WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TV Globo Ltda. v. Globoesportes.com

Case No. D2000 Ė 0791

 

1. The Parties

The Complainant is TV Globo Ltda., a Brazilian corporation with its principal place of business at Rua Marques de Sao Vicente, 30, Sobreloja, Depto. Juridico, Rio de Janeiro, Brazil. It is represented by Senhor Luis F. Matos Jr Esq., of Matos & Associates, Attorneys, Rio de Janeiro, Brazil.

The Respondent is Globoesportes.com, for which the address appearing on the WHOIS database is Lu Sindu, 654, Konu, AS, 07890, India.

 

2. The Domain Name and Registrar

The domain name at issue is "globoesportes.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI"). The domain name was registered on March 27, 2000.

 

3. Procedural History

The Complaint submitted by TV Globo Ltda. was received on July 14, 2000, (electronic version) July 17, 200 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). An amendment to the Complaint was received by email on July 25, 2000, and in hardcopy on July 28, 2000.

On or about July 17, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

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 was in effect.

Indicate the current status of the domain name.

By email dated July 18, 2000, the Registrar advised WIPO Center as follows:

NSI had not received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name registration "globoesportes.com".

The Respondent is shown as the "current registrant" of the domain name "globoesportes.com". The registrantís contact details are as above.

The administrative and billing contact is: Barro, James, elifoot.net at the same address.

The technical and zone contact is Ben Neumann, 7775 Sunset Blvd #102, Los Angeles, CA. USA.

NSIís 5.0 Service Agreement is in effect.

The domain name registration "globoesportes.com" is in "Active" status.

NSI has currently incorporated its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of the NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules and after various communications with the Complainant, the WIPO Center on August 2, 2000, transmitted by post/courier and by email a notification of Complaint as amended and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (August 21, 2000). The Respondent 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 28, 2000, the WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On August 28, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On September 4, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on September 11, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by September 17, 2000.

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.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is the largest television company in Brazil. For 35 years it has been engaged in producing, exhibiting and providing television and entertainment products and services which, covers all Brazil. Its products and services and programmes are available in 130 other countries.

The Complainant has more than 8000 permanent employees and gives contract outsource work to an additional 4000. Its audiences are scattered throughout 99.84% of Brazilís 5043 municipal districts. Its advertising revenues absorb 75% of all Brazilís placement budgets.

The Complainant obtained a trademark registration in Brazil for its Globo Esporte mark in 1982. The registration expired in 1992 and in 1998 an application for re-registration was filed which has not been finalized. It has used the Globo Esporte mark since 1978 to advertise and identify its television and entertainment products in Brazil. The mark is known in other countries since it is used by the Complainantís international television channel. The mark is registered in 15 different countries. The Complainant has registered trademarks using the word globo in Brazil, the EU and 12 other countries.

The Complainant utilizes the Globo Esporte mark on its website "redeglobo.com.br".

The Respondent has no licence to use the mark and no legitimate interest in it. A visitor to the website "globoesportes.com" is informed that the page cannot be displayed.

Another WIPO Panelist has upheld a Complaint by the present Complaint against Radio Morena in respect of the domain name "globoesporte": (see WIPO Decision D2000 Ė 0245).

 

5. Partiesí Contentions

The Complainant submits that the only possible conclusion must be the Respondent registered and is using a variant of its world-famous mark, "globoesporte", in bad faith. The Respondent has no legitimate rights to the mark. The domain name is confusingly similar to the Complainantís mark.

The Respondent has made no submissions.

 

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; and

That the Respondent has no rights or legitimate interests in respect of the domain name; and

That the domain name has been registered and is being used by the Respondent in bad faith.

The domain name "globoesportes.com". is confusingly similar to the Complainantís mark. The addition of the letter "s" does nothing to eliminate the confusion.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue. The Respondent has never suggested to the contrary. Nor is there any indication that the Respondent is known by the name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(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; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the disputed domain name "globoesportes.com" in "bad faith" for the following reasons:

(a) "globoesportes.com" is so obviously connected with a well-known mark that its very use by someone with no connection with the mark of the Complainant suggests opportunistic bad faith.

(b) This is not a case, sometimes encountered, where a Respondent in a distant country has registered a generic word as a domain name which word happens to be similar to a registered mark in another country. The Respondent, in India, deliberately chose a domain name in the Portuguese language which is the mark of the largest television operator in the worldís largest Portuguese-speaking country. Registration in bad faith is easily inferred in these circumstances.

(c) Bad faith use is indicated through the failure to develop the website. It is hard to see what use the Respondent would want to make of the domain, other than to sell it to the Complainant.

The present situation is similar to that in Educational Tertiary Service v TOEFL (WIPO Case D2000-0044) where the learned Panelist said:

"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainantís trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainantís trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainantís trademark in connection with the [domain name] at issue."

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "globoesportes.com" has been registered and is being used by the Respondent in bad faith

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists world-wide under the ICANN Policy provides a fruitful source of precedent. Blatant cybersquatters who register famous marks for speculative purposes, receive scant acceptance.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is identical to the trademark 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 "globoesportes.com" be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Dated: September 12, 2000