WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Xuxa Promoes e Produes Artsticas LTDA. v. David Lichtman

Case No. D2006-0558

 

1. The Parties

The Complainant is Xuxa Promoes E Produes Artsticas Ltda., Rio de Janeiro, Brazil, represented by, Alves, Vieira, Lopes & Atem Advogados, Rio de Janeiro, Brazil.

The Respondent is David Lichtman, Galloway, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <xuxa-usa.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2006. On May 3, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 5, 2006, Network Solutions, LLC 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 May 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June7,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2006.

The Center appointed Antnio L. De Sampaio as the sole panelist in this matter on June20,2006. 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.

The Panel verified that the original language of the Complainant as well as the language of the registration agreement is English and, therefore, the proceedings will be conducted in English.

 

4. Factual Background

The Complainant Xuxa Promoes E Produes Artsticas Ltda., a Brazilian company asserts in its Complaint the following facts, which have not been disputed. Accordingly, consistent with the Panel’s obligation under the Rules [paragraph 15(a)] the Panel considers and decides these facts, based on the statements and documents submitted, as proved for the purposes of this Complaint.

a) Complainant is a Brazilian company owned and managed by the famous Brazilian TV personality, Ms.MariadaGraa Xuxa Meneghel, an entertainer, singer and performer, currently known as “Xuxa”.

b) Complainant is the titleholder of several Brazilian registrations for the Mark XUXA and, also, other Marks including the expression XUXA, all of them granted by the Brazilian Patent and Trademark Office (INPI), being the oldest Mark Registration dated August 3, 1983 (application date).

The Respondent registered the domain name <xuxa-usa.com> on October 8, 1999.

 

5. Parties’ Contentions

A. Complainant

Complainant brings to the attention of the Panel three recent UDRP cases which were decided in its favor:

(1) Xuxa Promoes e Produes Artsticas Ltda. v. Ivo Conestabile Junior, WIPO Case No. D2005-0873, regarding the domain name <xuxaonline.com>;

(2) in the matter of Xuxa Promoes e Produes Artsticas Ltda. v. Laporte Holdings, WIPO Case No. D2005-0899, regarding the domain name <worldxuxa.com>;and

(3) in the name of Xuxa Promoes e Produes Artsticas Ltda. v. Adriane da Silva, WIPO Case No. D2006-0039, regarding the domain name <xuxameneghel.com>.

The Complainant further asserts that it has registered, before the respective national authorities, the following Brazilian Marks:

No. 814766587 (1989); No. 814766609 (1989);

No. 811276643 (1983); No. 812975600 (1986);

No. 814731457 (1989); No. 814731465 (1989);

No. 814731473 (1989); No. 814731490 (1989);

No. 814731503 (1989); No. 814731481 (1989);

No. 814766587 (1989); No. 814766609 (1989);

No. 816740186 (1992); No. 816740208 (1992);

No. 817209611 (1993); No. 820006599 (1997);

No. 820006564 (1997); No. 820006572 (1997);

No. 820006580 (1997); No. 821867288 (1999)

 

 

 

 

 

 

 

Furthermore, the Complainant states that all the above Brazilian Mark Registrations are composed and/or contain the expression “Xuxa” and were duly registered in the name of the Complainant well before the creation of the domain name <xuxa-usa.com>.

The Complainant also argues that the Respondent registered the disputed domain name <xuxa-usa.com> in order to capitalize on the fame of the Complainant’s XUXA Marks.

The Complainant states that it is not related and/or affiliated in any possible way to the Respondent and has never directly or indirectly authorized the Respondent to use the Mark XUXA within the domain name at issue.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the domain name in question.

The Complainant argues that the domain name <xuxa-usa.com> reproduces the Marks it has registered for XUXA.

In fact, the word “usa is generally used in commerce and in the present case does not create a specific distinctiveness. On the contrary, it may lead to establish confusion.

The trademark XUXA was created by using a part of the personal name of Ms.MariadaGraaXuxaMeneghel who is also the owner of the Brazilian company Xuxa Promoes e Produes Artsticas, LTDA.

The Complainant asserts that “Xuxa”, as an artistic name, is well-known as result of her numerous TV productions. The Complainant also argues that XUXA has become well-known as a Mark applied on various commercial goods including toys, clothes, accessories and food, and in connection with television presentation services.

Finally, the Complainant argues that the Respondent’s bad faith on registering and using the disputed domain name is based on the following:

The domain name <xuxa-usa.com>, registered on October 8, 1999, and which is the subject of the Complaint, is linked to a website that uses as well as the name and mark XUXA, the image of the well-known person who is the owner of the Complainant.

Said site makes available, without any authorization whatsoever, the downloading of a number of videos and images of Xuxa and the Mark XUXA.

The Brazilian actress and TV entertainer known as XUXA has presented shows in the USA several times. This fact enhances the evident confusion established between the Complainant’s Mark and the Respondent’s domain name.

The website to which the domain name is linked has clear commercial intentions as it contains sponsor links and advertisements for a number of apparently unrelated sites, including a model agency site.

For these reasons, the Complainant seeks transfer of the domain name <xuxa-usa.com> to the Complainant.

B. Respondent

The Respondent did not file a response.

 

6. Discussion and Findings

The Panel recognizes and is satisfied that the Center has taken all possible and reasonable steps to bring the Complaint to the Respondent’s knowledge and attention.

There being no Response and in the absence of exceptional circumstances pursuant to paragraphs 5(e) and 14 (a)of the Rules, the Panel shall decide the present Complaint on the basis of the statements and of the documentation submitted, bearing in mind the Policy, the Rules and principles of law deemed applicable.

Under paragraph 4 (a) of the Policy, the Complainant bears the burden of proof in respect of the following three elements in order to obtain the requested remedy:

(i) respondent’s domain name is identical or confusingly similar to a trademark or to a service mark in which the Complainant has rights; and

(ii) respondent has no rights or legitimate interest in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

The Panel having considered each of the three above elements concludes as follows.

A. Identical or Confusingly Similar

The Complainant has, for many years, been the registered owner in Brazil of several trademarks and service marks for XUXA. Those Marks are being used regularly in Brazil and abroad.

The Panel finds that the subject domain name <xuxa-usa.com> entirely reproduces the Complainant’s trademark.

Furthermore, the Panel finds that adding the word “usa” is not sufficient to distinguish the domain name in dispute from the known Marks XUXA registered by the Complainant.

In fact, it was previously established by UDRP panels (for example, Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO Case No.D2003-0944; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No.D2001-0174 and Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No.D2000-0477), that forming a domain name by combining or adding common or generic terms to famous Marks is not sufficient to avoid confusion.

The Panel thus concludes that the disputed domain name is confusingly similar to the Complainant’s Marks.

Hence, the Panel finds that the Complainant has duly proved the first element required in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In the present case the Complainant has established its ownership of many registered Marks for XUXA. The Complainant has also established that the Mark XUXA is being used by the Complaint both in Brazil and the United States, the latter being the Respondent’s country of residence.

The Complainant has not granted the Respondent any rights to use the XUXA mark. Nor is there any evidence before the Panel to suggest that the Respondent has legitimate rights or interests in relation to the disputed domain name. The Respondent does not appear to use the disputed domain name in connection with a bona fide offering of goods or services, or to be commonly known by the disputed domain name. The website at the disputed domain name contains inter alia a number of photo galleries of images of the Complainant. It also contains a number of prominent links to apparently unrelated sites including chat rooms, and advertisements for, among other things, a modeling agency. There is nothing on the website with disputed domain name to justify a conclusion that the Respondent is making a legitimate noncommercial use of the domain name. Indeed, the presence of these links and advertisements strongly suggests use of a commercial nature.

In previous WIPO UDRP decisions involving apparent fan sites, the question of legitimate use has often been determined on the basis of the existence or absence of commercial use (See, e.g., Xuxa Promoes e Produes Artsticas Ltda. v. Ivo Conestabile Junior, WIPO Case No. D2005-0873). In the present case, there is no evidence before the Panel that the website at the disputed domain name is used for non-commercial purposes. On the contrary. An examination of the website at the disputed domain name and the presence of advertisements and links to unrelated sites strongly suggests use of a commercial nature.

In the circumstances, the Panel considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Accordingly, the burden of refutation shifts to the Respondent. The Respondent has not submitted a Response, nor is there any evidence to the contrary on the case file.

The Panel considers that it is particularly appropriate in the context of this case to make here the following citation of a renowned author: “ UDPR Panels have made it quite clear that it takes more than a Domain Name registration to obtain rights in a Domain Name” Jerome Gilson- Trademark Protection and Practice, 74.06 [2] [b] [iii], at page 7A-82 n236 (Mathew Bender 2004) (citing Panel decisions).

In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <xuxa-usa.com>.

Hence the Panel finds that the Complainant has duly proved the second element required in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s XUXA Mark was registered in Brazil in 1983 and is a well-known Mark in that jurisdiction due to the great success of the Complainant’s TV shows and to the goods and services offered in commerce under the Mark XUXA. The mark is also used in a number of other jurisdictions including the United States in which the Complainant has performed in musical concerts. The Panel considers it probable that the Respondent was aware of the use of the Complainant’s XUXA Mark in the United States at the time of registration. It is inconceivable to the Panel given the content of the website at the disputed domain name that the Respondent could have been unaware of the Complainant’s fame in Brazil.

Three recent WIPO UDRP decisions indicate that the Mark XUXA is being targeted by cybersquatters not only in Brazil, but also in the United States of America and in Spain. (Xuxa Promoes e Produes Artsticas Ltda. v. Ivo Conestabile Junior, WIPO Case No. D2005-0873; Xuxa Promoes e Produes Artsticas Ltda. v. Laporte Holdings, WIPO Case No. D2005-0899; Xuxa Promoes e Produes Artsticas Ltda. v. Adriane da Silva, WIPO Case No. D2006-0039, regarding the domain name <xuxameneghel.com>.

The factual circumstances developed in the Complaint establish that the Respondent in all probability registered the disputed domain name while conscious of the Complainant’s exclusive rights in the Mark XUXA to confuse Internet users regarding the true holder of the domain name.

The Complainant also pointed to the existence of what appear to the Panel to be commercial links on the Respondent’s website at the disputed domain name..

In using the domain name, it appears that the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s mark both as to affiliation with the website, and endorsement of links and advertisements on the website.

As a result of all the above, the Panel considers and decides that the Complainant has also proved the third element as required in paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Panel concludes that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy. The domain name in dispute which was registered by the Respondent, is confusingly similar to the Marks XUXA of the Complainant; and the Respondent has no rights or legitimate interests in respect of the domain name in dispute; and, the Respondent’s domain name has been registered and is being used in bad faith.

For all the foregoing reasons, in accordance with paragraph 4 (i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <xuxa-usa.com> be transferred to the Complainant.


Antnio L. De Sampaio
Sole Panelist

Dated: July 4, 2006