WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

METRO SB-Handels AG v. Paulo Cesar de Souza Peixto

Case No. DBIZ2002-00253

 

1. The Parties

Complainant is METRO SB-Handels AG, NeuhofstraBe 4, CH- 6340 Baar, Switzerland.

Respondent is Paulo Cezar de Souza Peixoto, Rua Venezuela, 162, Apto. 101, Jardim Maringa, Macaé, Rio de Janeiro, 27936500, Brasil.

 

2. The Domain Name and Registrar

The domain name at issue (the Domain Name) is <viva.biz>.

The registrar of the Domain Name is Internet Domain Registrars (dba Registrars.com).

 

3. Procedural History

On May 21, 2002, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], by e-mail and in hard copy on May 24, 2002.

The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Start-up Trademark Opposition Policy [hereinafter referred to as the STOP Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative. The Panel has reviewed the documentary evidence provided by the parties and with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the STOP Rules.

In a letter dated June 4, 2002, sent by e-mail and courier, the Center informed the Respondent of the commencement of the proceedings as of June 4, 2002, and of subsection 5 of the ICANN Rules which grants the respondent 20 days to respond to the Complaint.

On June 22, 2002, the Center received via e-mail the Response. In an e-mail dated June 24, 2002, the Center acknowledged its receipt of the Response and requested that the Respondent corrects his Response by removing all references made to the National Arbitration Forum.

On June 26, 2002, the Center received the corrected Response by e-mail and sent by way of e-mail an acknowledgment of Receipt.

The Center then informed the Parties on July 15, 2002, that an administrative panel had been appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the STOP Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions have been received by the Panel from either of the Parties since its formation.

The Panel is obliged to issue a decision on or prior to July 29, 2002, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.

 

4. Factual Background

The Complainant alleges to be an affiliated company of METRO Dienstleistungs-Holding GmbH, Duesseldorf. The business is in connection with various food articles. It has registrations for the <VIVA> trademark.

The Respondent alleges to be a doctor who has graduated from the Universidade Federal do Rio de Janeiro in Brazil. He is the author of 24 works published in scientific medical journals (Exhibit 9 ). He is a professional Musician and a classical guitarist from the Ordem dos Musicos do Brasil. He is also a plastic artist with some works in oil on screen. He is a Technician in Business Administration having graduated at Colegio Estadual Professor Murilo Braga. He is an electronic technician, a programmer and a webdesigner.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends it is the owner of VIVA trademarks.

The Complainant contends it is well known in Germany and all over the world and has acquired a good reputation for various food articles.

The Complainant contends the Respondent has no rights nor legitimate interests in the trademark <VIVA> since there is no connection between his business and the domain name.

Complainant contends circumstances indicate that the Respondent registered the domain name to either disrupt the business of a competitor or attract commercial gain from the Complainant's famous trademark.

The Complainant contends the domain name was registered in bad faith.

B. Respondent

The Respondent contends the Complainant is unknown in the countries it has not registered its trademark in and himself has never been aware of the Complainant's existence.

The Respondent contends the word <VIVA> is used by many entities throughout the world who practice in various fields and business activities that are different from the Complainant's (Exhibits 1, 1-2, 1-3, 2, 3, 4, 6, 7, 8, 8-2, 8-3, 8-4, 8-5 and 8-6).

The Respondent contends the trademark <VIVA> is a common and generic word given that the GOOGLE search engine can find 1.760.000 results for that word (Exhibit 5). There can therefore be no exclusivity on this mark.

The Respondent contends all of the companies who use the trademark should have equal rights to the mark given its common nature.

The Respondent contends he has invested in the domain name, with which he has been developing a website about medicine, to divulge medical and scientific information and advice to the public.

The Respondent contends the website "http://www.planet.biz" is almost designed completely (Exhibit 10).

The Respondent contends he did not act in bad faith when he registered the domain name. He claims he has never offered to sell the domain name to the Complainant or its competitors, he has had no intentions of harming anyone by registering the domain name, and he has had no intentions of obstructing the Complainant's business since they both have different business interests.

 

6. Discussion and Findings

Pursuant to the STOP Policy the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show that:

i) the Domain Name is identical to a trademark in which it holds rights; and

ii) the Respondent has no legitimate rights or interests in the Domain Name; and

iii) the Domain Name was registered or used in bad faith.

These three elements will be considered below.

Identical to Trademark in Which the Complainant Has Rights

The Panel finds the disputed domain name <viva.biz> is identical to the <VIVA> mark owned by the Complainant. In STOP proceedings, the generic top-level domain ".biz" is irrelevant when determining whether a domain name and mark are identical. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the ".biz" in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted rights).

It is to be noted, however, that although the Complainant has proceeded in the registration of the trademark <VIVA> in some countries of Europe, there is no evidence of the extent of the use of the trademark and more importantly of the distinctiveness and reputation it has acquired.

Respondent's Rights or Legitimate Interest

The Panel finds the Respondent has rights or legitimate interests to the domain name since there is no evidence pointing in the other direction. The Respondent's evidence clearly supports that the mark <VIVA> is commonly used as trademarks by many entities for various types of activities. Anyone of these entities would have a right in the disputed domain name given that the mark it includes cannot be exclusive to anyone. VIVA is a common word in the Spanish language. See "http://www.diccionarios.com". Therefore, no one can claim to have exclusive rights in this word.

Moreover, in the absence of any effort on the part of the Complainant to prove the Respondent's lack of rights or interests in the domain name, the Panel cannot find in favour of the Complainant on this matter.

Respondent's Bad Faith

The Panel finds the Complainant has failed to satisfy its burden of proof. There is no evidence that the Respondent registered the domain name to either disrupt the Complainant's business or to attract commercial gain from the Complainant's reputation, as claimed by the Complainant, especially since both parties are involved in different activities.

The Panel thus concludes there has not been any bad faith on the Respondent's part when it registered the domain name.

 

7. Decision

For the foregoing reasons, the Panel decides:

- that the Domain Name registered by the Respondent is identical to a trademark in which the Complainant has rights;

- that the Respondent has rights or legitimate interests in respect of the Domain Name; and

- the Domain Name has not been registered or is not being used by the Respondent in bad faith.

Accordingly, the Complainant having failed to meet its burden on all of the three elements which need to be proven cumulatively, the Panel dismisses the Complaint.

 


 

Hugues G. Richard
Sole Panelist

Dated: July 29, 2002