WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Portugal Telecom, SA v. J. Turron Serra
Case No. D2000-1662
1. The Parties
Complainant is Portugal Telecom, SA, a company existing and ruled under the laws of Portugal, based in Lisbon, Portugal, with its principal place of business at Avenida Fontes Pereira de Melo n.ļ 40, 1069-300 Lisbon, Portugal.
The Respondent is J. Turron Serra, a Spanish citizen, with mailing address at Caldes de Montbui 123, Girona, Spain 17003.
2. The Domain names and Registrar
The domain names at issue are <portugaltelecom.net> and <portugaltelecom.org>". The Registrar is Network Solutions, Inc. ("the Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (henceforth "the Center") received the Complaint by e-mail on November 30, 2000 and on December 4, 2000 in hardcopy. The Complainant paid the required fee.
NSIís Verification Response was received by the Center on December 11, 2000, confirming to be the registrar for the domain names in question, <portugaltelecom.net> and <portugaltelecom.org>, which are registered in the Respondentsí name.
On December 21, 2000 the Center sent the Notification of Complaint to the Respondent, under Paragraph 2(a) of the Rules. The Respondent did not answer to the Complaint within the established deadline. The Center hence sent to the parties the Notification of Respondent Default on January 8, 2001.
On January 17, 2001 the Center appointed the undersigned as the sole member of the Administrative Panel.
4. Factual Background
Complainant is the leading Portuguese telecommunications company and is known within the country, as well as abroad.
This company was granted a concession by the Portuguese government, to provide telecommunication services all over the Portuguese territory. The Complainant has shares traded at stock exchanges in Lisbon and New York.
Complainant integrates a group of more than 90 companies (Portugal Telecom Group), operating telecommunication services in several countries throughout the world, including in Spain.
The Complainantís services are always identified by the mark PORTUGAL TELECOM, which is the main part of its trade name, and also the main part of the name of the holding mentioned above, Portugal Telecom Group.
Complainant provided copies (exhibits F to J of its complaint) of certificates for four registrations issued by the Portuguese Patent and Trademark Office concerning the service mark "PORTUGAL TELECOM". Besides, the Complainant presented copies of three registrations, issued by the same Office, for a word and design mark composed by the expression "PORTUGAL TELECOM", exhibits K to M of the complaint.
5. Partiesí Contentions
Complainant contends that the domain names <portugaltelecom.net> and <portugaltelecom.org> are identical to and confusingly similar with their registered service mark PORTUGAL TELECOM, registered in Portugal since 1994 in connection with communication and information services in all the country.
Complainant showed ownership of the domain names <portugaltelecom.pt> and <portugal-telecom.pt>, registered by the Portuguese official register, Fundação para a Computação CientŪfica Nacional. Further, Complainant also presented evidence of ownership of the domain name portugaltelecom.com, registered by Internet Names WorldWide (INWW). Annexes O to R of the Complaint prove these allegations.
Additionally Complainant holds rights derived of the trade name PORTUGAL TELECOM SA, as above outlined.
Complainant also underlines the fact that Portugal and Spain are neighboring countries and that either in Portuguese or in Spanish, the expression Portugal Telecom has exactly the same spelling and meaning.
In sum, Complainant shows evidence of substantial goodwill and name recognition in the expression PORTUGAL TELECOM, based on its intensive use in a long term basis.
Once aware of the registration of the subject domain name, the Complainant addressed the Registrant, by e-mail, a proposal seeking the transfer of the domain names in question, transmitted on May 23, 2000 and again on June 19, 2000.
On June 20, 2000, Respondent answered the message, informing to be amenable to a settlement regarding the domain portugaltelecom.org. Complainant then requested this offer to be extended to the other domain, portugaltelecom.net, to which the Respondent agreed.
On July 1, 2000, Respondent confirmed his willingness to assign both domains and requested the Complainant to present a proposal for the conditions for such transfer. Since the Complainant, in response, informed its intention to reimburse the costs of the Respondent with the registration of these domain, no further was heard from the Respondent, despite the three times such proposition was transmitted. All the e-mails exchanged are copied as annexes S to Y of the Complaint.
Although duly notified of the Complaint, Respondent did not answer to it.
6. Discussion and Findings
The Policy, in its paragraph 4 (a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i) the subject domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii) respondent has no rights or legitimate interests in respect to the domain name; and
iii) respondentís domain name has been registered and is being used in bad faith.
A. Identity or confusing similarity between domain names and the Complainantís trademark:
Regarding the first of the elements, the Panel understands that the Complainant presented competent proof to have rights on the mark PORTUGAL TELECOM, which is registered in Portugal as of 1994 and being used regularly in that country and abroad. Further, the Panel finds that the subject domain names, <portugaltelecom.net> and <portugaltelecom.org> are indeed identical to the trademark belonging to the Complainant, since this mark is entirely reproduced in the domain names registered by the Respondent.
Hence, the Panel concludes that the first of the elements is present in this dispute.
B. Respondentís rights or legitimate interests in the domain names:
The Panel understands that the expression "PORTUGAL TELECOM" is indeed linked to the Complainant, since it is not only registered as a mark in its name, but also is the main part of the Complainantís trade name.
Further, the Complainant provided enough evidence of the renown of the mark PORTUGAL TELECOM in the country and abroad. Moreover, the Complainant showed that companies belonging to the holding Portugal Telecom Group do business in several countries, including in Spain, country of residence of the Respondent. Hence, the Panel understands that the Respondent, as a Spanish citizen living in that country could not be unaware of the Complainant, Portugal Telecom SA, as well as of its service mark PORTUGAL TELECOM, and its direct relation to the Complainant.
Besides, there is no evidence that the Respondent trades or offers any services or goods under the PORTUGAL TELECOM mark. In fact, as show annexes Z to CC and EE to FF, Respondent is not directly using the domain names in question, but holding them in an inactive manner.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names, and hence, finds present in the dispute the second element.
C. Existence of bad faith in Respondentís registration and use of the domain names:
It is clear to the Panel that the Respondent has registered the domain names <portugaltelecom.net> and <portugaltelecom.org> with the purpose of selling them to the rightful service mark owner.
Once summoned by the letter sent by the Complainant, the Respondent apparently forced the Complainant to offer an amount in exchange of the transfer of the domain names. Since the offer presented was not as expected, the Respondent simply cut the communication with the Complainant.
In fact, the Complainant and its mark are proved to be well-known in their country of origin and abroad. On the other hand, the Respondent does not have any activity in Portugal to justify the presence of the name of this country in the domain names, nor any activity in the telecommunications area, that could justify his choice for domain names composed by the word "telecom" Ė which is clearly short for "telecommunications" in English, as well as in Portuguese and in Spanish.
Hence, the renown of the expression PORTUGAL TELECOM, the lack of activity of the Respondent in the communications area and the absence of use of the domain names, allied to the proposition for a compensation for their transfer, can be considered as enough evidence of bad faith by the Registrant.
The Panel understands that all evidence as above shows that the Registrant obtained the registration of the domain names in question in bad faith and continues to ues them in bad faith..
The Panel, hence, finds present the third element.
As outlined above, the Panel concludes that the domain names <portugaltelecom.net> and <portugaltelecom.org> are identical to the Complainantís registered trademark PORTUGAL TELECOM; that the Respondent has no rights or legitimate interest in the domain names and that the Respondent registered the domain names in bad faith.
Therefore, pursuant to paragraph 4 (i) of the Policy, the Panel orders that the domain names <portugaltelecom.net>and <portugaltelecom.org> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: February 1, 2001