WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Empresa Brasileira de Compressores S.A - EMBRACO v. Artimidida Comunicação Visual Criação e Arte Ltda.
Case No. D2000-0943
1. The Parties
The Complainant is Empresa Brasileira de Compressores S.A - Embraco, a company based in the State of Santa Catarina, Brazil with its principal place of business located at Rua Rui Barbosa, 1020, Joinville, Santa Catarina, Brazil. Respondent is Artimidida Comunicação Visual Criação e Arte Ltda., a company based in the State of Minas Gerais, Brazil, with its place of business located at Av. Prudente de Morais, nš 287, 1401, Cidade Jardim, Belo Horizonte, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The domain name at issue is "embraco.com", registered on May 6, 1997. The registrar is Network Solutions, Inc. ("NSI") of Herndon, Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Empresa Brasileira de Compressores S.A. - Embraco, on August 4, 2000, by e-mail and on August 8, 2000, in hardcopy.
The Complainant made the required fee payment.
On August 25, 2000, the Center received the Reply byof Artimidida Comunicação Visual Criação e Arte Ltda. by e-mail.
On August 31, 2000, the Center received from the Complainant a request for Acceptance of Supplement to the Complaint filed electronically and on September 04, 2000, in hardcopy.
Later, on September 18, 2000, the Center received by e-mail from the Complainant another request, this time; to submit case related decisions (hardcopy received on September 20, 2000).
On September 20, 2000, the Center sent a communication e-mail to the Respondent (copied to the Complainant).
On September 24, 2000, the Registrar NSI answered the Centerīs request for verification of registration data and confirmed, inter alia, that it is the Registrar of the domain name in dispute, registered under the Respondent's name and in "Active" status.
Having verified that the Complaint satisfies the formal requirements of the ICANN 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 25, 2000, sent to the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
On October 13, 2000, the Center received Respondent's Response by e-mail, which the Center acknowledged to the parties on October 31, 2000. A hardcopy of the Response was received by the Center on October 19, 2000.
On November 17, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence by the Panel, the Center appointed Mr. Mark Partridge, Mr. Geert Glas and Mr. Luiz Edgard Pimenta ("Presiding Panelist") as the three-member of the Administrative Panel. On the same date, the Center notified the parties of this appointment.
On November 26, 2000, the Presiding Panelist received via courier a complete copy of the Complaint, the Response, Complainantīs Acceptance of Supplement and the case related decisions and the corresponding enclosures.
On November 28, 2000, the Panel notified the Center requesting na of time for the decision, and that same would be rendered by ------, 2000.
4. Factual Background
The trademark upon which the Complaint is based is EMBRACO. The word "embraco" is an acronym of the Complainant corporate name: EMpresa BRAsileira de COompressores S.A.
The Complainant said that its first use of the trademark EMBRACO dates March 1971, (in connection with its business and as a trade name). Complainant registered the trademark EMBRACO in Brazil for "industrial machines and compressors" in the year 1980, (duly renewed) and for "industrial machines, equipment and devices in general; machines and equipment destined to heat, generate steam, refrigerate, dry, ventilate and devices destined to distribute liquid and gas for industrial use; parts, components and accessories of machines, vehicles, implements, devices and transport means" in the year of 1999.
Complainant also mentions that the trademark "EMBRACO" is a notorious and a well-known trademark in Brazil where both Respondent and Complainant are located.
Complainant asserts that it has continuously and extensively used and promoted its EMBRACO trademark since 1971, to distinguish , specially,specially compressors, including to identify its web site "embraco.com.br".
The Complainant declares that it is the largest manufecturermanufacturer in the world of air-tight compressors for refrigeration, supplying approximately 75% of the Brazilian market and 23% of the world-wide market andmarket, gaining revenues onin the range of u$ 682 million during the 1999, fiscal year.
Complainant also owns the US trademark registration nš 1.252.158 issued on September 1983, for the trademark "EMBRACO" for "electric motors and parts therefor, for use in refrigeration".
The Complainant also alleges that it has obtained more than 50 registrations for trademark "EMBRACO" world wide (such as Argentina, Chile, Jamaica, Bolivia, France, Haiti, China, Saudi Arabia, Italy, Mexico, South Africa, Hong Kong, etc), importantetc). Important is to mention that in several countries its trademark has been registered prior to Respondentīs registration of the domain name "embraco.com".
As per the documentation attached by the Complainant, on May 06, 1997, Respondent registered the domain name "embraco.com" before thewith Network Solution. The Respondent has not at that time (nor at the present) trademark or tradename including the word "embraco". The Respondent was never related with a private, social or commercial activity identified with the word "embraco" or with any other word or phrase similar to or including "embraco".
On March 23, 1998, Complainant sent a letter notifying Respondent of the companyComplainants rights on the EMBRACOīs rightstrademark and alerting Respondent that Complainant considered Respondentīs registration of the "embraco.com" to be trademark infringement. In suchthe same letter the Empresa Brasileira de Compressores S.A. - EMBRACO demanded Respondent to cease and desist use of the disputed domain name. Until September 16, 1999, Respondentīs "embraco.com" web site was still not active.
Later, on September 27, 1999, Complainantīs U.S. counsel wrote another letter to Respondent once again accusing Respondent of violating Complainantīs trademark rights.
On October 5, 1999, Complainant finally received a response from a representative of the Respondent claiming that "first come, first server is the basic principle of domain names". The e-mail correspondence from Respondentīs representative also stated that Respondent was prepared to "negotiate" the domain name, and warned that other people were interested in the domain name.
After the new ICANN domain name dispute rules took effect, Respondent finally chose to activate its "embraco.com" web site and since then it has been currently using its domain name for commercial purposes.
The Respondent affirms that in 1997, he registered the domain name "embraco.com" because he saw in the internet an opportunity to create a new business, so he created a virtual company named EMBRACO to increase the possibilities to small and medium Brazilian companies advertise its products. Respondent however did not submit any evidence sustaining the creation and the existence of this virtual company.
Respondent argues that EMBRACO should be considered a generic term in Brazil once it is used as a trademark by several different Brazilian companies, acting in different markets.
Another point used by the Respondent in its Reply is that the activities of the Complainant are completely different of the Respondentīs business sobusiness, meaning therefore that if the trademark EMBRACO could coexist with several others trademarks EMBRACO registered in the name of different title holders, it could also be able to coexist with the domain name "embraco.com".
5. Parties' Contentions
5.1 Complainant contends that:
a) The domain name "embraco.com" is identical, and therefore confusingly similar to the trademark EMBRACO, because there is an absolute similitude between the word "embraco" in the trademark and in the domain name.
b) Respondent has no legitimate interest in the contested domain name, because:
i) Respondent had notice of the dispute as of March 23, 1998, and made no use of the domain name until September, 1999, so Respondent cannot show that it uses the domain name in connection with bona fide offering of goods or services once it took so long to show its efforts before any notice of the dispute (as stated in Paragraph 4(c)(i) of the Policy.);
ii) The Respondent, as an individual, is not identified by the name "embraco";
iii) The Respondent does not operate a business known as "embraco" nor offer goods or services under the "embraco" name or trademark;
iv) The Respondent has no rights of any type on the trademark "embraco" in the USA (or anywhere else as it is known);
v) The Respondent is not making a noncommercial or fair use of the domain name;
vi) The Respondent has no authorization of the Complainant to use its trademark "embraco";
vii) The word "embraco" is an invented word formed by the initials of the words composing the Complainant's corporate name;
viii) The Respondent ownsregistered several domain names registered before the Register and thenames, a major part of themwhich are identical to famous and well known marks of other Brazilian entities;
The Respondent has stated its desires to "negotiate" the domain name "embraco.com" and also mentioned that other people were interested in the domain name; and
x) The trademark "embraco" has been registered in Brazil, the home country of both Complainant and Respondent, since 1980.
c) The "embraco.com" domain name has been registered and is being used in bad faith, because:
i) Respondent does not conduct any legitimate business under the "embraco" trademark;
ii) The reservation of the "embraco.com" domain name impede the owner of the trademark EMBRACO to use it as a domain name in the gTDL ".com" and the Respondent has engaged in a pattern of this obstructive conduct;
iii) The reservation of the "embraco.com" domain name by the Respondent diverts consumers from the Complainant site andComplainants site and makes it difficult for the public to locate this site;
iv) The reservation of the "embraco.com" domain name by the Respondent constitutes a false representation of legitimate link between the parties;
v) Respondent has offered to "negotiate" the sale of the domain name "embraco.com" to Complainant;
vi) Respondent warned the Complainant that there were other people interested in the domain name;
vii) The use of "embraco.com" domain name by a competing company acquiring it or by the Respondent, could disrupt Complainant's business and cause substantial confusion among the public trying to reach the web site of the Complainant;
viii) Respondent prevented Complainant from using "embraco" as a domain name while it passively held this name for more than two years;
ix) Respondent has registered several ".com" variations of well-known Brazilian trademarks, whose owners have previously registered the corresponding ".com.br" variations;
x) Respondent should knew or have known of the Complainantīs pre-existing rights in the trademark "embraco"; and
xi) As stated in the Complainantīs Supplement to the Complaint, Complainant declares and proves that Inin 1998, it received a letter from Respondent claiming that the domain name was registered for use in connection with "agricultural-organic project" involving a civil association and "an Israelite company skilled at agriculture" and in the Reply to this Complaint Respondent claims that it developed the web site "embraco.com" in 1997, to create a method for Brazilian companies to advertise their products and services inexpensively. This fact demonstrates an incoherence in the Respondentīs activities.
5.2 Respondent contends that:
a) EMBRACO is a generic term in the Portuguese language (although same it does not appear in Brazilian Dictionaries);
b) EMBRACO is used as trademark for by several different Brazilian companies to and distinguishhing products and services in different activities;
c) The Complainant is using a legal way (WIPOīs procedure) to achieve an illegal, or at least unfair objective (domain name "embraco.com");
d) Complainant is a powerful company and in view of that not satisfied with the registration of its domain name under ".net"; Complainant wants to have all the domain names composed by the term "embraco" (inclusive "embraco.com") and believes that it deserves it;
e) Respondent saw in the internet an opportunity to create a new business, realizing that small and medium Brazilian companies did not have a way to advertise its products and services because of the price of the advertising. So the Respondent created a virtual company named EMBRACO (Empresa Brasileira de Comunicação) to create a method for Brazilian companies to advertise their products and services inexpensively;
f) The Respondent made the registration of some domains that were available by request of the trademark holders;
g) The Complainant never did a friendly contact to the Respondent. The request was to give the domain name to the Complainant (as an order), and the Respondent never felt like having to obey to the authoritarian commands of the Complainant;
h) Since the Respondent took more than one year to respond to the Complainantīs letter it shows that Respondent has no interest in selling its domain;
i) Respondent states that the term "negotiate" used in its letter does not have the same meaning of than the word "sell";
j) Respondent and Complainant are not in the same relevant market, so the customers of the cComplainant will not buy something from the Respondent and vice-versa;
k) He Respondent never used the domain name and therefore "embraco.com" is not being used in bad faith.
l) Finally, in response to the facts appointed exposed in the Complainants Supplement to the Complaint Respondent stated that its project to use the domain name related to an agricultural-organic project did not go on and ARTIMIDIDA COMUNICAÇÃO VISUAL CRIAÇÃO E ARTE LTDA (owned by Mr. Nelson Abras), made a deal with its clients and started to use the domain name "embraco.com" as the virtual address for its virtual company Empresa Brasileira de Comunicações, that is why the project mentioned in the letter of 1998, sent to the Complainant is different from the one stated in its Reply (where Respondent states that. it developed the web site "embraco.com" to create a method for Brazilian companies to advertise their products and services inexpensively.
6. Discussion and Findings
First of all, it should be noted that the registrant of the domain name "embraco.com" is Mr. Nelson Abras, and that the Respondent isnot him, but a Brazilian Company named Artimidida Comunicação Visual Criação e Arte Ltda.
In spite of the fact that the Respondent has not clarifiedy this relationship, it seems that the Registrant and the Respondent are in someway connected,fact the same person, so we are considering this defense as being made on behalf of Registrant.
On the other hand, the Policy instituteThe Policy institutes in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points.
4.a.(i) Identity or Confusing Similarity
Since Being the particle ".com" is merely an attribute to this kind of the gTDL common to all the domain names under this TDL, the Panel finds that, in view of the above, there is no possibility to discuss that the trademark EMBRACO is not identical to the domain name "Embraco.com". Therefore, the requirement of Paragraph 4.a.(i) is has been met.
4.a.(ii) Absence of Respondents Rights or Legitimate Interests in the Domain Name
This Panel does not consider "Embraco" to be a generic term, a common word, or even a word possible to find in the English or Portuguese Dictionaries or in a Dictionarydictionaries or in a dictionary of any other language nor a fantasy composition between two or more words included in a dictionary.
In his Reply, Respondent has mentioned several times how generic the term "EMBRACO" was, but never succeeded in demonstrating such fact, and did not evidenced its alleged legitimate rights in the name EMBRACO. Respondent should had shown his legitimate rights and not that there are others who might have such rights.
The trademark EMBRACO is therefore distinctive and has not acquired secondary meaning.
Thesole and only time that Respondent used the phonemeterm "embraco" was when he registered it as a domain name. As per the evidence, Artimidida Comunicação Visual Criação e Arte Ltda. does not have any enterprise or business (Respondent claimed that it created a "virtual company" under the name EMBRACO, but this claim is completely unsupported by any evidence) known with this denomination, nor any trademark containing this word, nor any other link of any kind with the phoneme. term.
The Policy states that a Rrespondent can demonstrate its rights and legitimate interests in the domain name by showing its efforts made before any notice of the dispute to use the domain name in connection with a bona fide offering of goods or services.
In this case, Respondent has received notice of dispute as of March 23, 1998, and made no use of the domain name until sometime after September 16, 1999, so Respondent failed in demonstrating the above mentioned situation. The Policy recognizes that actual use of the domain name is not required to show a right or legitimate interest in the domain name. Evidence of a demonstrable plan to make bona fide use of the domain name may be sufficient. Here, however, Respondent has failed present evidence demonstrating that it had any plan for bona fide use of the domain name prior to notice of the dispute.
InasmuchMoreover, both parties are established in Brazil and the Complainant is the title holder of two registrations for trademark "EMBRACO" in Brazil and several registrations worldwide.
The Panel verified thatwhether the trademark "EMBRACO" does not havehas the status of notoriousness in accordaence with the Braziliain Law, butand found that it is clearly a famous and well known mark in Brazil in relation to "industrial machines and compressors".
On this basis, the Panel concluded that the Respondent havehas no legitimate interest in the domain name "embraco.com". Therefore, the requirement of Paragraph a.(ii) is met.
4.a.(iii) Respondents Registration and Use of the Domain Name in Bad Faith
This Panel is of the opinion that the registration of the domain name "embraco.com" took place in bad faith. As circumstances supporting this conclusion, it should be mentioned first of all that no legitimate interest or use in or with respect to the sign EMBRACO could be established on the side of the Respondent.
Respondents registration of the disputed domain name with full knowledge that the name belonged to Complainant infringed the Registrar Service Agreement in §17 (ii), that 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".
Indeed, taking into consideration Complainants development and fame across Brazil, it may be reasonably assumed that Respondent knew of the existence of Complainant and of its "EMBRACO" trademark, and nevertheless proceeded with the registration of the litigious domain name.
Another important point is that Respondent has registered several domain names which are identical to other well-known Brazilian marks, such as "casacor"; "lidertaxi"; "coqueiro"; "perdigao"; "Barra Shapping"; "Walita"; "santista"; "correios", which are known by the majority of the Brazilian population. Respondentīs asserted ownership of numerous domain names incorporating several well- known marks suggests more than a coincidence in the Respondentīs selection of those domain names. Rather, it is suggested that a the studyied of a selection of the domain names registered shows Respondents intentds much more to obtain profits from activities other than maintaining several active web sites for providing goods and services in commerce. Consequently, the Panel finds that Respondent has violated paragraph 4, b, (ii) of the Policy and
On the contrary, the Panel finds that the domain names were registered by the Respondent with the clear intention to prevent the owners of the domain names from reflecting their marks in the corresponding domain name and to obtain profits with those domain names.
Inasmuch, as proved in Complainantīs Exhibit N Respondentīs representative offered to "negotiate" the domain name "embraco.com" to the Complainant. This Panel understands that the intention to negotiate a domain name and by the same time warn the other party that there are people interested in the domain name shows that Respondent was trying to obtain profits in excess of its reasonable out-of-pocket expenses related to the registration of the domain name by selling the mentioned domain name to the Complainant or someone else.
Finally, this Panel has verified it should be mentioned that Artimidida Comunicação Visual Criação e Arte Ltda. and Mr. Nelson Abras (title holder of the domain name <embraco.com> before Network Solutions) "embraco.com") have been Respondent in many others Complaints before WIPO (such as cases D2000-0606 (domain name transferred) andD2000- D2000-0605 (domain name transferred).
In resumeconclusion, this Panel finds that the Respondent registered and used the domain name "embraco.com" in bad faith.
Complainant has proved that the domain name is identical to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith. Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain name "embraco.com" be transferred to the Complainant.
Luiz Edgard Montaury Pimenta
Mark Partridge Geert Glas
Dated: December 14, 2000