WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rigesa, Celulose, Papel e Embalagens Ltda. v. João José Vasconcelos Jr. a.k.a. Asterix
Case No. D2001-0838
1. The Parties
RIGESA, CELULOSE, PAPEL E EMBALAGENS LTDA., a company existing and ruled under the laws of Brazil, based in Campinas, São Paulo, Brazil, with its principal place of business at Av. Carlos Grimaldi, 1701, 5ļ e 6ļ floors, Suites 5A., 5B. and 6A., Fazenda São Quirino, Campinas, São Paulo, Brazil.
The Respondent is João José Vasconcelos Junior a.k.a. ASTERIX, an individual with mailing address at Avenida Sernamentiba 3600, BL 5 Ė Apto. 1602, Rio de Janeiro, RJ 22630-010, Brazil.
2. The Domain name and Registrar
The domain name at issue is <rigesa.com>. The Registrar is Network Solutions, Inc. ("the Registrar").
3. Procedural History
The WIPO Arbitration and Mediation Center (henceforth "The Center") received the Complaint by e-mail on June 28, 2001, and on July 3, 2001, in hardcopy. The Complainant paid the required fee.
The Registrarís verification Response was received by The Center on August 21, 2001, confirming NSI to be the registrar for the domain name in question, <rigesa.com>, and that it is currently registered in the Respondentsí name.
On August 23, 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 September 13, 2001.
On October 4, 2001, the Center appointed the undersigned as the sole member of the Administrative Panel. Initially, the deadline to hand in the decision was in accordance with Rules, Paragraph 15. However, the Panelist requested an extension of the deadline in view of exceptional circumstances, and, in view of this, The Center granted an extension of deadline to October 31, 2001.
4. Factual Background
Complainant is a Brazilian company and a member of the international Holding Westvaco Corporation. It is understood that the Complainant is the largest paper products company in Brazil. Complainant currently exports these goods to many countries, including Argentina, Bolivia, Chile, Paraguay, Uruguay, China, Italy and Pakistan. All these products are identified by Complainantís main trademark, RIGESA, as it has been done for nearly 25 years.
Complainant is the titleholder of several registrations for trademark RIGESA, granted by the Brazilian Patent and Trademark Office ("INPI"), the senior one having been granted in 1976. Complainant also holds registrations for trademark RIGESA in Argentina (since 1993), Uruguay (Since 1993), Paraguay (since 1992) and European Community (since 1999). Complainant provided copies (annexes three to seven of its Complaint) of the relevant certificates of registration.
5. Partiesí Contentions
Complainant contends that the domain name <rigesa.com> is identical to or confusingly similar with their registered trademark "RIGESA", registered in Brazil since 1976 and used in connection with the production and the commercialization of paper products, which are exported to countries all over the world.
Additionally, Complainant holds rights over the tradename RIGESA, CELULOSE, PAPEL E EMBALAGENS LTDA, as above outlined.
In sum, Complainant has presented solid evidence of being the rightful owner of trademark and tradename "RIGESA". Complainant also contends that the expression "RIGESA" comes from the composition of two family names, "RIBEIRO" and "GERIN", which together established the company named Ribeiro Gerin S/A, or simply RIGESA. Ribeiro Gerin S/A is the former name of the Complainant.
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 indicates the presence of bad faith for having registered this domain name. As seen in Flammarion SA v. Lee Ha-won, WIPO Case No. D2000-0132, "inaction, or even a passive holding of a domain name registration can, in some circumstances, constitute using a domain name in bad faith." This concept is believed to have been first sustained in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003, in which remained clear that "using a domain name is not limited to positive action."
Not withstanding, the Complainant has evidenced that the Respondent is offering the domain name <rigesa.com> on a famous Internet auction company named MERCADO LIBRE, also famous in Brazil, which indicates that the Respondent registered this domain name to take the highest bid on it. This also shows that the Respondent does not wish to transfer this domain name for a reasonable value and that he is speculating.
Further, in view of the fame of mark "RIGESA" in Brazil, it would not be suitable to sustain that the Respondent, a Brazilian citizen, did not have knowledge of the Complainant's history in the referred country.
Although duly notified of the Complaint, Respondent did not answer to it. Later, on September 13, 2001, the Center sent a Notification of Respondent Default to the Respondent, to which the Respondent replied. The Respondent informed that he registered the domain name in question "in a purpose to offer advice to the Rigesa Company"(Respondent's words).
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented 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 of its right in the trademark "RIGESA", which is registered in Brazil as of 1976 and being used regularly in the country and abroad. Further, the Panel finds that the subject domain name, <rigesa.com> is indeed identical to the trademark belonging to the Complainant, since this trademark is entirely reproduced in the domain name 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 name:
The Panel understands that the expression "RIGESA" is indeed linked to the Complainant, since it is not only registered as a trademark under its name, but also is the main part of the Complainantís tradename. In fact, "RIGESA" does not belong to the Portuguese vocabulary, being more clearly a contraction of two family names, RIBEIRO and GERIN. This fact enhances the necessary link of this expression only to the Complainant.
Further, the Complainant provided enough evidence of the renown of the mark RIGESA in Brazil and abroad. Hence, the Panel understands that the Respondent, as a citizen living in Brazil could not be unaware of the Complainant. Although no Response was submitted and, therefore, no claims of legitimate interest made, the fame of the Complainant's mark makes, it difficult to believe that the Respondent could have sustained any argument on the this issue.
Besides, there is no evidence that the Respondent trades or offers any services or goods under the RIGESA mark. In fact, as informed by 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 <rigesa.com> with no intent of using for its own activities. In fact, the Panel finds that the sole intention of the Respondent with the registration of the domain name <rigesa.com> was to sell it for the company or third-person wishing to pay the highest price for it. As proved by the Complainant with Exhibit ELEVEN of its Complaint, the Respondent is offering domain name <rigesa.com> on a famous Internet auction company named MERCADO LIBRE, also famous in Brazil.
The Panel considers that the inactivity of the Respondent, by not using the domain registered and consequently holding passively such domain, can be understood to have been in bad faith. In fact, as previously mentioned by this Panel, 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 constitute bad faith.
The inactivity of the Respondent, as well as the extemporaneous ironic Response given in the above mentioned e-mail, added to the fact that he is offering the domain name on an auction site along with other domain names, provides this Panel the clear conviction that the Respondent violated the standards of good faith.
The Panel believes that all evidence, as presented above, shows that the Registrant, here the Respondent, obtained the registration of the domain name in question in bad faith and is using it in bad faith.
The Panel, hence, finds present the third element.
As outlined above, the Panel concludes that the domain name <rigesa.com> is identical to the Complainantís registered trademark RIGESA; that the Respondent has no rights or legitimate interest in the domain name and that the Respondent registered and is using the domain name in bad faith.
Therefore, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name <rigesa.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: November 8, 2001