WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gávea Investimentos Ltda v. Tradenames Ltd./ Eurobox Ltd.
Case No. D2007-1804
1. The Parties
Complainant is Gávea Investimentos Ltda, Rio de Janeiro, Brazil, represented by Bonini, Biron & Valente, Brazil.
Respondent is Tradenames Ltd./ Eurobox Ltd., St. Petersburg, Russian Federation, represented by ОВС “Вотум”, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gavea.com> is registered with DomReg Ltd. d/b/a LIBRIS.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2007 against Eurobox Ltd. On December 6, 2007, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the domain name at issue. After the Center’s several reminders, DomReg Ltd. d/b/a LIBRIS.com, on December 20, 2007, transmitted by email to the Center its verification response noting a change in registrant information for the disputed domain name to Tradenames Ltd. in St. Petersburg, Russian Federation with contact details provided therein and informing that the language of the registration agreement was Russian. In response to a notification by the Center, Complainant electronically filed an amendment to the Complaint on December 21, 2007 and in hard copy on January 4, 2008 indicating both Eurobox Ltd and Tradenams Ltd as Respondent. Complainant also submitted a request that English be the language of proceeding with related evidence. The Center verified that the amended 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 Respondent of the Complaint (with the Center’s covering documents in both Russian and English), and the proceedings commenced on January 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2008. Respondent did not submit any response on the merits of the claim. Accordingly, the Center notified Respondent’s default on February 5, 2008.
On February 5 and 18, 2008, Respondent sent strongly worded email replies to the Center in Russian in which it objected to Complainant’s request to conduct the proceedings in English and disputed the applicability of the Policy and of the filing of the Complaint with the WIPO center.
The Center appointed Paul E. Mason as the sole panelist in this matter on February 21, 2008. 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.
A late-filed Response was submitted to the Center on March 8, 2008, almost two weeks after the specified due date, which the Center brought to the Panel’s attention and the Panel has noted. However, as the Panel had already proceeded to consider and reach a view on the merits of the case prior to the submission of this document, it is unnecessary for the Panel to consider the issue of its formal admissibility so late in the proceedings. The Panel notes in passing that Respondent Tradenames Ltd claims that the domain name was acquired by it in early 2003.
The initial question for resolution concerned the language of the proceedings. Paragraph 11 of the Rules provides that unless both parties agree or the Panel decides otherwise, the language of the proceedings shall be the language of the Registration Agreement, which in this case is Russian. As was pointed out by the Center in its email communication of January 21, 2008 to Respondent, with copy to Complainant, the Center decided to (1) accept the Complaint as filed in English;
(2) accept a Response in either English or Russian; and (3) appoint a panelist familiar with both languages, if available. This Panel concurs with the Center’s determination.
The Panel has discretion to determine the language of the proceedings. It may choose to write its decision in either language, or request translation of either party’s submissions for the benefit of the other party. If the panelist is familiar with both languages as is the case here, the practical effect of deciding to conduct proceedings in one particular language would be to require the parties to translate each other’s documents for the benefit of the other, and for the Center and the Panel to conduct their correspondence in the chosen language other than English, all of which would require considerable time and expense.
Although the Registration Agreement here is in Russian, the Panel may nevertheless decide to conduct the proceedings in English if the Panel finds that the parties have been communicating with each other in English at a level sufficient to show Respondent’s comfort and familiarity with English. Furthermore, Complainant offered an online document in English taken in November 2007 from the “www.gavea.com” website offering the domain name for sale.
The Panel further notes that the entity “Eurobox Ltd” has been the subject of some discussion in a previous panel decision, in which it was suggested inter alia that Eurobox may be offering proxy registration services for domain names. See Stora Enso Oyj v. Alex Osipov, WIPO Case No. D2007-1511. However this may be, in this case, while Eurobox was listed in the Whois as the registrant of the disputed domain name at the time the Complaint was filed, the entity “Tradenames Ltd” was timely disclosed by the Registrar to the Center as the registrant of the disputed domain name prior to formal commencement of the proceedings. Tradenames Ltd is currently (at the time of drafting) listed as the domain name registrant in the registrar’s publicly accessible Whois database. The issue of respondent identity in privacy or proxy registration cases was recently discussed by a three-member panel in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438. Adopting the approach of the panel in that case, the Panel here will treat both Eurobox Ltd and Tradenames Ltd as Respondent.
4. Factual Background
Complainant is an investment management firm headquartered in the city of Rio de Janeiro, Brazil. The firm is managed by Mr. Arminio Fraga, well-known Brazilian economist and former head of the Brazilian Central Bank. The firm has been in operation since August 2003 and has some 88 employees including 16 partners.
As of August 2007 it had some US$5 billion under management (Complaint, Annex 3).
Complainant has created and managed at least nine investment funds denominated in Brazilian reais or US dollars containing the name “Gávea” (Gávea Fund, Gávea Brasil Fund, Gávea Brasil FI Multimercado, Gávea Ações FIA, Gávea Investment Fund, Gávea Investment Fund II, Gávea Global Fund Ltd, Gávea Diversified FICI (FoHF), and Gávea Diversificado II FICFI (Complaint, Annex 3).
The following trademark registrations are offered by Complainant in Annex 4 to the Complaint:
GÁVEA BRASIL – Registration application before the Brazilian National Institute of Industrial Property (INPI) June 27, 2003 – Registration granted June 12, 2007.
Registration Certificate no. 825625530.
GÁVEA INVEST – Registration application before the Brazilian National Institute of Industrial Property (INPI) June 27, 2003 – Registration granted June 12, 2007. Registration Certificate no. 825625556.
GÁVEA INVESTIMENTOS – Registration application before the Brazilian National Institute of Industrial Property (INPI) June 30, 2003 – Registration granted June 12, 2007. Registration Certificate no. 825627796.
Complainant also registered the following related domain names with the Registrar “registro.br” in 2003:
and registered the following related domain names with “TLDS LLC, dba SRSPLUS”
For its part, the disputed domain name <gavea.com> was created on April 17, 2003 (Complaint, Annex 1).
5. Parties’ Contentions
Complainant alleges that the disputed domain name is identical to the key elements of its registered trademarks, that Respondent has not acquired rights or legitimate interests in the disputed domain name; and that Respondent registered and has been using the domain name in bad faith.
On the issue of similarity, Complainant indicates that the word “Gávea” is the key ingredient in both its own trademarks/business and in the disputed domain name registered by Respondent. In Portuguese, it means “topsail”.
On the issue of rights or legitimate interests, Complainant points out that Respondent has not received any permission or license from Complainant to use the disputed domain name as a derivative of Complainant’s trademarks.
On the issue of bad faith registration and use, Complainant asserts that Respondent’s website “www.gavea.com” offers no products or services, has never been active except to offer the disputed domain name for sale for the price of US$ 2,910.00, a price far in excess of Respondent’s out-of-pocket costs in registering and maintaining the disputed domain name. Complainant adds that Respondent is in the habit of registering as domain names well-known trademarks of others for the purpose of re-selling them at a profit, citing the cases Soda Club (CO2) S.A. v. Percom Ltd. d/b/a WebBooster.com, WIPO Case No. D2005-0465 and Kesko Oy v. Eurobox Ltd., WIPO Case No. D2003-0975.
The Respondent did not submit a timely reply to the Complainant’s contentions. Although a belated reply was submitted, and has been noted by the Panel, it is not necessary for the Panel to discuss the submission in detail in order to reach its below decision in this case.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Portuguese word “gávea” has both a generic meaning (topsail of a ship) and geographical identifier (an upscale neighborhood in Rio de Janeiro located not far from Complainant’s business headquarters). This word implies the image of direction and forward navigation suitable for use by a financial investment group.
In other circumstances, this Panel might need to rule on whether the word “gávea” as such is able to be legally protected as a generic word or a geographical identifier. However, here the Brazilian Industrial Property Institute (INPI) did grant to Complainant a ten-year exclusive right to use it as part of its registered trademarks cited above in this decision, protecting the word “gávea” but removing from the ambit of its exclusive protection the accompanying elements in the registered trademarks “Brasil”, “invest” and “investments”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademarks.
B. Rights or Legitimate Interests
Respondent has not shown any license or permission from Complainant to use the disputed domain name. Therefore, the Panel finds no such rights or legitimate interests were granted to Respondent.
C. Registered and Used in Bad Faith
It is settled by a long line of UDRP decisions, including a number decided by this panelist, that a complainant must show both bad faith registration and bad faith use of the disputed domain name by a respondent. See Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Here there appears to be some indicia of bad faith use of the domain name by Respondent, in as much as it offered it for sale for US$ 2,910.00 on the related website “www.gavea.com”. The sale offer was apparently retracted on this site soon after the Complaint was filed, and when this Panel attempted to verify this assertion, “www.gavea.com” did not resolve to any site at all. While a respondent may well be entitled to sell a domain name in which it has a legitimate right or interest, no such right or legitimate interest has been persuasively established by the Respondent in this present case. So the Panel can reasonably adduce that there was an attempt (after the initial domain name registration) by Respondent to sell the domain name at a high profit, retracted only after the Complaint was filed with the Center.
But timing is everything here. According to the Complaint which is corroborated by registration records obtained by the Center from the Registrar, the disputed domain name was registered on April 17, 2003. According to Respondent, it acquired the disputed domain name in early 2003. Applications for Brazilian registrations of Complainant’s trademarks were lodged in June 2003, with the relevant registrations only approved in June 2007.
Therefore, bad faith registration of the domain name appears on the present record to be out of the question: the domain name was registered with the Registrar several months before Complainant applied for its similar trademarks, and four years before the trademarks were approved for registration in Brazil. In situations like this, this Panel agrees with the consensus view in past domain name case decisions: normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. Relevant decisions include:
John Ode dba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, Denied
Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, Denied
PrintForBusiness B.V v. LBS Horticulture, WIPO Case No. D2001-1182, Denied
An exception would typically only be made if there were highly unusual circumstances where it is shown that Respondent was clearly aware of Complainant at the time of registration and registered the domain name for the primary purpose of taking advantage of Complainant’s business position at the time of the registration. The Panel has not found any such exceptional circumstances in this case.
On this basis, the Panel is unable to make a finding of bad faith against Respondent on the limited record available in this UDRP proceeding.
For the foregoing reason, the Complaint is denied.
Paul E. Mason
Dated: March 3, 2008