WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sigla Sistema Globo de Gravacoes Audio Visuais Ltda. v. Italo de Barros Nadeo
Case No. D2000-0732
1. The Parties
The complainant is:
SIGLA SISTEMA GLOBO DE GRAVAÇOES AUDIO VISUAIS LTDA., with an address at Rua Assunçao, 443, in Rio de Janeiro, Brazil.
The respondent is:
ITALO DE BARROS NADDEO., with an address at Rua Antonio Fraga, 151 - Florestal CEP 35690-000, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The Domain Name that is the subject of this complaint is: "somlivre.com"
The above listed domain name was registered with Networks Solutions, Inc. on May 21, 1997.
Original Registrant was Mr. Italo de Barros Naddeo, of Rio de Janeiro, Brazil.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy" or "The Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"), was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 4, 2000, and followed by the paper original and corresponding annexes.
An acknowledgement of receipt was sent by the WIPO Center to Complainant, by facsimile and e-mail dated July 28, 2000.
On July 26, 2000, the WIPO Center transmitted via e-mail to Network Solutions, Inc. a request for Registrar verification in connection with this case. On July 26, 2000, the Registrar confirmed by e-mail to the WIPO Center having received a copy of the Complaint and the fact that Respondent, Italo de Barros Naddeo, was the current registrant of the domain name at issue; that the name was "active" and that the contacts for such name, administrative, technical and billing purposes were Mr. Italo de Barros Naddeo with address at Rua Cameta, 492-Saudade, Brazil and Mr. Fernando O. Ferreira, with address at Rua Santa Rita Durao 231 / 211 Ė Funcionarios, Belo Horizonte, Mina Gerais 30140-110, Brazil.
Notification to Respondent
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and Uniform Rules, the WIPO Center issued to Respondent on August 23, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (including a copy of the filed Complaint), to both the postal and e-mail address of the Respondent and to the facsimile of the Respondent's Contact, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.
On August 31, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Marino Porzio.
4. Factual Background
The Complainant, SIGLA SISTEMA GLOBO DE GRAVAÇOES AUDIO VISUAIS LTDA, based in Rio de Janeiro, Brazil, is described in the Complaint as a company devoted to the commercialization of soundtracks, cassette tapes and conventional audio albums and compact discs. In the Complaint it is described as being owner of 10 % of the music Brazilian market, with sales reaching over 8 million units among conventional albums, cassette tapes and compact discs.
Complainant has demonstrated to be the legal owner, among others, of the following trademarks, all registered in Brazil:
(Reg. No.710.063.580), class 09.40
(Reg. No.780.199.413), class 09.40
The first Certificate of Registration for trademark "SOM LIVRE" was granted in the name of SIGLA SISTEMA GLOBO DE GRAVAÇOES AUDIO VISUAIS LTDA., which is the name of the Complaint, in 1971, and has been periodically renewed since then.
Furthermore, Complainant has proven to have pending applications in Brazil, for the registration of the following trademarks:
"SOM LIVRE"(821.847.198), class 09.40; "SOM LIVRE DISCOS" (822.004.429), class 09.40; "SOM LIVRE DISCOS" (822.004.470), class 38.10: "SOM LIVRE DISCOS" (822.004.518), class 40.15, 60; "SOM LIVRE EDICOES MUSICAIS" (822.004.410), class 09.40; "SOM LIVRE EDICOES MUSICAIS" (822.004.453), class 38.10; "SOM LIVRE EDICOES MUSICAIS" (822.004.496), class 40.15, 60;"SOM LIVRE LOJA VIRTUAL" (822.004.437), class 09.40; "SOM LIVRE LOJA VIRTUAL" (822.004.461), class 38.10; "SOM LIVRE LOJA VIRTUAL" (822.004.500), class 40.15, 60; "SOM LIVRE LOJA TELE VENDAS"(822.004.526), class 38.10; "SOM LIVRE TELE VENDAS" (822.004.534), class 09.40; "SOM LIVRE TELE VENDAS" (822.004.542), class 40.15, 60; "SOM LIVRE VIDEO" (822.004.402) class 09.40); "SOM LIVRE VIDEO"(822.004.445), class 38.10; "SOM LIVRE VIDEO" (822.004.488), class 40.15, 60
The Complainant is also the title holder of the domain name "somlivre.com.br" which has been registered with FAPESP, the Brazilian Agency responsible for registering domain names in Brazil, since February 22, 1997.
During the last few years Complainant has started an e-commerce business and owns a virtual store at "somlivre.com.br".
Respondent has proven to be the current title holder of domain name somlivre.com since May 21, 1997.
Respondent has argued that Complainant trademark "SOM LIVRE" is not registered in classes corresponding to the area of internet or computer business.
In addition, Respondent has argued that trademark "SOM LIVRE" is not registered in the United States.
Respondent describes himself as "E-businessman and Internet professional, recognized by the Brazilian press and is a man who has a several works related with culture. He also has a special strategy of a business plan to Internet".
5. Partiesí Contentions
As to whether the domain name "somlivre.com" is identical and confusingly similar to the Complainant's trademarks, Complainant submits that the dominant element of the domain name at issue is "somlivre.com" and this is clearly identical to the dominant element of each of the various trademarks as mentioned above. The only difference between the "somlivre.com" domain name and the "SOM LIVRE" mark is the addition of the ".com" element in the domain name. Complainant submits that the ".com" element does not serve to distinguish the domain name from these trademarks.
Complainant submits that Respondent has no rights or legitimate interests in respect of domain name "somlivre.com". In support of this claim Complainant states that it has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating the mark "SOM LIVRE".
Furthermore, Complainant states that Respondent, as an individual, is not commonly known or identified by the name "SOM LIVRE" neither does Respondent offer any goods or services under the "SOM LIVRE" mark.
Complainant states that Respondent has not acquired trademark or service mark rights for the "SOM LIVRE" mark in Brazil or, as far as it is known, in any other country.
As regards the evidence of bad faith in the registration and use of the said domain name "somlivre.com" by Respondent, Complainant submits that Respondentís conduct is in violation of Brazilian trademark and unfair competition law.
Resuming, Complainant contends that the Domain Name at issue is identical to Complainantsí registered trademarks, that Respondent has no rights or legitimate interests in respect of such Domain Name, and that this Domain Name was registered and used in bad faith.
A number of arguments are developed by Complainant for justifying the above mentioned contentions and evidence has been filed in support of these arguments.
Consequently, Complainant requires the transfer of the Domain Name to Complainant.
In his submissions regarding the Complainant's trademarks, the essence of Respondentís case is that while he accepts that Complainant is the owner of the "SOM LIVRE" trademark, he submits that this is a commonplace trademark in Brazil in respect of the production and commercialization of sound tracks, cassette tapes, conventional audio albums and compact discs. Respondent challenges the Complainantís right to the domain name since there are other registered trademarks incorporating the words "SOM" or "LIVRE" in Brazil, the USA, or Canada and he suggests probably elsewhere.
As regards the Respondent's rights or legitimate interest in the said domain name, the Respondent refers to paragraph 4(c)(i) of the Policy and submits that evidence of use or demonstrable preparations to use the said domain name in connection with a bona fide offering of good or services prior to notice of the dispute is sufficient to establish his rights or legitimate interest in domain name "somlivre.com".
Respondent points out that he registered the domain name at issue on May, 21, 1997 and Complainant did not initiate these proceedings until July, 2000, which was thirty-seven months later. Respondent argues further that the Complainant had every opportunity to register the domain name but did not do so and should not now benefit form this situation.
The Respondent also submits that his registration of the domain name "somlivre.com" does not prevent Complainant from reflecting his mark in a corresponding domain name.
Respondent further denies that there is a pattern of conduct on his part to show that said domain name was registered in order to sale it. Respondent further states that he does not want to sell said domain name, even if he were to receive a good financial offer.
Respondent has rejected Complainantís contention as to the identity or similarity of Complainantís trademarks and the Domain Name at issue and has also objected to Complainantís accusation of bad faith.
In addition, Respondent has developed a number of arguments to demonstrate that words "som" and "livre" are very common and generic. It has further given ample explanations as to the scope of its actual and planned activities in connection with the Domain Name at issue and has filed ample evidence in support of the several arguments contained in the Response.
Respondent has finally requested the Administrative Panel to deny the remedies requested by Complainant.
6. Discussions and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:
a) that the domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
b) that the registrant of the domain name at issue has no rights or legitimate interests in respect of the domain name; and
c) that the domain name at issue has been registered and is being used in bad faith.
Identity or confusing similarity of domain name and trademarks
Respondent has stated that Domain Name "somlivre.com" and Complainantís trademark "SOM LIVRE" are neither identical nor confusingly similar.
Complainant has submitted evidence to demonstrate that he is the owner of several registrations in Brazil for Trademark "SOM LIVRE". Respondent has accepted this fact although he has argued that Trademark "SOM LIVRE" would lack distinctive character since it consists of generic words.
For this Panelist the important fact in this case is that the trademark "SOM LIVRE" of the Complainant is a legally registered trademark in Brazil and that this trademark is identical to Domain Name "som.livre.com" of the Respondent.
Right or Legitimate Interest in respect of Domain Name
The Policy, in Paragraph 4(c), provides for the circumstances which would prove Respondent legitimate interest in a Domain Name which is subject to dispute.
Respondent has argued that his right to use the Domain Name subject of this case would result from his intention to develop cultural businesses and projects related thereof. However, Respondent states that he is not infringing Complainantís rights because he is not using the Domain Name in question. In spite of this and in contradiction, Respondent further invites whomever has Internet access to visit his Internet address in order to show his intention to use the Domain Name.
This Panel concludes that Respondent has proved that he does not have " rights to and legitimate interests" in the Domain Name at issue.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy contains a list of circumstances which, when present in a particular case, shall constitute evidence of "the registration and use of a domain name in bad faith".
After careful examination of the evidence submitted by both parties in the present case, the Panel has found that at least the following of the listed circumstances are totally or partially present in this case:
a) The circumstance provided for in Paragraph 4(b)(ii): "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".
In the case at issue, Respondent has claimed that the main purpose for having registered the Domain Name "somlivre.com" was to develop cultural businesses and projects. However, Respondent has also accepted perfect knowledge of Complainant name, activities and trademark, which was only natural being both parties Brazilians and, in particular, being Complainant a very well-known company in that country.
Respondent has denied having registered the Domain Name at issue in order to prevent the owner of the Trademark "SOM LIVRE" to reflect same in the Domain Name and he denies as well, having a background of similar conducts in respect of other domain names.
Respondent in addition, emphatically argues that he does actually not use the Domain Name at issue and therefore no bad faith use can be attributed to him. In this respect it appears necessary to point out that the provision contained in Article 4.a.iii) of the Policy "...domain name has been registered and is being used in bad faith" can not be construed as limited to positive actions but it also implies "non-action". In certain circumstances the lack of action of a registrant of a domain name can be considered as equivalent to use in bad faith.
In this respect, a number of decisions within the WIPO international system of dispute settlements already exist that have established that the passive use of a Domain Name similar to a well-known or famous trademark does constitute use in bad faith on the part of the registrant. Decision of Case No. 2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows clearly decided that "non action" or lack of action may constitute use in bad faith. This decision has since been frequently quoted and has served as guidance in other cases, such as:
Case No. D2000-0021 Ingersoll-Rand v. Frank Gully, d/b/a Advcomren;
Case No. D2000-0021 Guerlain, S.A. v. Peikang;
Case No. D2000-0055 Compaq Computer Corp v. Boris Beric;
Case No. D2000-0042 Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd.;
Case No. D2000-0086 Sanrio Co. Ltd. and Sanrio, Inc. v. Lau;
Case No. D2000-0172 Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau;
Case No. D2000-0110 3636275 Canada, dba eResolutioon v. eResolution.com;
Case No.D2000-0090 Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.
Case No. D2000-0112 Stralfors AB v. P D S AB;
Case No. D2000-0075 InfoSpace.com, Inc. v. Ofer.
In the Telstra case, it was decided that "non action" may constitute bad faith both at the time of registration and in the subsequent non use, depending on the facts of the case.
In this particular case there is evidence that Respondent has engaged in a conduct of registration of famous and well-known marks, mainly in Brazil, either personally or through a company where he was a partner until January 2000. In fact, Respondent was the subject of WIPO Case No. 2000-0533, where the Administrative Panel decided to revoke his registration.
In view of all these circumstances, this Panel can conclude that Respondent uses the Domain Name at issue in bad faith.
b) Respondent has argued that he has not intended to make a commercial profit from the Domain Name at issue nor had he attempted to attract Internet users to his web site, not to tarnish the reputation of the Complainantís trademark. However, this statement is contradicted by his having registered a Domain Name .com, which shows that his evident intention was to develop a web site with commercial purposes. In this respect it is necessary to point out that at the time Respondent registered the Domain Name at issue, Complainant had already registered Domain Name "somlivre.com.br", a fact that considered together with the reputation of trademark "SOM LIVRE" and the fact that Respondent has claimed being an "E-businessman" and an "Internet professional", makes the Panel conclude that at the time of registering the Domain Name at issue Respondent was perfectly aware of the existence of registration "somlivre.com.br".
A number of other facts, attitudes and actions of Respondent since the registration of the Domain Name at issue, which are clearly reflected in Respondentís response and its annexes, have further contributed to convince this Panel to put in doubt the existence of good faith at the time Respondent obtained the registration of Domain Name "somlivre.com" and, in particular, thereafter in the use of such Domain Name.
The Administrative Panel decides that Complainant has proven each of the three elements provided for in Paragraph 4(a) of the Uniform Policy. Accordingly, the Administrative Panel requires that Domain Name "somlivre.com" be transferred to Complainant, Sigla Sistema Globo de Gravaçoes Audio Visuais Ltda.
Dated: September 15, 2000