WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xuxa Promoçoes Artisticas LTDA. v. Birinahite Santana
Case No. D2007-1158
1. The Parties
The Complainant is Xuxa Promoçoes Artísticas LTDA., of Rio de Janeiro, Brazil, represented by Alves, Vieira, Lópes & Atem Advogados, Brazil.
The Respondent is Birinahite Santana, of Asunción, of Paraguay.
2. The Domain Name and Registrar
The disputed domain name <showdaxuxa.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2007. On August 7, 2007, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the domain name at issue. On August 7, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2007.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on September 11, 2007. 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 following facts are not contested.
The Respondent registered <showdaxuxa.com> (“the disputed domain name”) on May 28, 2007, using GoDaddy.com, Inc.
The Complainant owns registrations of the following trademarks in Brazil: CLUBE DA XUXA, Registration No. 820006580, in international class 41, granted on September 26, 2002; PARQUE DA XUXA, Registration No. 820006564, in international classes 41 and 20, granted on November 16, 1999; BEIJINHO BEIJINHO DA XUXA, Registration No. 812975600, in international classes 38 and 10, granted on April 11, 1999; REVISTA DA XUXA, Registration No. 814731465, in international classes 11 and 10, granted on October 2, 2000; XUXA, Registration No. 811276643, in international classes 38 and 10, granted on November 13, 1994; XUXA, Registration No. 814731473, in international classes 28 and 10, granted on October 17, 1995; XUXA, Registration No. 814731481, in international classes 33 and 10, granted on August 3, 1999; XUXA, Registration No. 814731490, in international classes 3 and 20, granted on October 5, 2003; XUXA, Registration No. 814731503, in international classes 16 and 20, granted on October 2, 2000; XUXA DISCOS, Registration No. 814731457, in international classes 9 and 40, granted on September 11, 2000; XUXA MAGIC CLUB, Registration No. 820006599, in international classes 38 and 10, granted on November 16, 1999; XUXA MENEGHEL, Registration No. 814766587, in international classes 25, 10 and 20, granted on October 29, 1996; XUXA MENEGHEL, Registration No. 814766609, in international classes 24, 10 and 20, granted on October 29, 1999; XUXA PARK, Registration No. 816740186, in international classes 38 and 10, granted on January 25, 2004; XUXA PARK, Registration No. 817209611, in international classes 41 and 20, granted on October 31, 1995; XUXA WATER PARK, Registration No. 820006572, in international classes 41 and 20, granted on November 16, 1999; and XUXINHA, Registration No. 790334461, in international classes 25, 10, 20 and 30, granted on August 24, 2002.
The Complainant’s trademark rights predate Respondent’s <showdaxuxa.com> disputed domain name registration.
5. Parties’ Contentions
The Complainant contests that:
The disputed domain name <showdaxuxa.com> reproduces the XUXA trademark registered by the Complainant. The intention of the Respondent was to create a domain name, making people think that it was created by the Complainant’s official staff.
The trademark XUXA was created by using a part of the name of Ms. María da Graça Xuxa Meneghel, the owner of Xuxa Promoções E Produções Artísticas Ltda. She is a TV Hostess, well known for her TV productions and commercial goods. XUXA is a worldwide known brand and the domain name may cause confusion, making internet users wrongly access said domain. One of the Xuxas most well known TV shows was named “Xou da Xuxa” (which is a joke with the letter “X” and it is pronounced in Portuguese as “Show da Xuxa”, meaning “Xuxas Show”).
Before the Respondent registered the disputed domain name, the Complainant had already registered a number of trademarks related to the name XUXA before the Brazilian Trademark Office. Thus the Respondent has no rights over the famous trademark XUXA, nor rights nor legitimate interests in respect of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The content of the website “www.showdaxuxa.com” shows a number of adult pornographic topics, presenting pictures of nude women. The Complainant has a number of productions focusing on children’s audience, as daily TV shows, movies, and toys. The disputed domain name has its content written in Portuguese language, proving its intention to focus on the Brazilian nationals without any kind of authorization or license. The existence of said domain name could make users think that it was created by the Complainant’s staff. These facts show that the Respondent’s bad faith exists exactly as foreseen in the Policy, paragraph 4(b)(i).
The trademark XUXA is very popular among Brazilian nationals and is associated with the long time work of Ms. María da Graça Xuxa Meneghel, her production staff and the high quality level of its television production and of its commercial goods.
The Respondent intended to trade off the popularity of the brand XUXA deliberately using it in its domain name without having any permission from the Complainant. The use of the disputed domain name associated with a pornographic website, destroys the Complainant’s repeated efforts to preserve its reputation.
Finally, the Complainant requests that the domain name <showdaxuxa.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis 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.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proved that it is the owner of the trademark registration XUXA, which has been registered in Brazil many years ago, and also owns other trademark registrations in Brazil containing the word XUXA such as PLANET XUXA, XUXA PARK, XUXA MAGIC CLUB, XUXA WATER PARK, CLUBE DA XUXA, REVISTA DA XUXA, etc.
In line with UDRP precedent, the Panel understands that the expression “show da” is not sufficient to distinguish the domain name <showdaxuxa.com> from the widely known XUXA trademark. Accordingly, the Panel finds that the Respondent’s domain name is confusingly similar to the Respondent’s trademark (See SAP AG v. Andrew Sparrow, WIPO Case No. D2001-0733; and American Online Inc. v. Daniel Mullen dba MSN and MSN Networks, WIPO Case No. D2000-1605).
Furthermore, <showdaxuxa.com> and Complainant’s trademark registration CLUBE DA XUXA are also confusingly similar, particularly from a conceptual point of view.
Therefore, and since it is not necessary to further analyse the likelihood of confusion between the domain name and the rest of the Complainant’s trademarks, the Panel finds that the Complainant has proved the first element required under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel agrees with the Complainant’s argument that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent neither appears to have any trademark registration for XUXA or SHOWDAXUXA nor any authorization from the Complainant to use the trademarks.
Further, the Respondent failed to file a reply and therefore it did not bring to these proceedings any element to show that it has rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
In view of the above, in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, and considering the Panel’s findings further below under the third element of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has proved the second element required under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel finds that the domain name was registered and is being used in bad faith.
The Complainant is the owner of the trademark XUXA, registered in Brazil many years ago. XUXA is the name of a well-known star in Brazil, María da Graça Xuxa Meneghel, who has developed a remarkable career in the field of entertainment and television. Among many other activities, during her career she has conducted many children TV shows in Brazil, Argentina, United States of America and Spain.
The Complainant has proved that the website “www.showdaxuxa.com” has pornographic content, which could highly damage the Complainant’s image.
Since the Respondent failed to file a reply, it did not bring to these proceedings any evidence which could justify why the Respondent chose SHOWDAXUXA for its domain name.
In this regard, the Panel finds that the Respondent’s choice of the domain name was not a mere coincidence. The Complainant’s fame makes the Panel infer that, before registering the domain name, the Respondent, who is domiciled in Paraguay, knew the Complainant’s trademark XUXA, which has no particular meaning other than being the name of the well-known Brazilian star.
Therefore, the fact that the domain name contains a widely known trademark clearly suggests opportunistic bad faith (see Veuve Clicquot Ponsardin Maison Fondeé en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0223).
In view of the foregoing and in accordance with similar precedents and paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has registered and used the domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Consequently, the Complainant has proved the third element required in paragraph 4(a) of the Policy.
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 <showdaxuxa.com> be transferred to the Complainant.
Gustavo Patricio Giay
Dated: September 25, 2007