WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Casa Cor Promoções e Comercial Ltda vs Nelson Abras
Case No. D2001-0628
1. The Parties
Complainant is Casa Cor Promoções e Comercial Ltda., a company existing and ruled under the laws of Brazil, based in the city of São Paulo, State of São Paulo, Brazil, with its principal place of business at Rua Tabapuã 838, casa 7, São Paulo, SP, Brazil.
The Respondent is Nelson Abras, a Brazilian citizen, domiciled in the city of Belo Horizonte, Minas Gerais, Brazil, at Rua Tamoios 212, Centro, Cep 30120-050, Belo Horizonte, Minas Gerais, Brazil.
2. The Domain Name and Registrar
The domain name at issue is <casacor.com>. 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 May 2, 2001, and in hard copy on May 7, 2001. The Complainant paid the required fee.
NSIís Verification Response was received by the Center on May 18, 2001, confirming to be the registrar for the domain name in question <casacor.com>, which is registered in the Respondentís name.
On May 21, 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 June 14, 2001.
On June 14, 2001, the Center appointed the undersigned as the sole member of the Administrative Panel.
4. Factual Background
Complainant is a famous Brazilian company acting mainly in the architectural, urban planning and decoration business. Complainant is active in Brazil and in other neighboring countries.
Since 1987, Complainant promotes an annual decoration event called "CASA COR". This event takes place in several cities throughout the country and consists in an exposition of decoration, urban planning, architecture and gardening. Each year the event takes place in a different construction, which has its premises changed by a group of professionals previously chosen by the Complainant.
The event can be currently considered as one of the top decoration events in Latin America, being the most important and visited one in Brazil, with more than a million visitors. Currently, the Complainant organizes the event in 12 different cities every year and all events are named "CASA COR".
This company publishes an annual magazine for each event in each city. This publication is directed to the visitors of the exposition, as well as to architects and students and bears information on all professionals and companies participating in the event. All these publications are available on line, at the Complainantís website, <www.casacor.com.br>.
Complainant holds six different registrations granted by the Brazilian Patent and Trademark Office, all for trademark "CASA COR" or for marks composed by the expression "CASA COR". Besides these, Complainant also holds other six registrations for the expression "CASA DA COR".
In addition to the Brazilian registrations, Complainant also owns registrations for their mark in Uruguay and in Peru, being five in the first one and one in the last country.
Complainant provided copies (annexes 3 of its complaint) of certificates for the registrations issued by the Brazilian Patent and Trademark Office concerning the trademark "CASA COR", the oldest one resulting from an application filed in June 30, 1987.
Besides, Complainant presented copies of registrations obtained for trademark "CASA COR" before the Uruguayan and the Peruvian Trademark Office (annex 4 of the Complaint).
5. Partiesí Contentions
Complainant contends that the domain name <casacor.com> is identical to and confusingly similar with their registered trademark "CASA COR", registered in Brazil in connection with the services rendered by the Complainant. With this mark Complainant identifies the widely known decoration exhibition, that takes place in more than 10 different cities in Brazil every year. This exhibition is widely known, in Brazil and abroad, for being organized by the Complainant.
Complainant showed ownership of registrations for "CASA COR" as a trademark in Brazil, resulting the oldest one from an application filed in 1987, the exact year when the first exhibition took place, as well as registrations obtained in other countries in America, (annexes 3 and 4 of the Complaint).
Also, Complainant informed that their main web page is under the domain name <casacor.com.br>, registered by the Brazilian official register.
Complainant sustains that the expression "CASA COR" is undeniably connected to the exhibitions they organize and has no other meaning or significance, than as the trademark that identifies the company, their events and services.
Complainant contends that the Respondent has no legitimacy to have registered the captioned domain name. Both Complainant and Respondent are established in Brazil and it is this country that the exhibits promoted by the Complainant take place and are well known, at least since the late eighties. Besides, Respondent has never been known by the expression CASA COR or CASACOR, and do not operate or has ever traded under this name in Brazil or abroad. This, added to the fact that the Respondent has never even applied for a registration for "CASACOR", according to the Complainant shows that the Respondent registered this domain name without a bona fide intent.
Another fact that is underlined by the Complainant is that the domain name <casacor.com> is directed to a home page owned by a company named Artmídia Comunicação Visual Criação e Arte Ltda. This company has registered several different domain names composed by Brazilian famous marks, according to the annex 7 attached to the Complaint. The Respondent, Mr. Nelson Abras, is one of the partners of the mentioned company, as shown in the annex 8 of the Complaint.
In addition, Complainant alleges that a significant number of disputes settled by this Center involved either the Respondent, his company (Artmídia) or his former partner, a Brazilian citizen named Italo de Barros Naddeo. As annex 12 of the Complaint, the Complainant attaches decisions rendered by the Center, where the Panelists considered the domain names to have been obtained by Artmídia or its partners in bad faith.
According to the Complainant, it is part of Artimidiaís business, as well as of its partners, to register domain names composed by famous trademarks to later negotiate them. As evidence of this allegation, the Complainant informs of an existing website where domain names are freely traded, "www.domainsbank.com" or "www.domainsbank.com.br".
While the first domain is registered under the name of Mr. Italo de Barros Naddeo, former partner of the Respondent, the other one belongs to Artmídia Comunicação, company owned by the Respondent. This is evidenced by annexes 8 to 10 of the Complaint. Also, as annex 11, the Complainant attaches copies of articles appearing in the Brazilian press, where the obtainment of domain name registrations to be later negotiated in the mentioned site is mentioned. It is interesting to note that Mr. Barros Naddeo and the Respondent where interviewed for these articles.
Although timely notified of the Complaint, the Respondent did not send any response 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 "CASA COR", which is registered in Brazil as of 1995 resulting from an application filed in 1987 and being used regularly in that country and abroad. Further, the Panel finds that the subject domain name <casacor.com> 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 Panel considers that the absence of the gap between the words CASA and COR in the domain name does not bring any distinctiveness to it.
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 "CASA COR" is indeed linked to the Complainant, since it is not only registered as a mark in its name, but also is used to identify their main activity, the unique decoration exhibition called "CASA COR". Further, the Complainant provided enough evidence of the renown of the exhibition marked "CASA COR" in the country and abroad.
Hence, the Panel understands that the Respondent, as a Brazilian citizen, domiciled in Brazil, could not be unaware of the Complainant, as well as of its yearly exhibition, "CASA COR".
Lastly, there is no evidence that the Respondent trades or offers any services or goods under the CASA COR mark, or that the Respondent is the owner of one of the registrations granted by the Brazilian Office. In fact, as show Exhibit S of the Complaint, Respondent is not directly using the domain names in question, but directing the viewers to his company, Artmídia Comunicação Visual Criação e Arte Ltda.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names, for this reason being present in the dispute the second element.
C. Existence of bad faith in Respondentís registration and use of the domain names
It is not clear to the Panel that the Respondent has registered the domain name <veja.com> with the purpose of selling it to the rightful service mark owner.
Indeed, the Complainant informs, in page 19 of the Complaint, that pre-complaint negotiations took place. Also is mentioned that, during these negotiations, the Respondent has suggested his interest to assign the domain name for a profitable consideration. However, no evidence of this so-called pre-complaint negotiation was presented.
On the other hand, the Complainant showed an intricate chain established by the Respondent, his company, Artmídia Comunicação Visual Criação e Arte Ltda and his former partner, Mr. Italo de Barros Naddeo.
The evidence brought by the Complainant indeed prove that the Respondent, the mentioned company and individual have registered a large number of domain names, mostly composed by famous trademarks, particularly of trademarks well known in Brazil. Besides, evidence shows that the Respondent operated a website which activity consisted in the commercialization of domain names.
Based on the allegations, this Panelist could confirm, by searching the Registrarís data bank, that the Respondent, the mentioned company and the individual indeed own several different domain names which are composed by famous Brazilian marks that belong to other companies, such as <meridional.com> and <bancoalfa.com>, which are known Brazilian banks; or <datafolha.com>, being <datafolha> a prestigious pool agency; or <walitta.com>, <santista.com>, <braspetro.com>, <redeshop.com>, <globorural.com>, <americanas.net>.
Besides the above, the Panel considers 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. 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 v Nuclear Marshmallows).
Hence, the renown of the expression "CASA COR", its peculiarity and direct relation to the Complainant, the lack of activity of the Respondent in the communications area and the absence of use of the domain names, allied to the ownership of other domain names composed by famous Brazilian trademarks, 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.
The Panel, hence, finds present the third element.
As outlined above, the Panel concludes that the domain name <casacor.com> is identical to the Complainantís registered trademark "CASA COR"; 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 name <casacor.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: August 1, 2001