WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sigla Sistemas Globo de Gravações Audiovisuais Ltda. v. Italo de Barros Naddeo
Case No. D2000-0733
1. The Parties
The Complainant is Sigla Sistemas Globo de Gravações Audiovisuais Ltda., a company based in Rio de Janeiro, Brazil, with its principal place of business located at Rua Assunção, 443, Depto . Jurídico, Rio de Janeiro, Rio de Janeiro, Brazil (the "Complainant") . Respondent is Mr. Italo de Barros Naddeo, who resides at Rua Antônio Fraga, 151, Florestal, Minas Gerais, 35690-000, Brasil (the "Respondent").
2. The Domain Name and Registrar
The domain names at issue are "somlivre.net" and "somlivre.org". The registrar is eNom, Inc. (the "REGISTRAR") of Redmond, Washington, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of the Complainant on July 4, 2000, by email , and on July 7, 2000, in hardcopy.
The Complainant payed the required fee .
On August 17, 2000, the REGISTRAR confirmed to the Center that the domain names in dispute were registeredthrough the REGISTRAR and that the "current registrant" is the Respondent.
Having verified that the Complaint satisfies the formal requirements of the ICAN N 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 September 11, 2000, sent to the Respondent a notif ication under Paragraph 2(a) of the Rules together with copies of the Complaint.
The Respondent d id not answer to the Complaint, and in consequence , the Center sent to the parties on October 3, 2000, the Notification of Respondent Default.
On October 11, 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 October 16, 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 SOM LIVRE. The Complainant attached copies proving that it registered the trademark in Brazil in the years 1981, and 1982, for different articles in class 09.40, having also 16 trademark applications issued in 1999, (previous to the domain names registration by the Respondent) for different variations of trademarks containing the denomination SOM LIVRE.
The Complainant asserts that for 30 years it has continuously and extensively advertised and promoted its SOM LIVRE mark in numerous communications media throughout Brazil and other countries. The Complainant also uses SOM LIVRE trademark as a domain name, being registrant of the domain name "somlivre.com.br" under which the Complainant’s has a web site.
The Complainant affirms that it has developed substantial goodwill, name and brand recognition under SOM LIVRE trademark, based on its long and extensive use of such trademark.
5. Parties' Contentions
5.1 Complainant contends that:
a) The domain names "somlivre.net" and "somlivre.org" are identical, and therefore confusingly similar to the trademark SOM LIVRE, because:
i) It incorporates fully the SOM LIVRE trademark textual components, with the sole difference being the particles ".net" and ".org" addition.
ii) The use of the phoneme "somlivre" has suggestions, connotations and commercial impressions associated with the Complainant and with Complainant's phonographic products and services.
b) Respondent has no legitimate interest in the contested domain names, because:
i) The domain names are not being used in connection with a bona fide offering of goods and services.
ii) The Respondent, is not commonly known or identified by the name "somlivre".
iii) The Respondent does not operate a business known as "somlivre" nor offer goods or services under the "somlivre" name or trademark.
iv) Respondent has not acquired trademark or service mark rights for the SOM LIVRE 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 SOM LIVRE trademark nor to use any domain name incorporating such trademark.
c) The "somlivre.net" and "somlivre.org " domain names have been registered and are being used in bad faith, because:
i) Respondent does not conduct any legitimate commercial or noncommercial business under SOM LIVRE trademark.
ii) Respondent has registered "somlivre.net" and "somlivre.org" domain names 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 "somlivre.net" and "somlivre.org" domain names in order to prevent Complainant from reflecting its marks with corresponding domain name unless Complainant purchases or rent the domain name from Respondent.
d) By registering " somlivre.net" and "somlivre.org" domain names, 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 registering "somlivre.net" and "somlivre.org" domain names, respondent is giving the impression that Complainant does not have a web site.
f) If Respondent sells the "somlivre.net" and "somlivre.org" domain names to a competitor of Complainant, that competitor of Complainant could likewise use these domain names to disrupt the business of the Complainant and cause a substantial likelihood of confusion and substantial actual confusion among persons trying to reach Complainant’s business, or to obtain information about Complainant phonographic activities, over the Internet.
g) Respondent's use of the "somlivre.net" and "somlivre.org" domain names is diluting and weakening the unique and distinctive significance of Complainant's SOM LIVRE trademark.
h) Respondent's use of domain names 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 SOM LIVRE 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 as follows:
"4.a.(i) Identity or Confusing Similarity"
Considering that the particles ".net" and ".org" are attributes of the respective gTLD, common to all the domain names under this TLD, and that there is no significance in the absence of a separation between the words "som" and "livre", it is beyond question that the trademark SOM LIVRE is identical to the domain names "somlivre.net" and "somlivre.org". Therefore, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain
Neither "Somlivre" nor "Som Livre" (nor "som" or "livre" separately) are part of the name of the individual that registered "somlivre.net" and "somlivre.org" domain names. The Respondent has not answered to the Complaint nor gave any basis to a right or legitimate interest in respect to the use of the phoneme "somlivre" as a domain name.
On this basis, the Panelist concludes that the Respondent has not any legitimate interest in the domain names "somlivre.net" and "somlivre.org". Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
Being "Som Livre" a fantasy denomination, and at the same time a well known trademark in the Latin American phonographic market, it is not likely that a legitimate reason could have driven the Complainant (a person apparently engaged in "visual communication, creation and art" activities) to choose this denomination as domain name. The Panelist is forced to conclude that the reason for that choice was the intention to use as domain name the trademark of a well-known company. Therefore, the domain name registration was registered in bad faith.
The Complainant attached copies of two Internet pages identified as "Home Page for www.somlivre.net" and "Home Page for www.somlivre.org" were the REGISTRAR provided a service giving the "Welcome" message to those that use the disputed domain names as addresses in an Internet navigation. The Panelist entered in his Internet navigation tool the addresses "somlivre.net" and "somlivre.org" acceding to those pages. In consequence, the Panelist considers indisputable that the domain names are not being used as addresses of that result in an active Internet site.
The Complainant also attached copies proving that the Respondent is the administrative, technical and billing contact of the company Artmidia Comunicacao Visual Criacao e Arte Ltda. ("Artmidia") and that Artmidia and/or Mr. Nelson Abras (also in the position of administrative, technical and billing contact of Artmidia) has registered different domain names containing well known trademarks of that belong to different trademark holders. The Complainant also attached copies proving that the Respondent is the administrative, technical and billing contact of the company Artmidia Comunicação Visual Criacao e Arte Ltda. ("Artmidia") and that Artmidia and/or Mr. Nelson Abras (also in the position of administrative, technical and billing contact of Artmidia) has registered different domain names containing very well known trademarks belonging to different parties. The Panelist shall take into account these circumstances as confirmation of an intentional retention of the domain names by the Respondent in the present Case.
In different decisions, the Center's administrative panels considered the "passive" use of a domain name registered in bad faith as a bad faith use, because in the practice "it prevents the owner of the trademark or service mark from reflecting the mark in a corresponding domain name" and introduces the risk of the domain name being transferred to a competitor or to be used to confound the initial interest of Internet users. The circumstances of the Case and the silence of 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 names, convince the Panelist that in the present case exists a passive use in bad faith of the domain names in dispute.
Because of this, the Panelist arrives at the conclusion that the Respondent has registered and used "somlivre.net" and "somlivre.org" domain names with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is met.
Complainant has proved that the domain names are identical to its trademarks, that Respondent has no rights or legitimate interest in the domain names, and that Respondent registered and used the domain names in bad faith. Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain names "somlivre.net" and "somlivre.org" be transferred to the Complainant.
Dated: October 23, 2000