WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caloi Norte S/A v. Cambridge Capital Investment Ltd. and Newcastle FORSALE at Domain Collection.com
Case No. D 2001-1395
1. The Parties
The Complainant is Caloi Norte S/A, a Brazilian corporation, with place of business at Avenida Guido Caloi 1331, 05802-140 São Paulo, SP, Brazil.
The Respondents are Cambridge Capital Investment Ltd. and Newcastle FORSALE at Domain Collection.com, both with principal place of business at 1500 San Remo Av., Suite 125, Coral Gables, Florida 33146, United States of America.
2. The Domain Names and Registrars
The disputed domain names are <caloi.com>, <caloi.org>and <caloi.net>.
The registrar of the disputed domain names is Network Solutions, Inc. for the domain name <caloi.com> and DotRegistrar.com (aka iHoldings.com Inc.) for the domain names <caloi.org> and <caloi.net>.
3. Procedural History
The relevant procedural stages of this administrative procedure are as follows:
Complainant initiated the proceedings by the filing of a complaint via email, received by the WIPO Arbitration and Mediation Center ("WIPO") on November 23, 2001, and by hard copy received by WIPO on December 5, 2001.
WIPO issued a Complaint Deficiency Notification on December 3, 2001, and the Complainant replied on December 3, 2001.
Payment by the Complainant of the mandatory filing fees was duly effected.
WIPO transmitted a Request for Registrar Verification to the registrars, Network Solutions, Inc. and DotRegistrar.com (aka iHoldings.com Inc.) on November 30, 2001, and the Registrars’ verifications were received by WIPO on December 3, 2001, and November 30, 2001, respectively.
WIPO issued a second Complaint Deficiency Notification on December 6, 2001, and the amendment to the Complainant was received on December 7, 2001.
On December 10, 2001, WIPO transmitted to the Complainant a further request for an amendment of the Complaint as regards the registrars. The amendments to this request were received on December 12 and 13, 2001. On December 13, 2001, WIPO acknowledged Complainant’s communications.
On December 18, 2001, WIPO effected the formal requirements compliance checklist.
On December 19, 2001, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent via e-mail and courier mail. The Complainant was also copied this notification by e-mail.
On January 16, 2001, WIPO issued a Notification of Respondent default as no reply to the complaint was ever received by the Center.
On January 24, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 28, 2002, the undersigned sent by fax the executed Statement and Declaration to WIPO.
On January 31, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Panel received a hard copy of the file in this matter by courier from WIPO on February 5, 2002.
The Panel has not received any requests from Complainant or Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
As stated by the Complainant:
The expression «CALOI» is a surname in Brazil. More precisely, «CALOI» is the family name of the founder of the oldest company part of the present group of companies generally called «CALOI». Said oldest company – Bicicletas Caloi S/A – was founded on April 10, 1948 and its current president is Mr. Bruno António CALOI, grandson of the company’s founder.
The oldest Brazilian trademark registration for «CALOI» was granted in 1963 under serial number 279.229, covering a reasonable range of goods.
The Complainant is also the owner of several foreign mark registrations for «CALOI» in 26 (twenty-six) countries. From this list of marks the Complainant specifically mentions the United States of America trademark registration with the serial number 2,083,887, intended to cover "bicycles" in class 12, and registered in July 29, 1997 (with the first use claim on December 28, 1951 and in commerce since August 23, 1973).
Some trademark registrations are still recorded in the name of the oldest corporation of the group, i.e., Bicicletas Caloi S/A. But many others, including the Brazilian mark registrations were already assigned to the Complainant Caloi Norte S/A, as one of the other corporations of the group Caloi.
5. Parties’ Contentions
Complainant states that the domain names involved are identical to the mark «CALOI» in which the Complainant has rights.
Complainant states that the trademark «CALOI» is registered in several countries including the United States of America, where the Respondents are domiciled.
Complainant invokes that the name «CALOI» is the family name of its founder.
Complainant invokes that the expression «CALOI» is the main portion of the company’s corporate name.
Complainant alleges that the Respondents have no rights or legitimate interests in respect of the domain names in question.
Complainant argues that the domain names were registered in bad faith and the fact that they are intended for sale proves such bad faith.
Complainant argues that the domain names were registered primarily for the purpose of selling and that they are not even being used by the Respondents.
Complainant states that the Respondents tried to sell the domain names for US Dollars $3,900,00 (three thousand nine hundred dollars).
Complainant states that mark «CALOI» protects bicycles and their parts, articles for gymnastics and sports among other products.
All statements as regards the marks invoked were supported by the respective copies of the relevant certificates of registration.
The Respondents did not file a response within the deadline given. At the date this decision is being taken, the Panelist has not received any belated response or any other kind of reaction from the Respondents.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), aims to resolve disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that all Respondents have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In the present case all the requirements were fully met. The brief of the Complainant was filed according to the Rules, following the amendments requested. The Panel acknowledges that the Respondents were duly notified as foreseen in the Rules. However, NO responses were filed and the respective Notifications of Respondents’ default were also correctly issued.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain the requested relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a Trademark or Service Mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
The three domain names in question are composed exactly by the same word, which constitutes the mark of the Complainant.
Therefore, the domain names <caloi.com>, <caloi.org> and <caloi.net> are identical to the marks of the Complainant, namely Brazilian mark registrations and United States mark registration. The evidence of ownership by the Complainant for these marks is duly acknowledged.
The silence of the Respondents might be an indication that they have no rights or legitimate interests in respect of these domain names <caloi.com>, <caloi.org> and <caloi.net>.
The Panel, lacking of other information, still considered that the corporate names of the respondents – Cambridge Capital Investment Ltd. and Newcastle FORSALE at DomainCollection .com - do not establish any rights or any legitimate interests whatsoever in respect of the expression «CALOI» and, consequently, in respect of the domain names <caloi.com>, <caloi.org> and <caloi.net>.
The Panel considers that the oldest corporation of the Brazilian group of companies Caloi, incorporated in the distant year of 1948, has a well established activity. This reality must be stressed. Its industrial and commercial presence is spread at least in 26 countries covering goods of several classes, mainly bicycles and related goods.
The expression «CALOI», in the English language, which is the language of the Respondents operating in the United States, does not have any specific meaning. It may be considered as a fanciful expression.
On the other hand, in the Portuguese language the expression «CALOI» is a family name, and the surname of the founder of the group of companies Caloi.
The Panel considers the above aspects quite important.
Furthermore, it is evident, from the documents filed with the complaint, that the Respondents have registered the domain names <caloi.com>, <caloi.org> and <caloi.net> primarily for the purpose of selling, renting or otherwise transferring them to third parties for a valuable consideration (Article 4b) of the Uniform Domain Name Dispute Resolution Policy).
The Panel recognises that Complainant has established the third and final element necessary for a finding that the Respondents have engaged in abusive domain name registration and use and that the domain names <caloi.com>, <caloi.org> and <caloi.net> were obtained in bad faith.
In accordance with the documents submitted to the Panel it was clear that there were two Respondents - Cambridge Capital Investment Ltd. and Newcastle FORSALE at DomainCollection .com. Although two apparent different entities, they are part of the same reality. In fact, their addresses are exactly the same and when approached for a possible selling the offer included, for one single price, the three domain names <caloi.com>, <caloi.org> and <caloi.net>.
This explains why this decision is rendered regarding the two Respondents and the three domain names as a single case.
The Panel will therefore request the registrars – Network Solutions, Inc. and DotRegistrar.com (aka iHoldings.com Inc.) – to transfer the domain names <caloi.com>, <caloi.org> and <caloi.net> to the Complainant.
Based on its finding that the Respondents, Cambridge Capital Investment Ltd. and Newcastle FORSALE at Domain Collection.com, have engaged in abusive registration and use of the domain names <caloi.com>, <caloi.org> and <caloi.net> as provided by paragraph 4 (a) of the Policy, the Panel orders that the domain names <caloi.com>, <caloi.org> and <caloi.net> be transferred to the Complainant, Caloi Norte S/A, in accordance with the remedies set forth on paragraph 4(i) of the Policy.
António L. De Sampaio
Dated: February 14, 2002