WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Editora Globo S/A v. 3V Networks
Case No. D2006-0367
1. The Parties
The Complainant is Editora Globo S/A, São Paulo, Brazil, represented by Montaury Pimenta, Machado & Lioce, Brazil.
The Respondent is 3V Networks, Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <editoraglobo.com> is registered with Cydentity, Inc. d/b/a Cypack.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2006. On March 23, 2006, the Center transmitted by email to Cydentity, Inc. d/b/a Cypack.com a request for registrar verification in connection with the domain name at issue. On March 25, 2006, Cydentity, Inc. d/b/a Cypack.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
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 March 30, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2006. The Response was filed with the Center on April 19, 2006.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on May 8, 2006. 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.
4. Factual Background
The Complainant was founded in 1986, when Rio Gráfica Editora merged with Livraria Globo de Porto Alegre.
The Complainant is a part of Globo Comunicações e Participações S.A, which is one of the biggest media groups in Brazil.
The trademark EDITORA GLOBO has been used to distinguish the Complainant’s goods and services in Brazil, and the mark EDITORA GLOBO is currently used in connection with books, magazines and publishing materials in general.
The trademark EDITORA GLOBO is registered in Brazil and elsewhere.
5. Parties’ Contentions
The Complainant asserts that the trademark upon which the Complaint is based is EDITORA GLOBO, and the domain name in dispute is effectively identical.
The only difference between the disputed domain name and the Complainant’s trademark and service mark lies in the addition of “.com”.
The domain name in dispute reproduces exactly the Complainant’s mark.
The Respondent has no registration and/or application for the EDITORA GLOBO mark at the Korean Trademark Office.
The Complainant argues that it has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the domain name <editoraglobo.com> or any other domain names.
The Complainant’s trademark is well known, as the Complainant is part of the biggest media group in Brazil and has been in the business for twenty years.
The EDITORA GLOBO mark is an expression written in Portuguese (official language in Brazil – the Complainant’s country) and the Complainant argues that it has no meaning whatsoever in Korean or in English.
The Complainant claims that the Respondent is not commonly known or identified by the name EDITORA GLOBO, and it does not offer any goods or services under such mark.
The Respondent does not make a legitimate use of the domain name, since the Respondent only provides information on some of the Complainant’s magazine marks, and provides in the top of the website the following information: “Contact us if you are interested in above domain name.”
The Respondent’s use of the disputed domain name appears to be merely intended to sell the domain name or to divert potential customers to the Respondent’s website. The Complainant thus considers that it cannot be considered a bona fide offering of goods and services.
The Respondent seemingly invites offers to buy the domain name and thus demonstrates the Respondent’s intention to sell it for a profit.
The Complainant further argues that considering the offer to sell the domain name, the Respondent must have been aware of the Complainant’s trademark rights, especially since the Respondent lists in the website the main magazine marks owned by the Complainant.
The Respondent contends that the Complainant’s mark was not registered in Korea.
The Respondent has not acted in bad faith. The Complainant’s arguments are based on speculation.
The Respondent has no intention to engage in the same or similar business as the Complainant.
6. Discussion and Findings
A. Selection of Language
The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name in dispute is Korean, however, the Complainant asserts that English should be the language of the proceeding.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the registration agreement for the domain name in dispute was made in the Korean language. However, it appears, since the website is in English, that the Respondent either has sufficient ability communicating in the English language or has the assistance of others who are proficient in English.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, but that (ii) the Respondent’s response in the Korean language is considered by the Panel. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, (<cebit.com>).
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant’s marks are registered in Brazil and in other countries. The Complainant owns numerous marks including the words “Editora Globo.” The domain name wholly incorporates the Complainant’s distinctive mark and is thus identical to it. The suffix “.com” does not contribute to distinguish the disputed domain name from the Complainant’s trademark.
Therefore, the Panel finds that the domain name is identical to the Complainant’s marks pursuant to the Policy Paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several WIPO UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among other cases, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent is not, and has not been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven in the present case, given that they have not been denied by the Respondent.
The Respondent’s response is not substantive or persuasive. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in the domain name pursuant to paragraph 4(b) of the Policy.
E. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for the Complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(i), includes “circumstances indicating that you[Respondent] have registered or you[Respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” As set forth above, the Complainant contends that the Respondent has violated paragraph 4(b)(i) of the Policy, thus establishing bad faith.
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith. Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372. The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of paragraph 4(b)(i). The Respondent’s website stated, “ Contact us if you are interested in the above domain name.”
Bad faith can also be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s marks and claims of rights thereto. In this case, the Panel finds that the Respondent most likely was aware of the Complainant’s marks since the website with the domain name also announces the titles of the known magazines of the Complainant.
The conduct described above falls within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use of the domain name on the part of the Respondent.
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, <editoraglobo.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: May 22, 2006