WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Club de Regatas Vasco da Gama v. Building Centre International
Case No. D2000-0739
1. The Parties
The Complainant is:
Club de Regatas Vasco da Gama
Rua General Almerio de Moura 131
São Cristovão - 20921-060
Rio de Janeiro - Brazil
Mr. Peter Eduardo Siemsen.
Rua Marques de Olinda, 70.
Botafogo – 20001-970
Rio de Janeiro – Brazil.
The Respondent is:
Building Centre International.
20808 North East 37th. Avenue
Aventura – 33180.
Florida – USA.
Ms. Silvia Regina Dain Galdelman.
Rua São José, 40 (10th. Floor)
Centro – 02010-020.
Rio de Janeiro – Brazil.
2. The Domain Name and Registrar
The disputed domain name is: <vascodagama.com>. The registrar for this domain name is Network Solutions Incorporated (NSI), 505 Huntmar Park Drive, Herndon, VA 20270, Virginia, USA.
3. Procedural History
This domain name dispute is to be decided under the Internet Corporation for Assigned Names and Numbers (ICANN) Policy and Rules (the Policy and the Rules) and the Supplemental Rules of the World Intellectual Property Organization’s Arbitration and Mediation Center (the Center).
The Center received the Complaint of Club de Regatas Vasco da Gama on July 5, 2000, by e-mail and on July 11, 2000, in hardcopy. The Complainant paid the required fee.
On July 14, 2000, the Center received the response to the request it had made to the registrar NSI, concerning the verification of registration data, in which the registrar confirmed, inter alia, that it is the registrar of the domain name in dispute, that <vascodagama.com> is registered in the Respondent's name and that it is in "Active" status.
On July 26, 2000, having verified that the Complaint satisfies the formal requirements, the Center sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
On August 31, 2000, the Center appointed Mr. Eduardo Magalhães Machado as the single member of the Administrative Panel (the "Panel") and notified the parties of this appointment.
4. Factual Background
4.1 The Trademark
The complaint is based on ownership of the trademark VASCO DA GAMA, registered in Brazil before INPI-Instituto Nacional da Propriedade Industrial under certificate number 006.433.960 of August 10, 1976, duly renewed since then and valid until August 10, 2006 (as per Exhibit 08 of the Complaint).
The Complainant affirms that it was established on August 21, 1898 in the city of Rio de Janeiro and it is known, since then, as VASCO DA GAMA. The club initiated its involvement with football eighteen years after its foundation, joining the first division of the football league of the state of Rio de Janeiro and winning the championship in 1923.
The club has, since then, won several national and international tournaments and according to the Complaint it has no less than 7.400.000 (seven million and four hundred thousand) supporters throughout the country of Brazil.
5. Parties' Contentions
5.1 The Complaint
The Complainant submitted the complaint regarding the domain name <vascodagama.com> based on the following arguments:
a) The domain name <vascodagama.com> is identical to the registered trademark VASCO DA GAMA. There is a similitude, in appearance, pronunciation and sound; the addition of ".com" to the domain name is a necessary element of the domain and not a voluntary chosen addition;
b) Due to the Complaint´s renown before the Brazilian population, the use of the word "vascodagama" provoke the suggestion, connotation and commercial impression of the Complainant’s reputation.
c) The Respondent has no legitimate interest in the contested domain name, since the only entity which has legitimate rights is the Complainant, especially when it is used in connection with football or any other sport.
d) The Respondent does not operate any business or other type of organization known as VASCO DA GAMA and does not own any registration for the mark VASCO DA GAMA before the aforesaid Agency (INPI).
e) The Respondent has no authorization from the Complainant to use its trademark VASCO DA GAMA and has no relationship with the Complainant that could lead to the assumption of an implicit authorization to use the disputed domain name.
f) The <vascodagama.com> domain name has been registered and is being used in bad faith since the legal representatives of the Respondent are Brazilian citizens and, as such, certainly know the Complainant and its nationwide renown in the sporting field;
g) Bad faith can also be proven by the fact that the Respondent has also registered the name of other Brazilian football teams as domain names before NSI, such as <fluminense.com> and <guarani.com>, as per Exhibit 10 of the Complaint.
h) As per the doctrine cited by the Complainant in the Nabisco Brands Company V. The Patron Group case (D2000-0032), the panel in that case considered the Respondent's ownership of several domain names identical to other well-known US trademarks, to be a relevant circumstance proving the bad faith of the Respondent. According to the Complainant, the aforesaid decision is analogous to the present situation.
i) Also proof of bad faith, in the Complainant’s opinion, is the fact that the disputed domain name <vascodagama.com>is being used to re-direct Internet users to the site <futeboltotal.com>, which is controlled by the Respondent and provides information about football. Therefore, Internet users attempting to access the Complainant’s web site through the name <vascodagama.com> are confronted with the Respondent’s web site.
j) The aforesaid web site also provides an e-mail service for addresses that are personalized and formed by the domain name of the user's favorite football team such as <vascodagama>, the dispute domain name. According to the Complainant, that service, which costs U$ 14,95 per year, helps the Respondent to attract Internet users, sponsors, publicity and other investments to his web site.
k) The Complainant concludes that, pursuant to Paragraph 4 (a) of the Uniform Policy for Domain Names Dispute Resolution, it has been proved that the disputed domain name <vascodagama.com> is identical to the trademark in which the Complainant has rights, that the Respondent has no right or legitimate interest in respect to the registration and/or use of that domain name, and that it has been registered in bad faith.
5.2 The Response
The Respondent has submitted a response concerning the dispute involving the domain name <vascodagama.com> based on the following arguments:
a) Although the domain name in question (<vascodagama.com>) is identical to a trademark in which the Complainant has rights, the existence of bad faith cannot be proven due to the fact that the registration obtained through NSI has been authorized by the Complainant, as per the document attached to response and named "Acordo de Estipulação de Direitos e Obrigações" entered between the Complainant and Centro de Construção Informação e Processamento Ltda.
b) In accordance with the Respondent’s arguments, Centro de Construção would invest in the creation of the Complainant’s web site, including installation, maintenance, marketing and domain name registration.
c) After that, Centro da Construção has licensed the Respondent to register and protect the domain name <vascodagama.com> in the USA and also to protect said domain name worldwide.
d) Furthermore, in accordance with the Respondent’s arguments, the Complainant was aware of the registration of the domain name <vascodagama.com> because the web site created by Centro da Construção was active for two years and has been advertised on the Complainant’s official magazine and used, among other things, to enable the acquisition of official products of the Complainant.
e) The Respondent argues that the Complainant decided to create a new web site under ".com.br" which is more popular in Brazil and that the aforesaid "Acordo" did not oblige the Respondent (or its Licensor) to transfer the domain name back to the Complainant at the end of its term.
f) The Respondent concludes that registration of the domain name <vascodagama.com> was in good faith because, in accordance with the terms of the above mentioned license entered between the Respondent and Centro de Construção, the Respondent was entitled to obtain that domain name registration.
g) Finally, in the Respondent's view, the accusation made by the Complainant that the Respondent is responsible for the registration, on its behalf, of the name of several Brazilian football teams, such as <fluminese.com> and <guarani.com>, is irresponsible because the Complainant knows that the individuals mentioned in the Complaint are responsible for the "official web sites" of several important soccer teams in Brazil, including, until recently, Vasco da Gama.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the The Complainant must prove each of the following circumstances:
(i) The domain name is identical or confusingly similar to the VASCO DA GAMA trademark; and
(ii) Building Centre International Corporation, the Respondent, has no rights or legitimate interests in respect of the domain name <vascodagama.com>; and
(iii) The domain name <vascodagama.com> has been registered and is being used in bad faith.
The policy furthermore describes illustrative circumstances, without limitation, which form the basis for proving these elements.
a) The Panel finds that the disputed domain name <vascodagama.com> is identical to the trademark VASCO DA GAMA registered and used by the Complainant. This fact has been acknowledged by the Respondent in the Response.
6.2 Rights or legitimate interests
a) Although the Respondent argues that the registration of the domain name <vascodagama.com> was made with the prior knowledge and approval of the Complainant, the Acordo does not contain any specific reference to the right, presumably given by the The Complainant, to register the domain name <vascodagama.com> in the name of any other party.
b) In fact, clause 01 of the Acordo states that Centro de Construção is "authorized to create the official presence of the Club on the Internet, known as official page of Vasco da Gama on the Internet".
c) Moreover, clause 02 of the Acordo establishes that the responsibilities of Centro de Construção would be the "creation, insertion, management/maintenance and marketing" of the site.
d) Accordingly, there is no specific reference to any right being given to any third party, including Centro de Construção, to register the disputed domain name.
e) Furthermore, the Acordo contains no provision granting to Centro de Construção the right to "license" any other party to register the domain name <vascodagama.com>, either in its own name or the name of said "licensed" company.
f) Another agreement attached to the Response, this one named "Instrumento Particular de Licença de Registro de Nomes de Domínio" (Instrumento Particular), entered between the Respondent and Centro de Construção, bears no signature on behalf of the Complainant evidencing its knowledge or approval of the terms of this agreement, including the registration of the domain name <vascodagama.com>.
g) Furthermore, clause 08 of the Instrumento Particular establishes that the Respondent may use the domain name <fluminese.com> for other non-conflicting activities. However, the document is related to the domain name <vascodagama.com> and not <fluminense.com>.
h) In addition to the above, Centro de Construções, the company hired to create and manage the official web site, is established in Brazil and the trademark search at the database system of the Brazilian Patent and Trademark Office (INPI) did not disclose any identical or similar mark to VASCO DA GAMA registered in the name of that company (or even in the name of the Respondent).
i) In view of the above, the Panel finds that the Respondent has no legitimate right to register and/or use the domain name <vascodagama.com>
6.3 Bad faith
a) The Panel is of the opinion that the registration and use of the domain name <vascodagama.com> took place in bad faith.
b) As circumstances supporting this conclusion, it should be mentioned that no document submitted by the Respondent makes specific reference to the right given by the Complainant to register the disputed domain name.
c) On the contrary, the Acordo between the Complainant and Centro de Construções refers only to the "creation of the official presence of the Club on the Internet, known as "Official Page of Vasco da Gama", which, the Panel notes, should be distinguished from the registration of a domain name to host such content.
d) As mentioned above, the Acordo specifically refers to the creation and maintenance of the content and not the registration of the domain name.
e) In its turn, the Instrumento Particular entered between the Respondent and Centro de Construções confers the right to the registration of that domain name (<vascodagama.com>) by the Respondent since such registration, according to the terms of the Instrumento Particular, is "easier to be made by that company (the Respondent) than by Centro de Construção, which is a company established in Brazil".
f) However, having consulted NSI's terms for domain name registration, the Panel notes the absence of a distinction between applications filed by foreign entities and those domiciled in the United States. Thus, the above information does not reflect the reality in terms of difficulty for the registration by the Complainant itself.
g) In the view of the Panel, the Respondent’s registration of the disputed domain name with full knowledge that the name belonged to the Complainant infringed the Registrar Service Agreement in §17 (ii), which states: "to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain will directly or indirectly infringe the legal rights of a third party".
h) Corroborating that view point, it must also be considered that the Respondent has also registered in its own name domain names containing the names of other well-known Brazilian football teams, such as <fluminese.com> and <guarani.com>, thus confirming that the Respondent is aware of the fact that these names, and especially the disputed domain name, correspond to Brazilian football teams.
i) Furthermore, the Respondent is actually using the disputed domain name <vascodagama.com> and others of Brazilian football teams as access to the web site <futeboltotal.com>, registered in its own name, thus re-directing Internet users who entered the name of their teams (such as <vascodagama>, <fluminense> or <guarani>) to such web site.
j) Such re-directing of users increases the traffic to this web site (<futeboltotal.com>), taking into consideration that football fans are looking for information on their teams when they select their names and then find the Respondent’s web site.
k) The Respondent is also profiting by offering an e-mail service for addresses to be formed with the domain name of the user’s favorite football team, against the annual fee of U$ 14,95.
l) In view of these facts and documentation attached both by the Complainant and the Respondent, the Panel finds that the Respondent registered and used the domain name <vascodagama.com> in bad faith.
In light of the foregoing, the Panel decides that the domain name registered by Building Centre International (the Respondent) is identical to the trademark VASCO DA GAMA previously registered in the name of Club de Regatas Vasco da Gama (the Complainant), that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name in issue has been registered and used in bad faith.
Accordingly, this Panel requires that the registration of the domain name <vascodagama.com> be transferred to the Complainant, Club de Regatas Vasco da Gama.
Eduardo Magalhães Machado
Dated: September 06, 2000