WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc)
Case No. D2002-0189
1. The Parties
The Complainant is GLB Serviços Interativos S.A., a Brazilian corporation with its principal place of business at Rio de Janiero, Brazil. The Complainant is represented by Matos & Associates, Attorneys of Rio de Janiero, Brazil.
The Respondent is Ultimate Search Inc. also known as Ult. Search Inc. of Hong Kong, China. The Respondent is represented by Dr. John B. Berryhill of Philadelphia, PA., United States of America. The Respondent is incorporated in the British Virgin Islands.
2. The Domain Name and Registrar
The domain name at issue is <paparazzo.com>. The domain name was registered with Registrar NameScout.com of Barbados (‘the Registrar’) on December 9, 2001. The name had been transferred to the Complainant by a previous registrant on August 12, 2001. At that time the Registrar was Network Solutions Inc (NSI). Registration to the Complainant had been cancelled by NSI by the date when the Respondent had acquired the name.
3. Procedural History
The Complaint submitted by the above Complainant was received on February 26, 2002, (electronic version) and March 4, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). After correspondence with the Center, Complainant submitted an Amended Complaint on March 25, 2002, (electronic) and April 2, 2002 (hard copy).
On March 6, 2002, a request for Registrar verification was transmitted by the Center to the Registrar, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with the Registrar.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") is in effect.
Indicate that, under the Registration Agreement, the registrant submitted to the jurisdiction of the Courts as provided in the Policy.
Indicate the current status of the domain name.
Indicate the language of the Registration Agreement.
By emails dated March 19 and 20, 2002, the Registrar advised the Center that: it had not received a copy of the Complaint from the Complainant; the domain name was registered with it; DNS Support/Ultimate Search was the registrant; the UDRP applied to the domain name, which was in ‘active’ status; the language of the agreement was English and an appropriate acknowledgement of Court jurisdiction was found in the registration agreement; DNS Support/Ultimate Search was the administrative, technical and billing contact. The registrant’s contact details were a post-office box in Hong Kong plus a telephone number and email address.
The Registrar has currently incorporated in its agreements with registrants the Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from the Registrar that the domain name in question is in ‘active’ status indicates that the Respondent has not requested that the domain name at issue be deleted from the domain name database. It has not sought to terminate the agreement with the Registrar.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Center on March 28, 2002, transmitted by post-courier and by email a notification of the Complaint, Amended Complaint and Commencement of Administrative Proceedings to the Respondent. Copies of the same documents were also emailed to the Registrar and to ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days in accordance with the Rules, by four sets of hard copy and by email.
A Response was received by the Center on April 18, 2002 (electronic), and April 22, 2002 (hard copy).
The Respondent requested a three-person Panel. Both parties have paid the amounts due to the Center.
The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in this case. It invited Professor David Sorkin of Chicago, Il, United States of America and Mr José Pio Tamassia Santos of Sâo Paulo, Brazil to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On May 16, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Paragraph 5(b) of the Rules, in the absence of exceptional circumstances, the Panel was required to forward its decision by May 30, 2002.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint and the Amended Complaint meet the formal requirements of the Rules and the Supplemental Rules.
On April 24, 2002, the Complainant, without seeking leave from the Panel, purported to file a further document. On April 25, 2002, Respondent did the same, presumably in response to the Complainant’s filing. The Panel declined to accept these supplementary filings in the exercise of its discretion. No reason for filing a supplementary document was advanced by the Complainant.
4. Factual Background
Complainant, on March 26, 2000, launched a major internet portal site named <globo.com>. Users of the internet through drop-down menus and contextual navigation have direct access to Globo media and publication sites. On this portal site are many home pages some institutional, others hosted for leisure purposes. They are often related to the products and services which <Globo.com> offers to viewers. Amongst the home pages hosted and advertised by Globo.com is <paparazzo.com.br>.
The Complainant applied for Brazilian trademark registrations for the name "Paparazzo" in June 2001. Registration has not yet been granted. Its <paparazzo.com.br> website shows "sensual pictures" from well-known media stars particularly those from Brazilian soap operas.
The Complainant’s registration for <paparazzo.com> had been cancelled allegedly for non-payment of registration fees. The name was then acquired by the Respondent. The Complainant claims that it has tried to ascertain the true existence and identity of the Respondent, said only to have been identified by "DNS" with a Hong Kong post box number as its only contact detail.
5. Parties’ Contentions
The disputed domain name is identical to the mark for which the Complainant has sought trademark registration in Brazil and which it has been using to provide internet services under the domain name <paparazzo.com.br>. Complainant alleges (but has provided no supporting evidence) that the mark is well-known in Brazil and to Brazilian communities in other countries.
Respondent was unable to verify the true existence of the Respondent which is not using the disputed domain name for any legitimate purpose. In particular, Respondent is not using the name in connection with a bona fide offering of goods or services. It was given no legitimate rights by the Complainant. It does not operate a business under the name "paparazzo" and is therefore acting in bad faith. It registered the name in order to prevent the Complainant from reflecting its mark in the corresponding domain name. The Respondent is giving the impression that the Complainant has an affiliation with it and that it is using the name to cause a substantial likelihood of confusion and that selling or renting the domain name could disrupt the Complainant’s business and/or tarnish its mark.
The Complainant is incorrect to say that ‘paparazzo’ is a fanciful made-up word as alleged in its original complaint. It is a generic word, coming initially from the Italian language. It was first found in the well-known movie ‘La Dolce Vita’. The word has been incorporated into English – the language of the registration agreement. It denotes an aggressive photographer of celebrities who seeks candid photographs of them, usually salacious. The word has been in English parlance for many years.
The Complainant originally alleged that ‘paparazzo’ was not a word. After correspondence between the Respondent’s attorney and the Complainant’s attorney, the Complainant’s attorney stated "based on your information we will evaluate the convenience of amending the complaint". The Respondent’s attorney had pointed to English dictionary references to the word. However, in the Amended Complaint the allegation was still present and the Amended Complaint was certified as correct by the Complainant’s attorney. The Respondent claims that this certification constitutes fraud on the part of the Complainant.
The services which the Complainant claims to be attached to the mark are described as "sensual pictures of well-known media stars". This could mean pornographic or erotic material depending on the point of view of the viewer.
The word "paparazzo" is not capable of acquiring a secondary meaning sufficient to justify a trademark. Rights to a trademark are conferred upon registration, not upon application. The Complainant bought the disputed domain name from a speculator in August 2001, instead of bringing a complaint under the Policy against that person.
The Respondent is, and was prior to the commencement of the dispute, actively engaged in using the domain name <paparazzo.com> to provide advertising referral links on a performance database of advertisers responsive to the word ‘porn’ being referred to a search engine by an internet user. The search-ranking along the Respondent’s webpage is determined by the value of competitive bidding by advertisers to obtain traffic based on key words utilised by the Respondent’s domain names.
The Respondent does not control the selection of advertisers on its search page. It relates concepts within names having primary or generic phrases to connect these concepts with search keywords in order to provide advertisers with targeted customer traffic. This legitimate business of the Respondent has been specifically documented in previous proceedings under the Policy. Registering domain names is not an illegitimate activity nor is registering presumptively abandoned domain names illegitimate.
For example, in Dial-a-Mattress Operating Corp v Ultimate Search, WIPO Case No. D2000-0764, the Panel found that the use of a generic term in a domain name as a search key to drive targeted relevant referral traffic to advertisers, was a legitimate use of a domain name. As part of its business, the Respondent examines lists of expiring domain names. It selects some of these for its portfolio. This is a legitimate business.
Respondent has been the subject of 5 decisions under the Policy. It has lost one which it was unable to challenge in the Courts of Kuwait within the relevant time provided by the Policy. See Edmunds.com. Inc v DNS Support, WIPO Case No. D2001-1319.
In the present case, there was a procedural delay when the WIPO Center required an amendment of the party named as the Respondent. In correspondence with the Center, the Complainant, according to the Respondent, ignored the Respondent’s attorney’s requests to be provided with the Complaint and exhibits. The Complainant also ignored the Center’s directions to provide these documents.
The Respondent is incorporated under the laws of the British Virgin Islands. The WHOIS data for the domain name clearly identifies "DNS Support/Ultimate Search" as the registrant and gives a postal address.
There is no evidence that the disputed domain name has been registered by the Respondent in order to block the Complainant from using the term ‘paparazzo’. The domain names <paparazzo.info> and <paparazzo.biz> are both registered to an individual in Germany. The domain names <paparazzo.net> and <paparazzo.org> are registered to different parties.
There is no evidence that the Respondent knew or should have known of any trademark application by the Respondent in Brazil. The Complainant presents no evidence of bad faith.
The Panel is requested to find Reverse Domain Name Hijacking against the Complainant on the grounds that the Complainant perpetuated a mistake of fact in its Amended Complaint (ie the allegation that paparazzo was a made-up word). Also, Complainant failed to serve the Complaint on the Respondent despite requests from Respondent’s counsel and the Center.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
-That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
-That the Respondent has no rights or legitimate interests in respect of the domain name; and
-That the domain name has been registered and is being used in bad faith.
In the view of the Panel, the disputed domain name is identical to the name for which a registered trademark application is pending in Brazil. A Complainant must show either common-law trademark rights (in a jurisdiction that recognises such rights) or an actual trademark registration. Often a trademark application follows a period over which a common-law mark has been established. However, in the present case, there is insufficient evidence of a common law trademark even if common law trademarks are possible in a civil law country like Brazil. The Panel cannot find the first criterion proved.
The Respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace – often through failure to renew registration. In the <edmund.com> case (WIPO Case No.D2001-1319) the Respondent was unsuccessful because the mark (Edmunds) had been used extensively since 1966 in connection with guides to automobile buyers. Its vehicle data was posted on the internet with 2.8 million visitors per month. Complainant had a registered trademark dating back to 1966. Respondent, as here, acquired the name after the Complainant had allowed registration to lapse. The Panel was able to infer bad faith registration by reason of the large reputation of the Complainant and the fact that a sophisticated dealer in domain names like the Respondent should have searched the US trademark registry.
The word ‘paparazzo’ is generic of a particular word which has well-known meaning in English, Italian and possibly other languages. There was no evidence to justify an assumption that the Respondent should have known that the disputed domain name was the subject of a trademark application in Brazil. The Respondent operates in Hong Kong where the main language spoken is Cantonese.
Accordingly in the opinion of the Panel, the Complaint must fail under all three criteria under the Policy. There is no proof of bad faith at the time of registration. The Respondent is using the name for what has been held in other WIPO decisions to be a legitimate business. Accordingly in the opinion of the Panel, the Complaint must fail.
7. Reverse Domain Name Hijacking
The Panel has demonstrated that this claim had little prospect of success in that it failed in all three criteria of the Policy which is a fairly unusual occurrence. There is also the strange behaviour of the Complainant in repeating the error in the Amended Complaint when this obvious error in the original complaint had been pointed out. The Panel is not prepared to infer fraud as invited by the Respondent. There is also the Complainant’s unwillingness to forward documentation to the Respondent’s lawyer even after the WIPO Center had directed it to do so.
Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." (See also Rule 15(e).) To prevail on such a claim, Respondent must show that Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v Trilynx Pty. Ltd., WIPO Case No. D2000-1224, (October 31, 2000). Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests." Goldline International, Inc. v Gold Line, WIPO Case No. D2000-1151 (January 4, 2000) citing, Loblaws, Inc. v Presidentchoice.inc / Presidentchoice.com, Case Nos. Af-0170a to – 0170c (eResolution, June 7, 2000).
The Panel knows of no case where conduct by a Complainant after the Complaint had been filed, as described above, was held to have been a factor in a finding of Reverse Domain Name Hijacking. It sees no reason why it should not, since a Reverse Domain Name Hijacking declaration must take into account equitable considerations. This conduct must however be makeweight. The primary enquiry must be whether the Complainant instituted the proceeding without having any real prospect of success.
The Panel considers that there could not have been any informed expectation by the Complainant that the Complaint would succeed on the first criterion under the Policy. The Complainant seemed to think that the possession of the domain name <paparazzo.com.br> was enough to entitle it to <paparazzo.com>. Evidence of widespread use and public acceptance of the name was sparse. Moreover, the Complainant could not realistically have expected that an entity in either the British Virgin Islands or in Hong Kong would necessarily have heard of a mark for a generic name used by a firm in Brazil. Accordingly, the Panel is prepared to make a finding of reverse domain name hijacking.
(a) The Complaint is denied.
(b) The Complainant is guilty of Reverse Domain Name Hijacking.
Hon. Sir Ian Barker QC
Professor David Sorkin
Mr José Pio Tamassia Santos
Dated: May 29, 2002