar, in appearance, pronunciation and sound to Complainantís EDITORA GLOBO mark.

(b) Incorporates fully Complainantís EDITORA GLOBO mark being the only difference between the <editoraglobo.com> domain name and Complainantís EDITORA GLOBO mark, the domain name additions of ".com".

(c) Has suggestions, connotations, and commercial impressions associated with Complainant and Complainantís publishing and entertainment products and services, and Complainantís expertise relating to Complainantís publishing and entertainment products and services.

(2) Respondent has no rights or legitimate interests in respect of the <editoraglobo.com> domain name, because of the following facts:

(a) Respondentís use of the <editoraglobo.com> domain name is not in connection with a bona fide offering of goods or services.

(b) The Respondent is not commonly known or identified by the name "EDITORA GLOBO".

(c) The Respondent does not operate a business or other organization commonly known as "EDITORA GLOBO" nor offers any goods or services under the EDITORA GLOBO mark.

(d) The Respondent has not acquired trademark or service mark rights for the EDITORA GLOBO mark in Brazil.

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

(f) The Respondent is not a licensee of Complainant, nor is the Respondent otherwise authorized by Complainant to use Complainantís EDITORA GLOBO mark or to apply for or use any domain name incorporating the EDITORA GLOBO mark.

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

(a) The Respondent does not conduct any legitimate commercial or noncommercial business under the EDITORA GLOBO mark.

(b) The Respondent has registered the <editoraglobo.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 Respondentís documented out-of-pocket costs directly related to the domain name.

(c) The Respondent has registered the <editoraglobo.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 <editoraglobo.com> domain name, Respondent is diverting consumers away from the official site of Complainant and making it difficult for Complainantís customers and the general public to locate Complainantís official web site, thereby disrupting Complainantís business.

(e) By using the <editoraglobo.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site or other on-line locations by linking users to the "MyInternet" site, where is offered domain names management, including the <editoraglobo.com> domain name.

(f) If Respondent sells the <editoraglobo.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) Respondentís use of the <editoraglobo.com> domain name is diluting and weakening the unique and distinctive significance of Complainantís EDITORA GLOBO mark.

(5) Respondentís use of domain name identical to Complainantís EDITORA GLOBO mark has caused serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its EDITORA GLOBO mark.

(6) Respondentís conduct is in violation of Brazilian trademark and unfair competition law.

 

Respondent did not answer to the Complaint:

Duly notified of the Complaint, the Respondent did 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 these 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 separation between the words "editora" and "globo", it is beyond question that the trademark EDITORA GLOBO is identical to the domain name <editoraglobo.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"

Neither "editoraglobo" nor "Editora Globo" is part of the name of the individual registering the <editoraglobo.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 "editoraglobo" as a domain name.

On this basis, this Panelist concludes that the Respondent has not any legitimate interest in the domain name <editoraglobo.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 Complainant informed that the page appearing at <editoraglobo.com> web site links users to <myinternet.com>, where are offered domain names management services.

This Panelist tried to visit the <editoraglobo.com> web site, but, at the time this Decision was drafted, this domain name could not be resolved, resulting in the reception of the message "Host name lookup for 'www.editoraglobo.com' failed".

By querying directly the DNS of the hosting ISP of the domain, as informed by the "Network Solutions Whois Database", this Panelist arrived to the IP address 216.34.89.52, which leads to a welcome page, linked to the ISP <mydomain.com>, informing that the site is "Under Construction".

The address <myinternet.com>, informed by the Complainant, is redirected to the site of <mydomain.com>, indicating that both domains belong to the same ISP. A visit to this web site could not find any domain name offered for sale.

The Complainant attached a list of domain names registered by the Respondent, corresponding to well-known marks in Brazil. The Panelist verified this, and no one was directly resolved into an IP address, however, a sequence similar to the one used for <editoraglobo.com>, lead to similar welcome pages in the same ISP.

A final visit to the site of Greatdomains, <greatdomains.com>, a well-known site offering domains for sale, found that this site is accepting offers for the domain name <editoraglobo.com>, as well as for two others, among the above referred list of domain names

In spite of the results of the aforementioned researches performed by this Panelist, the finding of a place accepting public offers 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 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".

This conclusion is confirmed by the lack of allegation by the Respondent about the existence of any of the circumstances listed in ß 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 IP address "216.34.89.52", found as the IP address allocated to the domain name <editoraglobo.com> the Panelist entered in the "mydomain.com" web site in a welcome page displaying the notice "Under construction".

Because of this, this Panelist arrives to the conclusion that the Respondent has registered and used the <editoraglobo.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 Centerís request, Network Solutions Inc., NSI, is the Registrar of the domain name <editoraglobo.com>, and Network Solutionsí5.0 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", Ė Domain Name Dispute Policy Ė, 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 the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") can be found.

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 REGISTRARís "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 <editoraglobo.com> be transferred to the Complainant.

 


 

Josť Pio Tamassia Santos
Panelist

Dated: August 14, 2000