WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D. Sallen Enterprises
Case No. D2000-0715
1. The Parties
The Complainant is now known as Cruzeiro Licenciamentos Ltda, a company organised under the laws of Brazil, with its address at Cidade de Barueri, Estado de São Paulo, Alameda Rio Negro 1.084, Sala 78, Brazil. The Complainant is represented by Mr. Marc P. Misthal and Ms. Amy B. Goldsmith of Gottlieb, Rackman & Reisman, P.C., Attorneys of New York.
The Respondent is David Sallen of 7 Fiske Terrace, Brookline, MA 02446, USA, phone (617) 731 6939; email jdsallen@IX.NETCOM.COM. The Respondent also trades under the names Sallen Enterprises and J.D. Sallen Enterprises, with the same contact details. The Respondent represents himself in this proceeding.
2. The Domain Name and Registrar
The domain name at issue is "cruzeiro.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI") and is at present registered with Tucows.com, Inc., in the name of GO247.com inc., at the same address as that for the Respondent. Administrative contact is Sallen, J D, email@example.com.
3. Procedural History
A complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 3, 2000. The signed original, together with four copies, was received by WIPO Center on July 3, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on July 5, 2000.
On July 5, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI to:
Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain name at issue.
Indicate the current status of the domain name.
By email dated July 13, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the complaint from the Complainant.
NSI is the Registrar of the domain name registration "cruzeiro.com".
The Respondent, David Sallen (also trading as Sallen Enterprises and J.D. Sallen Enterprises), is the current registrant of the said domain name. He is also the technical and billing contact for the "cruzeiro.com" domain name. Relevant contact information is as stated above.
NSIís 5.0 Service Agreement is in effect.
The domain name registration "cruzeiro.com" is in "Active" status.
With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
As stated under item 2 above, the domain name initially was registered with Network Solutions. It appears now to be registered with Tucows.com, Inc., in the name of GO247.com, Inc., an entity with the same address as the Respondent, presenting SALLEN, J D firstname.lastname@example.org as the administrative and billing contacts for this domain name.
This change of Registrar does not affect this case, considering that the ICANN Policy and Rules are also in force for the new Registrar, as learned at address http://www.opensrs.org/legal/udrp.html.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on July 17, 2000, transmitted by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 5, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On August 8, 2000, the Respondent filed a hard copy of his Response and elected to have the Complaint resolved by a 3-member Panel. The parties have paid the required amounts to WIPO Center.
On August 18, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It invited Professor David Sorkin and Dr. Josť-Pio Tamassia Santos to be Panelists. It transmitted to all Panelists a statement of acceptance and requested a declaration of impartiality and independence.
The Panelists advised their acceptance and forwarded to WIPO Center their statements of impartiality and independence. On August 21, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On August 21, 2000, WIPO Center forwarded to the Panelists by courier the Complaint, Response and the record. These were duly received by them. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by September 6, 2000.
On August 22, 2000 the Complainant sought leave to file a Supplement to the Complaint which advised the Panel decided to accept. In this Supplement, the Complainant advised a name-change and also gave further details of domain names registered by entities with connections to the Respondent.
The Respondent, being unhappy at this further document filed by the Complainant, sought leave to file answering material. The Panel, having considered his request, instructed WIPO Center to inform the Respondent that he could, within three working days, file a Response replying only to new matters found in the Complainantís supplement. Under this arrangement, the Respondent was required to forward his reply by August 30, 2000. It was received by WIPO Center on August 30, 2000 and has been considered by the Panel.
The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Cruzeiro Esporte Club, commonly known as Cruzeiro, runs a well-known soccer team in Brazil. Pursuant to a licensing agreement dated September 28, 1999, the Complainant is the exclusive licensee of intellectual property owned by the Club. The Complainant, or its predecessors in interest, has certain registrations for the mark "Cruzeiro" (with others pending) from the Brazilian Institute of Industrial Property. The mark has been used by the Complainant or its predecessors in interest continuously in international commerce since 1997.
In addition, the Brazilian Federal "Pelť Law" protects team names without registration being required:
"Furthermore, Article 87 of Brazilian Law No. 9515 of March 24, 1998 (popularly known as the "Pelť Law"), provides protection to the mark CRUZEIRO. Article 87 of this federal law reads as follows:
Art. 87. The denomination and symbols of the entity that manages the sport or the sport activity, as well as the name or nickname adopted in sports by the professional athlete, belong exclusively to the same, and are under legal protection, valid in all the national territory, for an undetermined period of time, without need of registration or recordal before the eligible body."
The Respondent is not a licensee of the Complainant, nor is he otherwise authorised to use the Complainantís mark. The disputed website is at present undeveloped. The name was noted as being for sale in the NSIís WHOIS information attached to the Complaint.
The Respondent, David Sallen, apparently trades also under a variety of trade names incorporating the name "Sallen". NSIís WHOIS database shows that all the Sallen trade names share the same address and phone number. He also trades under the name "Prestige Domains". Printouts from NSIís WHOIS database indicate that the Respondent shares the same email address, but two different phone numbers (one the same as the Respondentís) as found for Prestige Domains in various records.
The Respondent, according to printouts from NSIís database, has registered over 50 domain names, including "sinatraonline.com", "tonimorrison.com", "kyotoonline.com" and santiagoonline.com" and "dowjonesupdate.com". The domain name "cruzeiro.com" was listed as "for sale" in these printouts. The names are a selection of the names of well-known persons or of cities.
The Respondent in September 1999 sent an email to the Complainant offering to sell the domain name "corinthians.com", a name claimed as a trademark under Brazilian law by another famous soccer team, known as Corinthians. The Complainant then discovered that the Respondent had registered "cruzeiro.com". A "cease and desist" letter was sent to the Respondent in November 1999 relating to the Corinthians domain name. Counsel for the Complainant deposed that in January 2000 she spoke to the Respondent who indicated that he had no response to make to the letter and that he would not transfer either the domain name "corinthians.com" or "cruzeiro.com" to the Complainant.
The Respondent claims to have invested thousands of hours and much money in researching and registering generic domain names. He says he has risked capital in the hope of providing business venture capitalists and start-up companies with the opportunity to benefit from generic names which would not otherwise have been available to them.
The same parties to this present proceeding were parties to a decision of a WIPO Panelist in D2000-0461 concerning the domain name "corinthians.com". The Complainant in that case was the owner of a Brazilian mark "Corinthiao" ("Corinthians" in Portuguese), in respect of another well-known Brazilian soccer team, similar to the team "Cruzeiro". The learned Panelist, for the reasons given in his decision, found in favour of the Complainant and ordered the transfer of the domain name from the Respondent to the Complainant. The Respondent is now challenging that finding in the United States District Court.
The Complainant at first wished to have this dispute consolidated with D2000-0461, but WIPO Center, in this Panelís view correctly, decided on separate consideration of each complaint by separate Panels. The facts in the two disputes differ in that the Respondentís defence on "corinthians.com", whilst having some similarity with his defence in this case, was principally that he was making a non-commercial use of the website by offering a service to the religious public, placing messages from the epistles of St Paul to the Corinthians on the website.
It does not follow that because the Respondent was required to transfer the name "corinthians.com", that he should be required to transfer the name "cruzeiro.com". However, the Respondentís conduct in relation to "corinthians.com", as exhaustively set out by the Panelist in D2000-0461, may be relevant when assessing whether the Respondent registered and is using "cruzeiro.com" in good faith.
In its supplement to the Complaint, the Complainant alleged that there are other business entities connected to the Respondent which had registered domain names. All these entities share the address of 7 Fiske Terrace, Brookline, MA, U.S.A., the address of Prestige Domains. These newly-discovered names include "bush4president.com", "electbush.org", "presidentgore.org" and "nlcs.com". The latter combination of initials is a trademark of Major League Baseball.
In his supplemental Response, the Respondent stressed his position as a bona fide entrepreneur offering domain names for sale in the same way as NSI offers names for sale. He defended what he called "parody websites" such as those referring to presidential nominees, but said nothing about "nlcs.com".
One member of the Panel, in the course of his researches, discovered a registration of a domain name "atleticomineiro.com", which corresponds to the name of yet another Brazilian soccer team, granted on October 14, 1999, to "J D & R Intel Props for Sale", with the same address as the Respondent. This registration cannot be evidence of "bad faith" at the time of registration of the disputed domain name in this case, but can be supporting circumstantial evidence of bad faith use.
5. Partiesí Contentions
The Complainant submits as follows:
(a) The domain name "cruzeiro.com" is identical or confusingly similar to:
(i) its registered mark "cruzeiro", registered February 9, 1997 No. 818542241, as well as other registered marks incorporating that word;
(ii) the name of the soccer team "Cruzeiro" which, under the "Pelť Law" of Brazil, is a deemed mark without need of formal registration.
(b) The Respondent has no licence to use the name and does not allege that he is known by the name.
(c) The Respondent has not demonstrated any use of or demonstrable preparations to use the name in connection with a bona fide offering of services.
(d) The Respondent has registered the name for the purpose of transferring it to the owner of the mark for valuable consideration in excess of out-of-pocket costs, as shown by the notation on the website "this domain name for sale".
(e) WIPO Panels routinely ignore the ".com" addition when determining whether a domain name is identical to a mark.
(f) The Respondentís registration of numerous domain names containing the names of well-known personalities and cities suggests a studied selection of domain names for the purpose of profiting from activities other than maintaining over 50 active websites. It cites Stella DíOro Biscuit Co. Inc. v. The Patron Group, Inc. (WIPO decision D2000-0012) where the Panel found the fact of registration of over 100 names, including well-known terms used by well-known global companies, evidenced an intent to profit from the maintenance of websites. The Respondent there could not prove evidence of its intended future uses and had offered to sell the domain name.
(g) Bad faith registration is shown by the Respondentís failure to make good faith use of the domain site and by its policy of trading on the value of marks which it had registered as domain names. Also, the fact that a Respondent lacks rights or legitimate interests also indicate bad faith registration (Telstra Corporation Ltd v. Nuclear Marshmallows (WIPO Ė D2000-0003)).
(h) The Respondent had listed the domain name for sale on WHOIS information.
(i) The telephone number given for Prestige Domains, one of the Respondentís trading names, does not correspond with the phone number listed for the address given.
(j) The Respondentís refusal to transfer "cruzeiro.com" to the Complainant when verbally requested so to do.
The Respondentí submissions in summary are:
(a) Since the summer of 1998 "foreseeing the myriad opportunities offered by the internet, I have invested thousands of hours and risked a great percentage of my financial resources in researching and registering generic names".
(b) His plan has been to acquire the names, then to form associations with persons with the requisite skills. To this end, he advertised for students possessing technical skills to assist him to develop the domains into "communities, informational sites and viable business entities".
(c) Certain WIPO decisions affirm the legitimacy of a business such as his. In Allocation.com D2000-0016), the Panel ruled that the practice of selling names to the highest bidder may constitute use of the domain name in connection with a bona fide offering of goods and services.
(d) Because of his full-time job, the Respondent should not be accused of "bad faith" simply because he did not have sufficient capital to develop his plans.
(e) He and his brother in 1999 founded GO247.COM inc. which, like NSI itself, seeks to make otherwise unobtainable domain names available for sale to clients. Instances of GO247.COM inc.ís activities to date were supplied.
(f) Multiple registrations of generic domain names is not evidence of bad faith (see WIPO case D2000-0104 Ė Eautomotive.com).
(g) In "only two very early cases" he registered a domain name where a legitimate question was later raised regarding a trademark conflict. He transferred to Dow Jones the "dowjonesupdate.com" domain name without charge: he offered to transfer "tonimorrison.com" and does not intend to renew its registration. In his supplemental Response, the Respondent accuses the Complainant of bad faith in alleging that he recently renewed registration of "tonimorrison.com". He has now moved to delete this registration.
(h) Since late 1998, he has registered general Hispanic names, such as "definitivo", "estimado", "amable" and others. He would not have considered registering "cruzeiro" had it not been a generic Portuguese word meaning "a unit of money, a cruise or a cross". A search for non-soccer-related web pages using the word "cruzeiro" resulted in 25,000 results.
(i) He was unaware of the Complainantís Brazilian trademark at the time of registration. In a trademark search conducted prior to registration, he found only one result "Q Cruzeiro", relating to clothing. A later search through Brazilian government trademark records showed 115 registrations, including 53 for the single word "cruzeiro".
(j) If sports teams were to be granted exclusivity over their name, then the language available for domain name registrations would be limited. (He listed the names of numerous North American sports teams).
(k) There is no bad faith because the name is generic and does not have an immediate relationship to the Complainant any more than to a number of other meanings and applications.
(l) There is no evidence of his attempting to create confusion as to the source of origin, sponsorship or ownership of the domain name. (Relying on the WIPO decision in CREW.com Ė D2000-0054).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Respondent has no legitimate interests in respect of the domain name.
The domain name has been registered and used in bad faith.
The Panel determines that the domain name "cruzeiro.com" is identical or confusingly similar to the Complainantís mark, "cruzeiro". The addition of ".com" does not affect the decision.
The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:
(a) The Respondent has failed to submit any evidence that he has any right or legitimate interest in respect of the domain name at issue.
(b) According to the Complainantís search, there is no valid IP address in connection with the domain name.
(c) He is not known by the name "cruzeiro".
The members of the Panel hold divergent views on the question whether a domain name speculator can have rights or legitimate interests in domain names merely by offering them for sale. See VZ VermögensZentrum AG v. Anything.com, WIPO Case No. D2000-0527. However, it is clear that such rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark.
There is greater difficulty in considering whether the name was registered in bad faith by the Respondent. Normally, one would not expect that a U.S. resident would know of the "Pelť Law" or of a Brazilian trademark relating to a soccer team which, whilst of intense interest in one large country, would not necessarily be known in another where soccer is not a major sport. Particularly when the name was a fairly common Portuguese word used for the monetary unit of Brazil until recently.
In fact, the word "cruzeiro" in the Portuguese and Spanish languages is a generic word, and by no means can be, at least in Brazil, directly associated with the Complainantís business.
The word "cruzeiro" is also "popular" because its origin is the constellation "cruzeiro do sul" Ė Southern Cross in English Ė which is a symbol so strong and popular that it appears on the Brazilian flag and the flags of other countries situated in the southern hemisphere.
Stressing the fact that the word "cruzeiro" is popular and common in Brazil, a search made by one Panelist found five other Brazilian soccer teams incorporating the word "cruzeiro" in their names.
Nor does the bulk registration of generic names necessarily show bad faith, provided the registrations are not of names, products or people with international reputations.
However, what tilts the inference against the Respondent and assists the Complainant in discharging the onus of proof are the following factors:
(a) It must be more than co-incidence that amongst the bulk registrations of domain names were the names of two major Brazilian soccer teams. The devotion of the Brazilian people to this particular sport is well-known world-wide and a registrant of domain names in bulk should have expected some kind of mark protection for these names, although the detail (such as the "Pelť Law") may not have been known. Maybe "cruzeiro" on its own would not be enough to discharge the onus, but "cruzeiro" and "corinthians" together, certainly would.
(b) Mere passive holding of a domain name can qualify as bad faith if the domain name ownerís conduct creates the impression that the name is for sale.
(c) The fact that the Respondent registered "dowjonesupdate.com", "tonimorrison.com" and "nlcs.com" indicates an opportunistic streak. That he subsequently transferred "dowjonesupdate.com" is irrelevant. That he deleted registration of "tonimorrison.com" is also irrelevant. Why register such a household word in the first place? Nor is there any explanation of "nlcs.com" in the Respondentís reply to the supplementary complaint.
(d) The fact that the domain name was offered for sale on the internet as shown in Exhibit I to the Complaint.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical or confusingly similar to the mark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "cruzeiro.com" be transferred to the Complainant.
Hon. Sir Ian Barker QC
Professor David Sorkin Dr. Josť-Pio Tamassia Santos
Dated: September 6, 2000