WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Suzano Papel e Celulose S.A. v. Oneandone Private Registration / Alberto Suzano
Case No. D2010-1599
1. The Parties
The Complainant is Suzano Papel e Celulose S.A. of Salvador BA, Brazil, represented by Matos & Associados, Brazil.
The Respondent is Oneandone Private Registration of Pennsylvania, United States of America / Alberto Suzano of California, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <suzano.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 23, 2010, the Center transmitted by email to 1&1 Internet AG (“Registrar”) a request for registrar verification in connection with the Disputed Domain Name. On September 24, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 28, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Complainant requesting the correction of certain matters in the Complaint. On October 1, 2010, the Complainant filed an amended Complaint incorporating the requested corrections, but indicated that it was not amending the Complaint regarding the identity of the Respondent.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response October 26, 2010. Upon request by the Respondent, the Center extended the due date for the Response to October 29, 2010. The Response was filed with the Center on October 29, 2010.
The Center appointed Alistair Payne, Gabriel F. Leonardos and Neil A. Smith as panelists in this matter on December 7, 2010. The Panel finds that it was properly constituted. Each member of 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 issued a Panel Order on December 20, 2010, requesting that:
(a) that Mr. Alberto Suzano submits a notarized affidavit declaring truthfully whether he has truthfully always been the owner of the Disputed Domain Name since its original registration on September 22, 1998;
(b) that Mr. Alberto Suzano also declares in this affidavit that he has personally signed the Response, despite the fact that the signature thereon does not resemble the signature in his driver’s license or, in the alternative, that he explains in the affidavit why these signatures do not match; and
(c) copies of relevant communications within the Respondent's power or possession relating to registration or reservation of the Disputed Domain Name, including details of the date of the Respondent's actions leading to the reservation and registration of the Disputed Domain Name.
The Respondent submitted further information on January 3, 2011 and the Complainant made a further submission by way of response by the due date for its submission.
4. Factual Background
The Complainant, formed around 85 years ago, claims to be one of the largest pulp and paper companies in South America and in the World and has operations in more than 80 countries. The Complainant trades under the SUZANO mark and owns numerous trademark registrations worldwide for this word mark including, in particular, Brazilian word mark registration 006068405 filed in 1969 and granted in 1975. The Complainant also operates its main website at “www.suzano.br.com”.
The Disputed Domain name was registered by the Respondent in 1998.
5. Parties’ Contentions
The Complainant submits that it owns registered trademark rights in its SUZANO mark as noted above and that as a consequence of its longstanding use of this mark in relation to its pulp and paper business and in more than 80 countries world wide it is well known in its channel of trade. It says that the key element of the Disputed Domain Name is identical to its SUZANO trademark.
As far as the second element of the Policy is concerned, the Complainant submits that the Disputed Domain Name is not being used by the Respondent in connection with a bona fide offering of goods or services. It says that the Disputed Domain Name is instead being used to attract the Internet user to the experimental web site of a supposed beetle expert and that the Respondent probably profits by receiving a referral fee for each misdirected Internet user because the referred website has no content. The Complainant further submits that the Respondent is not commonly known or identified by the name SUZANO and does not operate an organization or business under that name and has not made a legitimate noncommercial use of the Disputed Domain Name.
The Complainant says that in spite of the Respondent having registered the Disputed Domain Name in 1998 he has not made any proper use of it since that time and that this is further evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent was in no way prejudiced by the Complainant’s delay in bringing this Complaint.
The Complainant asserts that the Respondent (“Oneandone Private Registration”) has been involved in numerous past cases of cybersquatting and notes the following cases:
Lego Juris A/S v. Floyd Goddard/Oneandone, Private Registration, WIPO Case No. D2010-0544 (June 9, 2010); Google, Inc. v. Oneandone/Thuy Nguyen, WIPO Case No. D2009-1674 (February 10, 2010); The American Automobile Association Inc. v. PerkinsPestControl c/o Del Rich and 1 & 1 Internet Inc., WIPO Case No. D2009-1379 (December 7, 2009); Grupo Costamex, SA de C.V. v. Stephen Smith/ Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062 (March 25, 2009); Dex Media, Inc. v. Michael Shaw, WIPO Case No. D2008-1766 (January 6, 2009); Port Aventura, S.A. v. Fred McCaw c/o Chelsey McCaw Publishing, Inc., WIPO Case No. D2008-0177 (April 1, 2008); Mayflower Transit, LLC v. Simo Elbaz, WIPO Case No. D2007-1720 (February 22, 2008); Southwest Airlines Co. v. 1 & 1 Internet Inc./ Michael Stevens and Kenzie Engineering, Inc., WIPO Case No. D2007-1413 (December 7, 2007); William H. Ross, III, and Office Playground Inc. v1&1 Internet, Inc., NAF Claim No. 1036272 (August 31, 2007); BEI Industrial Encoders v. Jonathan Phillips, WIPO Case No. D2007-0702 (August 3, 2007); Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881 (September 15, 2006).
The Complainant also submits that the fact that the Respondent used a privacy service is not consistent with a legitimate or good faith use of the Disputed Domain Name and that in several previous cases and following service of the Complaint, the Respondent changed the WhoIs database and disclosed registrant and contact information in a manner that constituted bad faith.
The Complainant asserts that the Respondent’s use of a confusingly similar domain name to attract and divert Internet users to a third-party website without any content presumably in order to receive a referral for each misdirected user is bad faith registration and use under Policy 4(b)(iv).
The Complainant says that the Respondent registered the Disputed Domain Name in order to prevent the Complainant, as the owner of the SUZANO mark, from reflecting its mark in a corresponding “.com” domain name. The Respondent refused the Complainant’s offer of USD 500.00 to start a negotiation to acquire the Disputed Domain Name but the Respondent suggested that he would only agree to sell the Disputed Domain Name for a valuable consideration in excess of his documented out-of-pocket costs.
The below refers to the content of the Response submitted by the Respondent Alberto Suzano. Regarding the Panel’s determination to include such Response see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
The Respondent disputes the Complainant’s claim to exclusive rights in its SUZANO trademark based on usage and says that there are many other users of the term including a Brazilian city and is a common surname and is in fact part of his own name. However the Respondent concedes that if the Complainant’s registered trademark rights are valid in the United States then the Disputed Domain Name could be considered as being confusingly similar to the Complainant’s trademark.
The Respondent maintains that he does have legitimate rights or interests in the Disputed Domain Name. He says that he registered it in 1998 as a domain name which incorporated his surname and was intended to be used to facilitate the exchange of family information and as an e-mail hosting domain for family members. In September 1998 the Disputed Domain Name was moved from Network Solutions to One and One Registrar and the Respondent says that he has presented evidence to support his assertion that the Disputed Domain Name was used to share family announcements or to provide vanity mailboxes for his family since that date. He says that “Suzano” is a commonly used family name and that while he is currently making a legitimate noncommercial use, in time he may use the Disputed Domain Name in a commercial service to provide e-mail boxes for other people who have the “Suzano” name. The Respondent submits that he does not receive referral fees related to misdirected site users and says that the only link directing people away from the page at the Disputed Domain Name is one that leads to his son’s experimental hobby website concerning beetles. He maintains that he adopted the OneandOne Registrar’s privacy service to protect his own privacy and to avoid spam mail.
As far as bad faith is concerned the Respondent submits that he registered the Disputed Domain Name because it incorporates his surname (which he notes is a common surname and the name of a city in Brazil) and not for any other reason connected with the Complainant. He says that at the date of registration the Complainant had not filed any trademark for SUZANO in the United States and he was not aware of the Complainant’s trademark rights and he registered the Disputed Domain Name because it incorporated his family name and not for any purpose of selling the mark to a trademark holder or of preventing a trademark holder from registering the Disputed Domain Name. He says that he intended to use it and has used it for the purposes outlined above. Further, he submits that he did not make the initial overture to the Complainant to sell the Disputed Domain Name and that he never had any intention of selling it but following the Complainant’s insistent e-mails thought that it was worthwhile finding out just what the Complainant had in mind in terms of consideration. The Respondent finally submits that there is no evidence of his having attempted to divert Internet users to his website at the Disputed Domain Name or of any other kind of bad faith use.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in its SUZANO word mark, in a number of countries, but in particular, in Brazil under word mark registration 006068405 filed in 1969. The distinguishing element of the Disputed Domain Name is identical to the Complainant’s SUZANO mark and accordingly the Complainant succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no right or legitimate interest in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant’s case here is essentially that the Respondent is not making a bona fide use of the Disputed Domain Name for any purposes and is instead using the Disputed Domain Name to attract Internet users to an experimental web site and that the Respondent profits by receiving a referral fee for each misdirected Internet user to the site.
The Respondent’s case is that the Disputed Domain Name incorporates the Respondent’s own surname, also happens to be a reasonably common surname and is also the name of a city in Brazil. He says that he registered the Disputed Domain Name originally for the purposes of a family communication website and that subsequently his son has used it as an experimental website in relation to his beetle collecting hobby.
Having requested further evidence from the Respondent under Procedural Order No 1, as the Panel may do under the Rules, the Panel relies upon the response and evidence provided by Respondent, and is satisfied on the evidence before it, that the Respondent has owned the Disputed Domain Name from its original registration date in spite of his use of a privacy service in the interim period. Further, there is nothing before the Panel to suggest that the experimental beetle website at the Disputed Domain Name is anything more than it is represented by the Respondent and appears to be, or that it misleads or diverts Internet users for profit. The Panel is additionally not persuaded by the Complainant’s submissions concerning the Respondent’s response to its request to acquire the Disputed Domain Name prior to the commencement of these proceedings. It is notable that the Respondent has owned the Disputed Domain Name since 1998 but has never attempted to approach the Complainant of its’ own initiative. In these circumstances the Respondent’s reaction to the Complainant’s offer to acquire the Disputed Domain Name does not persuade the Panel of the Respondent’s lack of bona fides.
Although the Respondent’s explanation of its use of a privacy service in order to avoid spam seems somewhat note worthy and the Panel also notes the Complainant’s submission concerning the Respondent’s (Oneandone Private Registration) past involvement in cybersquatting cases, it does not necessarily follow that the Respondent (either Oneandone Private Registration or Alberto Suzano) has engaged in similar conduct in this case, and the evidence and response to Panel Procedural Order No 1 are persuasive here.
In the absence of clear evidence of lack of bona fides and in circumstances that the Panel is satisfied that the Respondent’s surname is “Suzano” which is identical to the distinguishing element in the Disputed Domain Name, and given the Respondent’s registration of the Domain Name in 1998, the Panel considers that the Complainant has not successfully made out the burden upon it of demonstrating on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Complainant has not succeeded in making out its case in relation to the second element of the Policy and there is no requirement for the Panel to consider the third element of the Policy. The Panel notes that it does not consider it appropriate to make a finding of reverse domain name hijacking in this case.
For all the foregoing reasons, the Complaint is denied.
Gabriel F. Leonardos
Neil A. Smith
Dated: January, 15 2011