WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Aço Minas Gerais S.A. Açominas v. Josť Dutra

Case No. D2000-1458

 

1. The Parties

The Complainant is Aço Minas Gerais S.A. Ė Açominas, a company based at Rodovia MG 443, km. 07, Fazenda do Cadete, in the city of Ouro Branco, State of Minas Gerais, Brazil, and with its principal place of business located at Rua dos Inconfidentes, 871, in the city of Belo Horizonte, State of Minas Gerais, Brazil (the "Complainant").

The Respondent is Mr. Josť Dutra, with addresses at Rua Fco. Gomes de Oliveira, 70, Bela Vista, in the city of Moreno, State of Pernambuco, Brazil, and at Rua Oscar Pinto, 308, Casa Amarela, in the city of Recife, State of Pernambuco, Brazil (the "Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <acominas.com>. The registrar is e-names.org (the "Registrar"), of Houston, Texas, USA.

 

3. Procedural History

The Complaint was received in hardcopy on October 26, 2000, and by e-mail on December 5, 2000, by the WIPO Arbitration and Mediation Center (the "Center"). The Complaint was accompanied by fifteen annexes.

The Center sent to the Registrar a request for verification of registration data, which was answered on February 8, 2001. The Registrar confirmed, inter alia, that a copy of the Complaint was properly received by the Registrar, that the domain name at issue was registered with the Registrar as of May 15, 2000, through May 15, 2001, that Respondent was the original registrant of that domain name and is the current registered owner thereof, and that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the subject domain name.

The Center sent the Respondent a Notification of Complaint and Commencement of Administrative Proceeding on December 15, 2000, with a copy of the Complaint and related submission, after having verified that the Complaint satisfies the formal requirements of the Policy, the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Policy (the "Supplemental Rules"). The Panel agrees with the Centerís assessment concerning the Complaintís compliance with the applicable formal requirements.

The Center also verified that payment in the required amount was made by the Complainant to the Center. Formal date of the commencement of the administrative proceeding was December 15, 2000, and the deadline for submission of Response by Respondent was set on January 3, 2000.

According to the Acknowledgement of Receipt (Response) from the Center dated January 10, 2001, the Response was received by e-mail on January 3, 2001, and in hard copy on January 9, 2001. One annex accompanied the Response.

The Center notified the Parties on February 8, 2001, that an Administrative Panel was properly constituted, consisting of a single member, and that the projected decision date was set for March 6, 2001. The Panelist properly submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The language of the proceeding is English. There have been no further submissions to the date of this decision.

 

4. Factual Background

The trademark upon which the Complaint is based is "AÇOMINAS". According to the documentary evidence submitted by Complainant and not contested by Respondent, the status of the registration of that trademark is the following:

(a) Annex Three consists of a copy of Certificate of Registration of Mark no. 815567715, issued on September 1, 1992, by the Brazilian Patent and Trademark Office ("Instituto Nacional da Propriedade Industrial"), attesting that the trademark "açominas" was deposited by Complainant in class 40.15 on June 19, 1990, and registered on Complainantís name for 10 years as of September 1, 1992. Class 40.15 relates to services ancillary to the trade of merchandises, including exports and imports.

(b) Annex Four consists of a copy of Certificate of Registration of Mark no. 815567707, issued on April 2, 1996, by the Brazilian Patent and Trademark Office ("Instituto Nacional da Propriedade Industrial"), attesting that the trademark "açominas" was deposited by Complainant in class 06.20 and 30 on June 6, 1990, and registered on Complainantís name for 10 years as of April 2, 1996. Class 06.20 and 30 relates to raw steel, semi finished products and its alloys; flat and long steel products.

(c) Annex Five consists of a copy of Title of Mark no. 1.588.977, issued on January 22, 1996, by the Argentinean Patent and Trademark Office ("Instituto Nacional de la Propiedad Industrial"), attesting that the trademark "açominas" was registered in Class 6 on Complainantís name.

(d) Annex Six consists of a copy of Title of Mark no. 1.588.978, issued on January 22, 1996, by the Argentinean Patent and Trademark Office ("Instituto Nacional de la Propiedad Industrial"), attesting that the trademark "açominas" was registered in Class 35 on Complainantís name.

According to the documentary evidence submitted by Complainant and accepted by Respondent, Complainantís business is the production and marketing of steel, coking chemical by products and related products as well as the rendering of technical services, consulting and sales of technology (Annex Seven). Complainant also asserts that today is sharing and holding a substantial portion of the steel market over the five continents, including far-away market places in the Southeast Asia and the Far East. These assertions were not contested by the Respondent.

Respondent asserts that Respondentís business and main interest are creating a "fitness portal" headed by "acobras.com", allegedly named after "ACademias On-line do BRASil" (Brazilian on-line gym academies), through which he makes a world-wide divulgation of Brazilian gym centers and offers a free-of-charge service for the people seeking for physical activities, and offering local information to large states through the domains <acominas.com>, <acospaulo.com>, <acorio.com>, and <acobahia.com", which are allegedly named on the basis of the same pattern used for the domain <acobras.com>.

Respondent has not submitted any documentary evidence showing that Respondent owns the domains <acobras.com>, <acospaulo.com>, <acorio.com>, and <acobahia.com". Respondent has also not submitted any documentary evidence showing that Respondent has launched and maintained the websites "arcobras.com", "acominas.com", "acospaulo.com", "acorio.com", and "acobahia.com" with contents compatible with the stated purpose ("fitness fortal"). Complainant accepts that the websites "acominas.com" and "acorio.com" were under construction as of October 5, 2000, prior to the filing the Complaint with the Center (Annexes Twelve and Fourteen).

 

5. Partiesí Contentions

5.1 Complainant contends that:

1. The domain name <acominas.com> and the registered trademark "açominas" Ďare identical, therefore, are confusingly similarí because (i) the domain name incorporates fully the trademark textual elements with the exception of the letter "ç" and the ".com" extension, and (ii) the use of the word "acominas" is associated with the Complaintís products and services.

2. The Respondent has no legitimate interest in the contested domain name because (i) the Complainant is the owner of the trademark "açominas" which has been registered in Brazil (since 1992), and in Argentina (since 1996), (ii) the Complainant has used the trademark "açominas" for more than 14 years to identify its business in the steel mill industry as well as to identify, advertise, market and promote its products and services in more than 37 countries, and (iii) the Respondent has no evidence to demonstrate the existence of the circumstances referred to in Paragraph 4(c) of the Policy or any other circumstance that could serve to prove a right or legitimate interest for purposes of Paragraph 4(a)(ii) of the Policy.

3. To support the contention that Respondent has no legitimate interest in the contested domain name, the Complainant asserts that there is no evidence before any notice of the dispute that the Respondent used the contested domain name in connection with a bona fide offering of goods or services. Complainant further states that (i) the domain name was registered by Respondent primarily for the purpose of selling it to the Complainant because it was not used before August 16, 2000, as shown on Annex Thirteen, and before October 5, 2000, as shown on Annex Twelve, (ii) the imaginary firm "ACOMINAS Ė ACADEMIAS ON LINE MINAS GERAIS" was created exclusively to host the domain name <acominas.com>; (iii) the Respondent also falsely identified other entities, such as <acorio.com> named after "ACADEMIAS ON LINE RIO DE JANEIRO", to permit these entities to identify themselves as the registrant in other similar domain names, as shown on Annex Fourteen; (iv) the Respondent also registered on the same day (May 15, 2000), the domain name <belgomineira.com.br>, which is one of the major competitors of the Complainant in the steel mills market in Brazil and abroad, as shown on Annex Fifteen; (v) the Respondent does not conduct any legitimate commercial or noncommercial business under the "AÇOMINAS" name and/or trademark and was not authorized in any way to use the Complainantís "AÇOMINAS" name and trademark; (vi) the Respondent has registered the contested domain name to prevent the Complainant from using it; (vii) by registering the contested domain name the Respondent is diverting consumers away from the official site of Complainant, is undermining the unique and distinctive significance of the Complainantís name and trademark, giving the public the impression that the Complaint is offering a new kind of business and service, and is causing serious and irreparable damage to the Complainant and to its goodwill; and (viii) the Respondentís conduct is in violation of Brazilian trademark and unfair competition law.

4. The contested domain name has been registered and is being used in bad faith because:

(a) the contested domain name was previously offered to sale by Respondent. To support that contention, Complainant states that (i) the inside Counsel for Complainant, Mr. Carlos Eduardo E. Panzera, contacted the Respondent by e-mail on August 15, 2000, and inquired whether and under what conditions he would be willing to transfer the contested domain name to Complainant, as the legitimate owner of the trademark "açominas" (Annex Eight), and (ii) on August 16, 2001, Respondent answered to the Complainant by e-mail and suggested a price for the contested domain name in the range of US$ 500,000 to US$ 823,000 (Annex Nine).

(b) the contested domain name was not being used in connection with a bona fide offering of good and services. To support that contention, Complainant states that (i) the domain name <acominas.com> was used to link the Internet user to the "under construction" site of Respondent called "ACOMINAS Ė ACADEMIAS ON LINE MINAS GERAIS", which Complainant states to be a Ďfalsely created "Virtual Fitness Gym Academy named of the Minas Gerais"í, (ii) the Respondent lives in the State of Pernambuco which is rather distant from the State of Minas Gerais where the Complainant has its main offices, (iii) the Respondentís intention to create the above website only occurred after the Complaintís authorized representative (Mr. Alexandre Atheniense) contacted the Registrar on September 7, 2000, inquiring if the false data given by the Respondent during the domain registration process was reason enough to cancel it (Annex Ten), when the Respondent sent an e-mail to Complainantís Legal Manager (Mr. Waldir Braga) dated September 8, 2000, informing that the subject "fitness site" would be launched shortly (Annex Eleven), and (iv) the Respondent does not have a legitimate interest to use the sign Ò after the name "acominas" and is not identified by the name "acominas".

(c) The Respondent does not operate any business known as "ACOMINAS Ė ACADEMIAS ON LINE MINAS GERAIS" nor offers goods or services under the "AÇOMINAS" or "AÇO MINAS GERAIS" trademarks, has not acquired trademark or service mark rights to the "AÇOMINAS" or "ACOMINAS" trademarks in Brazil or any other country, and has created a likelihood of confusion with the Complainantís name and trademark "AÇOMINAS" by using the <acominas.com> domain name and linking Internet users to "ACOMINAS Ė ACADEMIAS ON LINE MINAS GERAIS".

5.2 Respondent contends that:

1. Respondent is responsible for divulgating gym fitness centers and personal trainers services in a site named "acobras.com", that means "ACademias On-line do BRASil" (Brazilian on-line gym academies), through which he makes a world-wide divulgation of Brazilian gym centers and offers a free-of-charge service for the people seeking for physical activities.

2. Because some urban centers in Brazil appear as bigger and more popular areas, Respondent considers of great value to offer a personalized service to these locations and, therefore, created local sites as follows: "acobahia.com", which stands for "ACademias On-line da BAHIA (Bahia on-line gym academies), "acorio.com", which stands for "ACademias On-line do RIO de Janeiro (Rio de Janeiro on-line gym academies), "acospaulo.com", which stands for "ACademias On-line de São PAULO (São Paulo on-line gym academies), and "acominas.com", which stands for "ACademias On-line de MINAS Gerais (Minas Gerais on-line gym academies).

3. There is a similarity between the domain name <acominas.com> and the Complainantís mark "açominas" because the Portuguese letter "ç" does not exist in Internet domain names, but the Respondent has no interest in associating the name "acominas.com" with the Complainantís name or products and services, as Respondent maintains a fitness portal that has nothing in common with Complainantís products and services.

4. The Respondent does have legitimate interests in the contested domain name because:

(a) since the beginning of October 2000, the site "acominas.com" (as well as the other "Acobras.com" sites) shows the intention to offer fitness services to the internet community, a fact which was even reported by the Complainant when indicating in the Complaint that on October 5, 2000, the site already had a design and a structure established, with a menu and a message informing that the site was "under construction". The content of the site was inserted into it on October 8, 2000, and since then the portalís content has been continuously updated.

(b) as Respondent does not charge the visitors, and does not intend to, Respondent is not making a commercial use of the site. In no way Respondent wants or can use the similarity between the names to divert consumers because the public is completely different from Complainantís public. The contested domain name was never used to tarnish the Complainantís name.

5. The Respondent further asserts that:

(a) the fact, reported by Complainant, that the "acominas.com" site was as of October 5, 2000, already on line, showing a message that it was under construction, is a proof of the preparation to use the contested domain name in connection with a bona fide offering of services, which is now implemented. The site "arcobras.com" was already on-line at that time.

(b) the Complainant has no right to state that the local sites of the "arcobras.com" fitness portal were created with any intention other than providing local information and services to some Brazilian states.

(c) Respondent has no legitimate commercial or noncommercial business under "aÇominas" name or trademark and never said or showed it had. Respondentís noncommercial business is under "aCominas.com", that is "Academias On-Line de MINAS Gerais".

(d) what type of irreparable damage could a site using a domain name that was not used until now cause to Complainant and the goodwill associated with Complainant?

6. To contest the contention of registration and use in bad faith, the Respondent states that:

(a) Respondentís business and main interest are creating a "fitness portal" headed by "acobras.com" and offering local information to large states through the domains <acospaulo.com., <acorio.com>, <acominas.com> and <acobahia.com".

(b) Respondent was not interested in selling any domain name and did not contact anyone offering such domains. It was the Complainant who contacted the Respondent with an interest in acquiring the contested domain name. Respondent was asked to make an offer and, as every good or service can be sold and Respondent had no idea about domain prices, Respondent forwarded some articles found in Internet news sites.

(c) The site "acominas.com" (as well as the other "arcobras.com" sites) is being used in connection with a bona fide offering of services: a catalogue of gym academies and other information regarding fitness. After Respondent noticed the Complainantís lawyer intention to transfer the contested domain name without Respondentís authorization, Respondent decided to put an end in the Complainantís contacts saying that the site would be on line as soon as feasible.

(d) There is no importance on the distance between the State of Pernambuco and the State of Minas Gerais because the "arcobras.com" local sites are chosen in accordance with the stateís relevance in the Brazilian context. Annex A attached to the Response shows that a city called Moreno does exist in the Great Recife area and the only error in the registration data was the reference to "Moreno Recife" while Recife is the capital of the State of Pernambuco and the right name of the city is Moreno.

(e) There is nothing in "acominas.com" site that relates to the Complainantís company or their goods/services and, therefore, it is ridiculous the allegation that the use of the <acominas.com> domain name has created a likelihood of confusion with the Complaintís name and trademark.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that Complainant must prove in the administrative proceeding that each of the three cumulative elements set forth in that provision are present. The Panel will now review each one of these elements:

About 4(a)(i) Ė Identity or Confusing Similarity

Complainant asserts that the domain name <acominas.com> and the trademark "açominas" are "identical and confusingly similar" as the domain name incorporates fully the trademark textual elements with the exception of the letter "ç" and the ".com" extension. While contending that Respondent has no interest in associating the domain name <acominas.com> with the Complainantís name or products or services, Respondent accepts that there is a similarity between the domain name <acominas.com> and the trademark "açominas" owned by Complainant.

The Painel finds that in fact there is a confusing similarity between the domain name <acominas.com> and the trademark "açominas" because the use of "c" instead of "ç" is without legal significance.

The question of whether or not the use of the word "acominas" is associated with the Complainantís name, products or services is not relevant in determining the existence of confusing similarity between the domain name and the trademark. In addition, it is a non-contested fact that Complainant has legitimate rights in the trademark "açominas". Finally, English is the dominant language of the Internet and the letter "ç" would not be registrable as a textual element of the domain name <acominas.com> as Respondent conceded in his Response.

Therefore, the Panel finds that the requirement of Paragraph 4(a)(i) of the Policy is met.

About 4(a)(ii) Ė Absence of Respondent Rights or Legitimate Interest in the Domain Name

Complainant asserts that Respondent has no legitimate interest in the contested domain name because inter alia Respondent has no evidence to demonstrate the existence of the circumstances referred to in Paragraph 4(c) of the Policy or any other circumstance that could serve to prove a right or legitimate interest for purposes of Paragraph 4(a)(ii) of the Policy.

To support that contention, Complainant basically asserts that there is no evidence that before any notice of the dispute the Respondent used the contested domain name in connection with a bona fide offering of goods or services because the imaginary firm "ACOMINAS Ė ACADEMIAS ON LINE MINAS GERAIS" was created exclusively to host the domain name <acominas.com> and the Respondent also falsely identified other entities, such as <acorio.com> named after "ACADEMIAS ON LINE RIO DE JANEIRO", to permit these entities to identify themselves as the registrant in other similar domain names.

In short, Complainant asserts that Respondent does not conduct any legitimate commercial or noncommercial business under the "acominas" name and that the web sites "acominas.com" and "acorio.com" were under construction as of October 5, 2000, prior to the filing of the Complaint, as shown on Annexes Twelve, Thirteen and Fourteen.

In opposition to Complainantís contentions, Respondent basically asserts that he does have legitimate interest in the contested domain name because Respondentís business and main interest are creating a "fitness portal" headed by "acobras.com" and offering local information to large states through the domains <acospaulo.com, <acorio.com>, <acominas.com> and <acobahia.com".

Respondent also asserts that since the beginning of October 2000, the site "acominas.com" (as well as the other "acobras.com" sites) shows the intention to offer fitness services to the internet community, a fact which was even reported by the Complainant when indicating in the Complaint that on October 5, 2000, the site already had a design and a structure established, with a menu and a message informing that the site was "under construction".

Respondent further states that the content of the "acominas.com" site was inserted into it on October 8, 2000, and since then the portalís content has been continuously updated.

About 4(c)(i)

As indicated earlier, Respondent has not submitted any documentary evidence showing that Respondent has launched and maintained the websites "acobras.com", "acominas.com" and the other "acobras.com" sites with contents compatible with the stated purpose ("a catalogue of gym academies and other information regarding fitness"), either before any notice to Respondent of the dispute over the domain name <acominas.com>, or even after that date. It is worthy noting that Respondentís assertions that the site "acominas.com" was completed as of October 8, 2000, and that the site "acobras.com" was "already on-line at that time" have not been proved by documentary evidence produced in this administrative proceeding.

The Panel has taken note that a view by the Complainant on August 16, 2000, of the web sites "acominas.com" resulted in the message that "host was not found". A view by the Complainant on October 5, 2000, of the web sites "acominas.com" and "acorio.com" resulted in the message that those sites were "under construction". Respondent did not contest that evidence.

In the e-mail addressed to Mr. Walmir de Castro Braga, inside Counsel for Complainant, on September 8, 2000, Respondent acknowledges that Mr. Alexandre Atheniense, "making a consultation in behalf of Aço Minas", was "insinuating also that he would begin a judicial dispute regarding this Domain Name" (see Annex Eleven to the Complaint). Therefore, the Panel finds that it has been proved that Respondent had received a notice of the dispute over the contested domain name prior to actually making available to Internet users a web page for the "acominas.com" site showing a message that same was under construction.

The Policy expressly provides in Paragraph 4(a) that a complainant has the burden of proof as to each of the three cumulative elements set forth in that provision. However, the Policy also provides in Paragraph 4(c) that certain circumstances asserted by a respondent to demonstrate the rights and legitimate interests in the domain name are valid "if found by the Panel to be proved on its evaluation of all evidence presented". Therefore, the Panel is also of the opinion that "Complainant has the general burden of proof, but in the scope of Paragraph 4(a)(ii), once the complainant has made something credible (prima facie evidence), the burden of production shifts to Respondent to show that it has rights or legitimate interests in the domain name at issue by providing concrete evidence" (see Neusiedler Aktiengesellschaft v. Vinayak Kulkarini, WIPO Case No. D200-1769).

Paragraph 15(a) of the Rules also provides that a Panel shall decide a complaint on the basis of the statements and documents submitted in the administrative proceeding.

The contentions made by Respondent with respect to the creation of the domain name <acominas.com> are not sufficient to demonstrate Respondentís legitimate interest to such domain name. In fact, Respondentís assertion that the name "acominas" means "ACademias On-line de MINAS Gerais" is not persuasive per se. The Panel finds that the name "acominas" is not clearly descriptive of the service or activity intended to be offered by Respondent (Brazilian on-line gym academies). The same line of reasoning applies to the so-called portal name "acobras" and to the other "acobras.com" sites. Therefore, Respondent should have demonstrated his legitimate interest in the contested domain name by producing concrete evidence of the circumstances, which were alleged by Respondent ("bona fide offering of services").

Paragraph 4(c)(i) of the Policy provides that "demonstrable preparations to use" before any notice to Respondent of the dispute constitute a valid defense on the basis of a bona fide offering of goods and services. The Policy does not define what exactly constitutes "demonstrable preparation" but the Panel takes the view that a very minimal showing is not enough to meet the requirement of this provision.

Respondent argues that since the beginning of October 2000, the "acominas.com" site Ďalready had a design and a structure established, with a menu and a message that the site was Ďunder constructioní". Even if we assume that this circumstance constitutes a demonstrable plan to make bona fide use of the domain name, the Panel still must consider whether such preparation was made before any notice to Respondent of the dispute. While Respondent asserts (but fails to prove) that the site "acobras.com" was already active on that time, Respondent concedes that the site "acominas.com" (and other "acobras.com" sites) was showing "its intention to offer its fitness services to the internet community" since the beginning of October 2000.

About 4(c)(iii)

Respondent also argues that, as he does not charge visitors and does not intend to, it is evident that he is not making a commercial use of the site. Respondent further states that he is not diverting customers from Complainant and has never used the domain name at issue to tarnish the Complainantís name.

To the extent that Respondent has not proved that he has launched and maintained the "acominas.com" site and has not produced any other evidence of his allegations, the Panel finds that Respondentís assertions under Paragraph 4(c)(iii) are not persuasive and have not been demonstrated. In addition, the Panel has not found any evidence in this administrative proceeding showing that Respondent did or is making "a legitimate noncommercial or fair use of the domain name" within the meaning of Paragraph 4(c)(iii) of the Policy.

In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.

About 4(a)(iii) Ė Respondent Registration and Use of the Domain Name in Bad Faith

Panel shall review this element on the basis of each of the provisions in Paragraph 4(b) of the Policy on which Complainant relied.

About 4(b)(i)

Complainant asserts that the contested domain name was previously offered to sale to Complainant by Respondent while Respondent argues that he was not interested in selling any domain name and did not contact anyone offering such domain. Respondent further argues that it was Complainant who contacted the Respondent with an interest in acquiring the contested domain name.

The Panel does not rely on the circumstance that the Complainant initiated the negotiations towards an amicable acquisition of the contested domain name. As already pointed out, "a bad-faith cybersquatter may also wait for a trademark owner to act before making demands" (see Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654).

The Panel takes the view that an unsolicited offer to sell by the registrant is not a prerequisite for proving intent to sell and that the existence of the primary intent to sell is to be determined on the basis of all the circumstances of the case.

There is evidence in this administrative proceeding (Annex Nine to the Complaint, consisting of the printout of the e-mail sent by Respondent to the Complainantís representative, Mr. Carlos Panzera, dated August 16, 2000), to the effect that:

(a) Respondent requested a "concrete proposal" from Complainant to sell the contested domain name by arguing that Complainant "is losing, and quite a lot, because she does not hold this Domain Name, since abroad, the Domain Names .com are standards at Internet" and that "65% of Açominasí production is destined to foreign markets".

Therefore, the Panel finds that Respondent was not just replying to an invitation to sell from Complainant, as suggested by Respondent, but was actually "making a demand".

(b) Respondent suggested that the price for the contested domain name should be in the range of US$ 500,000 to US$ 823,000, which was the price range paid in similar transactions.

A number of Panel decisions have taken the position, based on Paragraph 4(b)(i) of the Policy, that there is evidence of bad faith registration and use when the price proposed by the domain name registrant to sell is far in excess of his documented out-of-pocket costs directly related to the domain name (see America Online, Inc. v. Frank Albanese, WIPO Case No. D2000-1604).

Therefore, the Panel finds that Respondentís demand of a price in the range of US$ 500,000 to US$ 823,000 to sell the contested domain name is an evidence of bad faith within the meaning of Paragraph 4(b)(i) of the Policy.

The Panel also finds that the fact that Respondent has not proved a legitimate interest in the domain name at issue is an additional evidence of Respondentís primary intent to sell. In fact, it has been decided that offers to sell are not evidence of bad faith where registrant has independent legitimate interest (see Etam, plc. v. Alberta Hot Rods, WIPO Case No. D2000-1654 and Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525).

About 4(b)(ii)

Complainant basically states that Respondent registered the contested domain name "to create obstacles to the commercial moves of the Complainant" and Respondent argues in short that Complainant is not making "any kind of business through Internet" as its Brazilian site only shows the company.

The Respondentís argument in the above mentioned email of August 16, 2000, (Annex Nine to the Complaint) to the effect that Complainant "is losing, and quite a lot, because she does not hold this Domain Name, since abroad, the Domain Names .com are standards at Internet" and that "65% of Açominasí production is destined to foreign markets" does not seem to be conclusive evidence that Respondent has engaged in a pattern of the conduct set forth in Paragraph 4(b)(ii) of the Policy. Therefore, the Panel does not find this circumstance to have been proved.

About 4(b)(iv)

Complainant basically argues that, as Respondent does not operate any business known as "acominas", Respondent has created a likelihood of confusion with the Complainantís name and trademark. Respondent denies this contention by arguing that there is no advantage in attracting steel consumers to a fitness portal.

The last instance of bad faith which is set forth in Paragraph 4(b)(iv) of the Policy occurs when the Respondent has attempted to attract users to its web site for commercial gain by creating and exploiting confusion between the disputed domain name and the trademark.

There is enough evidence in this administrative proceeding that "açominas" is a strong trademark due to the size of the Complainant and the visibility of its activities, particularly in Brazil. There is also evidence that, even if his primary intent was to sell it, Respondent made some plans to make use of the domain name in Brazil after he received notice of the dispute, as Annexes Twelve and Thirteen show that the "under construction" page of the "acominas.com" site had contents in Portuguese.

Therefore, it appears that by using a strong trademark as his domain name Respondent was intentionally attempting to attract Internet users by creating a likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation or endorsement.

In light of all the foregoing, the Panel finds that the Respondent has registered and used the domain name <acominas.com> in bad faith and that the requirement of Paragraph 4(a)(iii) of the Policy is met.

Precedents Invoked

Respondent relies on three decisions rendered in prior WIPO cases but those decisions do not support Respondentís contentions or contradict the findings of this Panel.

In Avnet, Inc v. Aviation Network, Inc.(WIPO Case No. D2000-0046) the Panel found that the complainant had not met its burden of proof on the issue of bad faith registration and use because inter alia (a) there was no evidence that respondent was engaged in a pattern of registering the trademarks of others as domain names, (b) there was evidence that respondent used the contested domain name for a bona fide business, and (c) the Panel found that "trafficking in a domain name for profit demonstrates bad faith where the registrant lacks a legitimate prior interest in the name".

It is evident that the facts and elements of the Avnet v. Aviation case are not similar to those of the present case. In addition, the basic finding in the Avnet v. Aviation case is that, where the respondent had a legitimate prior interest in the domain name, its offer to sell the name for a mutually agreeable price did not establish bad faith. This Panel has found that Respondent has not proved a legitimate interest in the domain name at issue.

In Telaxis Communications Corp. v. William E. Minkle (WIPO Case No. D2000-0005) the Panel found that the preliminary website was established by Respondent in June 1999, prior to the dispute arising in October 1999, and therefore was considered a demonstrable preparation to use within the meaning of Paragraph 4(c)(i) of the Policy. In the present case, the preliminary website was established by Respondent in the beginning of October 2000, after the dispute arising in September 2000. Other facts and elements of the Telaxis v. Minkle case are not similar to those of the present case.

In Allocation Network GmbH v.Gregory (WIPO Case No. D2000-0016) the question to be answered was whether the offering for sale of the domain name "allocation.com" as such could be considered use of the domain name in connection with a bona fide offering of goods and services in accordance with Paragraph 4(c)(i) of the Policy on which ground Respondent would have a legitimate interest in the contested domain name.

In the Allocation v. Gregory case the Panel found in favor of registrant on the grounds that it had a legitimate interest in using a common word as a domain name for sale. However, in order to show a legitimate interest in the marketing of domain names, Paragraph 4(b)(i) of the Policy seems to require that the registration and use of the contested domain name occurred prior to the registrantís knowledge that the trademark existed. In that case, the Panel found that Complainant had not provided any evidence of facts, which might indicate that Respondent knew or should have known of its trade name or trademark registrations.

In the present case, "acominas" is not a common word but a strong trademark, Complainant is a reasonably known company in Brazil (Respondent showed his knowledge of Complainant in the email contained in Annex Nine to the Complaint) and this Panel has found that Respondent has registered the contested domain name with the primary intent to sell it to Complainant.

Complainant relied on the decision rendered in the TV Globo Ltda. v. Radio Morena (WIPO Case No. D2000-0245) case where the brilliant panelist Antonio Millť emphasized that "Internet is for communication, not for speculation" and stressed the "negative consequences that have for the Internet community the activity of those who see the domain names as instrument for speculation and parasite profit". This Panel concurs with that opinion.

 

7. Decision

The Complainant has proved that the domain name <acominas.com> is confusing similar to its trademark "açominas", that the Respondent has no rights to or legitimate interest in the domain name <acominas.com>, and that the Respondent has registered and used the domain name <acominas.com> in bad faith.

Therefore, the Panel grants the remedy requested by Complainant and requires that the registration of the domain name <acominas.com> be transferred to Complainant.

 


 

Manoel J. Pereira dos Santos
Single Panelist

Dated: March 5, 2001