WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Portugal Telecom, S.A. v Tiago Fernandes
Case No. D2000-1661
1. The Parties
The Complainant is Portugal Telecom, S.A., a corporation organized and existing under Portuguese Law, with headquarters at Avenida Fontes Pereira de Melo, Nļ 40, Lisbon, Potugal. The Respondent is Tiago Fernandes, with Postal address at Rua da Trinitaria, 113, 4150-736 Porto - Portugal.
2. The Domain names and Registrar
The domain names in issue here are <portugal-telecom.com>, <portugal-telecom.net>, <portugal-telecom.org>.
The Registrar with which all three domain names are registered is Register.com, Inc.
3. Procedural History
The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on November 30, 2000, and in hard copy by courier on December 4, 2000.
An Acknowledgement of Receipt of Complaint was sent from the Center to Complainant on December 4, 2000.
On December 7, 2000 a Request for Registrar Verification was sent by the Center to the Registrar. The Reply to this request was sent to the Center on December 13, 2000.
The information of the above mentioned Reply from the Registrar was communicated to the Parties on December 13, 2000, informing the Complainant the name of the actual Registrant of the domain name. On December 20, 2000, the Complainant filed an Amendment to the Complaint modifying the name of the Respondent to Tiago Fernandes.
The Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent on December 21, 2000.
The Respondent filed a Response on January 9, 2001.
The Administrative Panel was properly constituted. The undersigned panelist submitted a Statement a of Acceptance and Declaration of Impartiality and Independence. The Notification of Appointment of Administrative Panel was sent to the Parties and to the undersigned Panelist on January 19, 2001. No further submissions were received by the Center or the Panel.
4. Factual Background
4.1 None of the facts alleged in the Complaint were refuted in the Response, nor was the validity or authenticity of the various documents attached thereto challenged. In fact, the Respondentís defense was based essentially on a different interpretation of the same facts as the ones presented in the Complaint and on the refutation of the contentions of the Complainant.
Furthermore, with regard to other new facts alleged in the Response, no document was submitted in support of these allegations. This is the case, for example, of point 11) and, more particularly, of point 1) of the Response.
For this reason, the Panel considers that this case will be analysed and the present decision taken based on the Factual Background as set forth in the Complaint and the respective amendment.
4.2 It may be added that some of the facts alleged in the Complaint are even well known, in the sense that they are facts that are of common knowledge among the Portuguese population. They are facts which under Portuguese law are defined in article 514-1 of our Civil Procedure Code, which stipulates that "Well-known facts do not have to be proven or alleged, and facts which shall be considered as such are those which are of common knowledge".
To the knowledge of the undersigned panelist, this is an example of the above-mentioned, the Complainant is the leading Portuguese telecommunications company, and its name and trademarks "PORTUGAL TELECOM" are constantly and widely advertised and are also well known among the Portuguese population.
4.3 Thus, of the various facts which have been proven, the Panel considers that the following are of particular relevance to this decision:
- The Complainant was the holder of the domain name <portugal-telecom.com>, registered with Network Solutions Inc., which was cancelled due to an error of address in a letter enclosing the cheque for payment of the renewal fee of the domain registration;
- A new register of that domain name has been made, on January 14, 2000, by the Respondent for ETC, Lda, with address at Rua do Carvalho 109, 1.Dto.A, 4150-192 Porto, Portugal;
- From May 25, 2000 and October 16, 2000, the correspondence documented in Annexes [K] to [Y] of the Complaint was exchanged between the Complainant and the Respondent;
- During that period, the Respondent registered the domain name <portugal- telecom.net> (June 12, 2000) and <portugal-telecom.org> (July 24, 2000);
- The Complainant is the owner of the several service marks "PORTUGAL TELECOM", registered at the INPI Ė Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property of Portugal), documented in Annexes [Z] to [DD]) of the Complaint;
- The Complainant is the leading Portuguese Telecommunications Company and is widely known and regarded in Portugal and in other countries;
- The Complainantís service marks based on its company name "Portugal Telecom, S.A.", are constantly and widely advertised.
- The Complainantís service marks "PORTUGAL TELECOM" are well-known.
5. Partiesí Contentions
A. The Complaint
(1) The discussed domain names are obviously identical to the service marks owned by Complainant.
(2) The Respondent has no right or legitimate interest in respect of the use of the expression "Portugal Telecom", because i.a. he does not own any trademark or service mark composed of or including the expression "Portugal Telecom", nor is he licensed by the Complainant to use its service marks or authorised by the latter to register domain names with the words "Portugal Telecom" or any other confusingly similar word to that one. The Complainant also sustains that the Respondent does not have any licensed activity as a telecommunications operator in Portugal and in any case, that all possible use of the expressions "Portugal Telecom" would infringe the Complainantís legal rights and would with high degree of probability deceive or confuse the Internet users in Portugal or in other countries.
(3) The Respondent has clearly registered the discussed domain names in bad faith because, i.a., he is a Portuguese resident and the Complainantís distinctive signs are well known in Portugal and abroad, so the Respondent is or should be aware that by promoting and holding the registration of the domain names concerned he violates the rights of the Complainant. The Complainant also sustains evidence that the Respondent sought to negotiate the discussed domain names for an amount exceeding the registration costs, clearly shown by his email of 16.10.2000, informing the willingness of Contemporary Engineering "to analyse the proposals that Portugal Telecom may present".
B. The Response
The Respondent filed his Response within the time period stipulated in Paragraph 5(a) of the Rules. The Respondentís contentions will be analysed below, in point 6, B. and C.
6. Discussion and findings
The Complaint was duly drawn up in accordance with the procedural requirements stipulated in paragraph 3 of the Rules, and it was documented with various elements (Annexes [ A] to [ PP] ).
The Complainant, by means of this single Complaint, seeks to obtain remedies in respect of three domain names. Considering that Paragraph 3(c) of the Rules provides that the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder (which is exactly the case herein), the Panel considers that this common Complaint is acceptable.
The Respondent filed his Response within the time period stipulated in Paragraph 5(a) of the Rules.
However, the Response fails to comply with the procedural requirements stipulated in Paragraph 5(b)(ii), (vii) and (viii). The Panel finds that these procedural omissions alone - in particular, that of the final statement provided for in (viii) - would be sufficient for determining the rejection of the Response filed and thus finding the Respondent in default.
In any case, the Panel considers that the Response, even if it were acceptable from the procedural perspective, does not alter the Factual Background to be taken into account for drawing up the Findings of this decision. In fact, the Respondentís defense was based essentially on this partyís own interpretation of the same facts as the ones set forth in the Complaint. In any case, the Panel will not fail to analyse the Respondentís contentions in its Findings, based on its discretionary power as conferred by the provision contained in Paragraph 14 (b) of the Rules.
According to Paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, The Complainant must prove that:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
A. Identical or confusing similarity
The Panel finds that the domain names <portugal-telecom.com>., <portugal-telecom.net> and <portugal-telecom.org> are identical to complainantís service marks "PORTUGAL TELECOM".
B. Rights or legitimate interest of the Respondent
The Respondent did not demonstrate nor appears to have any right or even any legitimate interest in respect of the domain names in question. In fact, not only did the Respondent fail to prove that he is the owner of any trademark or other Industrial Property rights in respect of the expression "PORTUGAL TELECOM", but he was also unable to demonstrate convincingly that he (or even the third party he claims to represent) uses or genuinely intends to use the domain names in question in connection with the bona fide offering of goods and services or with fair use purposes.
In this respect, the Panel considers that it is very significant that Mr.Tiago Fernandes - the Respondent in this case Ė has, himself, stated that he registered the domain name "portugal-telecom.com" "by request and on behalf of his client Contemporary Engineering", and that he (or his company ETC) "is only acting as a technical consultant for its client". In other words, according to the version of the facts as presented by the Respondent, he does not have any direct interest in the domain names in question.
It is highly doubtful that the demonstration of the "legitimate interest" referred to in Paragraph 4(a)(ii) and (c) of the Policy can be that of a third party other than the actual domain name holder, as the Respondent claims. In any case, even if this argument were defensible in accordance with the provisions of the Policy, a negative impression has been made on the Panel by the fact that the Respondent has not proven the existence of the entity Contemporary Engineering, from whom he claims to have received instructions with regard to the domain names in question, and also by the fact that he has not even submitted any copies of the correspondence containing the instructions that he claims to have received from that entity.
The statements made above are applicable to the first of the three domain names in question, <portugal-telecom.com> (which the Respondent claims to have registered on the initiative of and according to the instructions of his client), but in the opinion of the Panel it is even more pertinent with regard to the other two, ".net" and ".org", which the Respondent himself claims to have registered on his own initiative.
C. Bad Faith
Being of Portuguese nationality, the undersigned panelist cannot but accept and confirm the Complainantís allegation that its name and trademarks "PORTUGAL TELECOM" are indeed well known, at least in Portugal. Likewise, the undersigned panelist considers that the name and trademarks "PORTUGAL TELECOM" are certainly well known to the Respondent as belonging to the Complainant, as he is also a Portuguese citizen who is resident in Portugal.
What was stated above would be a sufficient indication to the Panel that the domain names were in fact registered in bad faith.
In this connection, the Panel considers it relevant to quote an article published recently in a well-known Portuguese newspaper (the daily newspaper "A Capital", of December 29, 2000) concerning the problem of cybersquatting, in which this case involving "PORTUGAL TELECOM" was expressly mentioned. With the title "Cybersquatting 2000", the article states as follows:
"With an increasing number of companies wanting to establish themselves on the Internet, an illegal business is starting to flourish: the registration, as top-level .com, .net and .org domain names, of leading international trademarks or similar designations, which are subsequently sold on to these very companies at a profit.
The entity responsible for regulating intellectual property rights on an international level, WIPO, is reacting against this scheme. Its arbitration and mediation centre has already handled more than 1800 Complaints this year and eight Portuguese companies have already called upon its services in order to try to "win back" domain names which they consider to be their own, but have already been registered by someone else. So far, things have been running smoothly."
In this article, directly below the aforementioned title, it is stated that "Sonae, PT and Lusomundo are among the complainants" (these are three of the most well known companies in Portugal, "PT" being the abbreviation by which the Complainant, Portugal Telecom, is also known) and in the body of the article, the case of the domain name "portugal-telecom.com" is mentioned as being one of the arbitration cases of Portuguese complainants awaiting a decision of the WIPO arbitration center.
The newspaper article quoted above clearly reflects the general feeling in Portugal, not only that "PORTUGAL TELECOM" is one of the "leading" names in Portugal, immediately recognisable among the public as identifying a particular company (the Complainant), but also that its registration as a domain name by a third party is undoubtedly a paradigmatic case of cybersquatting.
Furthermore, the Panel is convinced that the Respondent registered the domain names in question with the aim of selling or otherwise assigning them to the Complainant for a valuable consideration, in the sense expressed in Paragraph 4 (b) (i) of the Policy.
In fact, although the Respondent was sophisticated enough not to propose himself the sale of the domain names to the Complainant, an intention to negotiate is clearly apparent in his message of October 16, 2000, in which he states that "Our client does not exclude, however, the possibility of analysing possible proposals from Portugal Telecom in that sense". In this connection, it must be stressed that the Respondent made this statement not without having even transmitted (or created) the scenario of a difficult "bargain" with his alleged client, not only in his e-mail of October 16 (wherein it is stated that his client "doesnít see any reason to transfer the concerned domain names to Portugal Telecom" and even that "Öat present they have different plans for the use of those addresses"), but also in a previous e-mail (of September 25, 2000), in which the Respondent informed the Complainant that his client C.E. made him "an offer of a very considerable amount to ETC for acquisition of those names" (Annex X of the Complaint).
Moreover, knowing for sure that "PORTUGAL TELECOM" is a well-known name and mark belonging to the Complainant, the Respondent, by registering the domain names in question, was certainly aware that he would prevent that company from reflecting its "natural" mark and name in a corresponding domain name. This fact is further evidence of bad faith, in accordance with Paragraph 4(b)(ii) of the Policy.
In light of the foregoing, the panel decides that the domain names are identical or confusingly similar to the Complainantís servicemark and that the Respondent has no rights or legitimate interest relating to the domain names which were registered and used in bad faith.
Accordingly, pursuant to Paragraph 4(I) of the Policy, the domain name <portugal-telecom.com>,< portugal-telecom.net> and <portugal-telecom.org>. shall be transferred to the Complainant.
Dated: February 7, 2001