WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aço Minas Gerais S/A. v. Frederico Silva
Case No. D2001-0084
1. The Parties
Complainant is Aço Minas Gerais S/A - AÇOMINAS, a company existing and ruled under the laws of Brazil, based in Ouro Branco, Minas Gerais, Brazil, with its principal place of business at Rodovia MG 443, KM 07, Fazenda do Cadete, Ouro Branco, Minas Gerais, Brazil.
The Respondent is Frederico Silva, an individual with mailing address at R Paulo X, Rio de Janeiro, RJ 21001001, Brazil.
2. The Domain name and Registrar
The domain name at issue is <acominas.net>. The Registrar is e-names.org, ("the Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (henceforth "The Center") received the Complaint by e-mail on January 17, 2001, and on January 22, 2001, in hardcopy. The Complainant paid the required fee.
The Registrarís verification response was received by The Center on February 8, 2001, confirming to be the registrar for the domain name in question, <acominas.net> which is currently registered in the Respondentsí name. According to the Registrar, the domain name was previously registered under the name of Jose Dutra, but the records were later changed, to reflect Rodrigo Silva as the current registrant.
On February 28, 2001, 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 March 23, 2001.
On April 11, 2001, the Center appointed the undersigned as the sole member of the Administrative Panel.
4. Factual Background
Complainant is a Brazilian company which produces an average of 2.2 million tons of several semi-finished steel products. Complainant currently commercialize these goods over all continents, including Asia. All these products are identified by Complainantís main trademark , AÇOMINAS, as has been done for the last fourteen years.
Complainant is the titleholder of several registrations for AÇOMINAS granted by the Brazilian Patent and Trademark Office ("INPI"), the senior one having been granted in 1992. Complainant also holds registrations for trademark AÇOMINAS in Argentina since 1996. Complainant provided copies (annexes three and four of its complaint) of certificates for the Brazilian registrations, besides, the copies of two Argentine registrations, annexes five and six of the complaint.
5. Partiesí Contentions
Complainant contends that the domain name <acominas.net> is identical to and confusingly similar with their registered trademark "AÇOMINAS", registered in Brazil since 1992 and used in connection with the manufacture and the commercialization of steel, as well as of steel semi-finished products in all the country and abroad.
Additionally Complainant holds rights derived of the trade name AÇO MINAS GERAIS S/A - AÇOMINAS, as above outlined.
In sum, Complainant shows evidence of substantial goodwill and name recognition in the expression AÇOMINAS, based on its intensive use in a long term basis.
Complainant states that the domain name in question is not being used by the Respondent in connection with any bona fide offering of goods and services, which would enhance Respondentís bad faith.
Also, Complainant alleges that the address provided by the Respondent to the Registrar is false, since it shows no numbering in the street indicated.
Further, a discussion held last September, 2000 by e-mail (annex eight) between one of the internal attorneys for the Complainant and the Respondent show the intention of this latter to acquire the domain name <acominas.com>, which was object of decision D2000-1458. The Complainant wishes to connect this discussion with the present case, since the domain now in question was indeed transferred to the Respondent after the date mentioned in the correspondence, as stated by the Registrar (above).
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 "AÇOMINAS", which is registered in Brazil as of 1992 and being used regularly in the country and abroad. Further, the Panel finds that the subject domain name, <acominas.net> is indeed identical to the trademark belonging to the Complainant, since this mark is entirely reproduced in the domain name registered by the Respondent, the difference between letters "c" and "ç" being irrelevant to the case.
Hence, the Panel concludes that the first of the elements is present in this dispute.
B. Respondentís rights or legitimate interests in the domain name:
The Panel understands that the expression "AÇOMINAS" 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. In fact, "AÇOMINAS" does not belong to the Portuguese vocabulary, being more clearly a contraction of the two first words of the Complainantís trade name, AÇO MINAS GERAIS. This fact enhances the necessary link of this word with the Complainant.
Further, the Complainant provided enough evidence of the renown of the mark AÇOMINAS in Brazil and abroad. Hence, the Panel understands that the Respondent, as a citizen living in Brazil could not be unaware of the Complainant.
Besides, there is no evidence that the Respondent trades or offers any services or goods under the AÇOMINAS mark. In fact, as show annex nine of the Complaint, Respondent is not directly using the domain name in question, but holding it in an inactive manner.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name, for this reason being present in the dispute the second element.
C. Existence of bad faith in Respondentsí registration and use of the domain names:
It is clear to the Panel that the Respondent has registered the domain name <acominas.net> with no purpose of using it directly associated to its own activities. In fact, the only manifestation the Panel could note from the Respondent was the e-mail sent to the Complainant, as mentioned above. Besides that, no further action from this Respondent was noticed.
The Panel understands that the inactivity of the Respondent, by not using the domain registered and consequently holding passively such domain, can be understand as an act of bad faith. Indeed, the concept of bad faith is not limited to positive action; total lack of action, when considered together with all the particular circumstances of the specific case, can also be admitted within the concept, according to the hypotheses contemplated by paragraph 4 (b) of the Policy (please see case D2000-0003 - Telstra Corporation Limited x Nuclear Marshmallows).
Indeed, the inactivity of the Respondent, as well as the ironic response given in the above mentioned e-mail, added to the suspicious incomplete address furnished to the Registrar provided this Panel the clear conviction that the Respondent violated the standards of good faith.
The Panel understands that all evidence as above shows that the Registrant obtained the registration of the domain name in question in bad faith.
The Panel, hence, finds present the third element.
As outlined above, the Panel concludes that the domain name <acominas.net> is identical to the Complainantís registered trademark AÇOMINAS; that the Respondent has no rights or legitimate interest in the domain name and that the Respondent registered the domain name in bad faith.
Therefore, pursuant to paragraph 4 (i) of the Policy, the Panel orders that the domain name <acominas.net> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: May 4, 2001