WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TV Globo Ltda. v. Web Soft
Case No. D2003-1014
1. The Parties
The Complainant is TV Globo Ltda., Rio de Janeiro, Brazil, represented by Matos & Associados, Brazil.
The Respondent is Web Soft, Salvador, Brazil, represented by Anderson Santana de Souza, Brazil.
2. The Domain Name and Registrar
The disputed domain name <wwwglobo.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2003. On December 22, 2003, a Request for Registrar Verification was transmitted to eNom, which failed to submit a verification response. Therefore, the Center made a Whois printout on December 29, 2003, which showed that the disputed domain name was registered with eNom, and that the Respondent, Web Soft, was the current registrant of the disputed domain name. The Panel would like to remind the Registrar of the importance of providing a verification response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2004. The Response was filed with the Center on January 8, 2004.
The Center appointed Peter D. Siemsen as the sole panelist in this matter on January 20, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel requested an extension of 10 days to issue a decision.
4. Factual Background
Complainant, TV Globo Ltda. is the largest television company in Brazil and one of the largest in the world.
TV Globo Ltda. is the owner of trademarks GLOBO.COM, registrations nos. 821.416.677 and 821.416.669, in classes 38 and 41 respectively; REDE GLOBO, registration nos. 817.665.633 and 817.665.625 in classes 38.10 and 41 respectively. Complainant also owns a trademark registration for GLOBO.COM in the United States, a trademark registration for GLOBO in Canada, and a Community Trademark Registration for REDE GLOBO. Both trademarks GLOBO and REDE GLOBO are well-known in Brazil and in other countries, specially in Latin America and Portugal.
Disputed Domain Name <wwwglobo.com> was registered in the name of the Respondent with eNom, Inc. on January 26, 2001.
5. Parties’ Contentions
- Trademarks GLOBO, GLOBO.COM and REDE GLOBO are registered in its name in Brazil; trademark GLOBO.COM is registered in the United States; trademark GLOBO is registered in Canada, and trademark REDE GLOBO is registered in the European Community. Complainant also uses these marks on its websites <globo.com> and <redeglobo.com.br>.
- Trademarks GLOBO and REDE GLOBO are well-known marks in Brazil and in other countries.
- The domain name <wwwglobo.com> incorporates Complainant's GLOBO.COM mark.
- Domain Name <wwwglobo.com> is confusingly similar to Complainant's trademark GLOBO.COM.
- The use of Domain Name <wwwglobo.com> may cause a likelihood of association with Complainant's products and services.
- Respondent has no legitimacy to use or register Domain Name <wwwglobo.com>.
- Respondent's use of the <wwwglobo.com> domain name is not in connection with a bona fide offering of goods or services.
- Respondent is not commonly known or identified by the name GLOBO.COM.
- Respondent does not operate a business commonly known as "GLOBO" or offer any goods or services under the GLOBO.COM mark.
- Respondent has not acquired trademark or service mark rights for the GLOBO.COM mark.
- Respondent is not making a legitimate non-commercial or fair use of the domain name <wwwglobo.com>.
- Respondent is diverting consumers away from the official site of Complainant.
- Respondent has intentionally attempted to attract Internet users to Respondent's website, for commercial gain by linking users to sex websites not related with Complainant, thus tarnishing Complainant's GLOBO and GLOBO.COM marks and causing damage to Complainant's and the goodwill associated with its GLOBO and GLOBO.COM marks.
- Respondent has registered the <wwwglobo.com> domain name for the purpose of selling or renting or otherwise transferring the domain name registrations to Complainant.
- Respondent has registered the <wwwglobo.com> domain name in order to prevent Complainant from reflecting its marks in corresponding domain name.
- Respondent's conduct is in violation of Brazilian trademark and unfair competition law.
- Complainant requests that the <wwwglobo.com> domain name be transferred to the Complainant.
Mr. Anderson Santana de Souza, administrative contact of Domain Name <wwwglobo.com>, has sent a response with the following contents:
- "www" is a generic term in a domain name.
- Respondent owns a registration for service mark PORTALGLOBO in class 35 in the United States.
- Respondent redirects visitors of the domain name <wwwglobo.com> to the websites "www.portalglobo.com/index.php" and "www.portalglobo.com/tradelink.php".
- Respondent has never requested any compensation for the domain name <wwwglobo.com>.
- 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 "wwwglobo".
- Respondent requests the Administrative Panel to deny the remedies requested by the Complainant.
6. Discussion and Findings
In the administrative proceeding each the following provisions of Paragraph 4(a) of the Policy must be attended by the Complainant:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Domain Name at issue is <wwwglobo.com>. Complainant is the title holder of the registered trademarks GLOBO.COM, GLOBO and REDE GLOBO. Trademark GLOBO.COM is identical to the relevant part of the Domain Name.
Taking the above into consideration, it is clear that the requirement of Paragraph 4 (a) (i) of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a Respondent can establish its rights or legitimate interests in a Domain Name by demonstrating one of the following facts:
(i) before any notice of the dispute, the respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent merely alleges that it redirects visitors of the domain name <wwwglobo.com> to its website <portalglobo.com> and does not present any evidence of any of the above circumstances (i), (ii) or (iii). So the Panel finds that the Respondent does not have any rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Whereas Complainant alleged that Respondent has registered the <wwwglobo.com> domain name for the purpose of selling or renting or otherwise transferring the domain name registration to Complainant, Complainant submitted no evidence in this respect, and Respondent, in its reply, denies that it contacted Complainant and requested any compensation for the <wwwglobo.com> domain name. Therefore, the Panel finds that the circumstance of 4(b) (i) cannot be invoked in this case.
The circumstance of 4(b) (ii) does not seem to be applicable to this case either, as Respondent's Domain Name <wwwglobo.com> coexists with Complainant's Domain Name <globo.com>.
Although the <wwwglobo.com> domain name redirects Internet users to a sex website, which may tarnish Complainant's good reputation, there is no evidence that Respondent has registered the Domain Name <wwwglobo.com> for the purpose of disrupting the business of TV Globo Ltda., as provide in clause 4(b) (iii) of the Policy.
On the other hand, facts show that Respondent has made use of a common tool used by typosquatters to obtain registration of <wwwglobo.com> so that it could coexist with <www.globo.com> of the well-known TV and publishing group GLOBO. This procedure enabled the Respondent to redirect Internet users to its sex website, thus tarnishing Complainant's public image and reputation.
By using a domain name embodying the GLOBO and GLOBO.COM marks, which are very well-known marks, not only in Brazil but all over the world, Respondent would easily attract Internet users to its website through its typosquatting behaviour. Therefore, the Panel finds that the provisions of 4(b)(iv) of the Policy have been met.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwglobo.com> be transferred to the Complainant.
Peter D. Siemsen
Date: February 13, 2004