WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

XUXA PROMOES PRODUES LTDA. v. Admin, Domain

Case No. D2006-0971

 

1. The Parties

The Complainant is XUXA PROMOES PRODUES LTDA. of Rio de Janeiro, Brazil, represented by Alves, Vieira, Lopes of Brazil.

The Respondent is Admin, Domain of the Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

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

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 4, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 7, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 10, 2006. The Center verified that the Complaint together with the amendment to 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 August16,2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September5,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2006.

The Center appointed Daniel Pea as the sole panelist in this matter on September13,2006. 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 is the proprietor of the following Brazilian trademark registrations:

REGISTRATION NUMBER

DATE

TRADEMARK

CLASS

814766587

20/04/1989

XUXA MENEGHEL

25: 10-20

814766609

20/04/1989

XUXA MENEGHEL

24: 10-20

790334461

14/11/1979

XUXINHA

25:10-20-30

811276643

23/08/1983

XUXA

38:10

812975600

20/11/1986

BEIJINHO BEIJINHO DA XUXA

38:10

814731457

03/03/1989

XUXA DISCOS

09:40

814731465

03/03/1989

REVISTA DA XUXA

11:10

814731473

03/03/1989

XUXA

28:10

814731490

03/03/1989

XUXA

03:20

814731503

03/03/1989

XUXA

16:20

814731481

03/03/1989

XUXA

33:10

814766587

20/04/1989

XUXA MENEGHEL

25:10-20

814766609

20/04/1989

XUXA MENEGHEL

24:10-20

816740186

10/06/1992

XUXA PARK

38:10

816740208

10/06/1992

XUXA

31:10

817209611

16/04/1993

XUXA PARK

41:20

820006599

13/08/1997

XUXA MAGIC CLUB

41:20

820006564

13/08/1997

PARQUE DA XUXA

41:20

820006572

13/08/1997

XUXA WATER PARK

41:20

820006580

13/08/1997

CLUBE DA XUXA

NCL (7) 41

All the above Brazilian trademark registrations were duly registered in the name of the Complainant before the creation of the disputed domain name.

The Complainant has an official website named Potal X, accessed through the local domain names <portalx.com.br> and <xuxa.com.br>.

 

5. Parties’ Contentions

A. Complainant

The domain name <xuxa.com> reproduces the Complainant’s registered trademark XUXA.

The trademark Xuxa was created by using a part of the name of the owner of the Complainant, MariadaGraa Xuxa Meneghel.

She is well-known for her television productions and commercial goods. Xuxa is a brand that is known worldwide, and the domain name may cause the consumer confusion by making Internet users think that it is the official website of the trademark owner.

Xuxa’s television shows date from the mid-eighties and are still being aired today. The Complainant contends that there is no other artist Xuxa as well-known worldwide as the Brazilian Xuxa.

The Complainant contends that the use of the disputed domain name could bring damage to the value of the trademarks XUXA.

Xuxa Promoes e Produes Artsitcas Ltda., the Complainant, is the sole owner of a number of trademarks related to the expression “Xuxa”, with all registrations duly made before the Patent and Trademark Office of Brazil.

The Complainant’s owner also has a Foundation, assisting children since the year of 1989, named “Fundao Xuxa Meneghel”. The Complainant has presented some pictures from Xuxa’s television shows, products and Foundation.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant contends that the Respondent has no rights in the well-known trademark XUXA or other marks containing the term “Xuxa”.

On this basis, the Complainant requests that the domain name be transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Panel recognizes and is satisfied that the Center has taken all 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 this Complaint on the basis of the statements and of the documentation submitted, bearing in mind the Policy and the Rules.

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

Complainant has demonstrated rights in the XUXA trademark and a number of other marks including the term “Xuxa”, including registrations in Brazil. Complainant’s trademark registrations pre-date Respondent’s domain name registration.

The domain name <xuxa.com> reproduces in its entirety the expression “Xuxa”, identical to the word constituting Complainant’s XUXA trademark. It is well-established that the gTLD “.com” should be disregarded for the purpose of this comparison.

In conclusion, the Panel finds that the disputed domain name and the trademarks of the Complainant are identical.

The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph4(a).

B. Rights or Legitimate Interests

The Complainant must evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent in a Policy proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorized Respondent to use or apply for any domain name incorporating the Complainant’s trademark XUXA.

There is no evidence before the Panel to suggest that the Respondent has used or has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The website at the disputed domain name currently appears to be a parked site containing a generic "search" facility and a number of click-through links. Some of these relate to "buying a domain name", and others to various online gambling or gaming sites. No goods or services appear to be offered for direct sale by the Respondent through the site itself. The Respondent is not called "xuxa", and there is no evidence before the Panel that the Respondent is commonly known by the disputed domain name. The presence of links on the website which are presumably intended to generate click through revenue for the Respondent do not suggest to this Panel that the Respondent is intending to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain.

Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes primafacie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: a 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, provided that the respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii)); or, by using the domain name, the 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 the respondent’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)).

The Panel considers that the Respondent was in all likelihood aware of the Complainant's famous XUXA mark at the time of registration of the disputed domain name. The Panel considers that the Respondent's choice of the disputed domain name was not mere coincidence. In all probability the Respondent intended to use the disputed domain name to profit from likely confusion with the Complainant and its well-known XUXA mark.

It should also have been clear to the Respondent at the time of registration that one of the probable consequences of registering the domain name <xuxa.com> would be to prevent the owner of the well-known trademark XUXA from reflecting that mark in a corresponding domain name. Whether this was the Respondent's actual intention at the time of registration, or indeed whether the Respondent has engaged in a pattern of such conduct for the purpose of paragraph 4(b)(ii) of the Policy, is difficult to determine on the evidence before the Panel.

However the Respondent is currently using the <xuxa.com> domain to post click through links from which it presumably obtains or intends to obtain a profit. No attempt has been made to avoid the foreseeable likelihood of confusion with the Complainant’s well-known mark as to sponsorship, affiliation or endorsement of the website. The Panel considers in the circumstances that the Respondent is in all probability using the domain name to attract for commercial gain users to the website precisely because of the likely prospects for such confusion; to free-ride in effect on the fame of the Complainant’s XUXA mark. For these reasons, the Panel is satisfied on balance that the Respondent’s conduct falls within the circumstances described in paragraph 4(b)(iv) of the Policy.

Since the Respondent failed to file a Response, it did not bring to these proceedings any evidence which could justify why the Respondent chose the disputed domain name.

The Respondent also provided or failed to correct false contact details. A good faith registration and use of a domain name requires the full disclosure of all required information, such as a true and correct name and contact details. Providing or failing to correct false information and concealing one’s true identity can be deemed as evidence of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Concerning the use of the disputed domain names, the Panel also considers that the passive holding of a domain name <xuxa.com> can be seen as use in bad faith, in particular when there is no obvious legitimate use of the domain name.

Therefore, the Panel concludes that the Respondent has registered and is using the domain name <xuxa.com> in bad faith within the meaning of paragraph4(b) of the Policy.

7. Decision

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 <xuxa.com> be transferred to the Complainant.


Daniel Pea
Sole Panelist

Dated: September 27, 2006