WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ipiranga Produtos de Petróleo S.A. v. Domain Admin, Mrs. Jello, LLC
Case No. D2011-0163
1. The Parties
The Complainant is Ipiranga Produtos de Petróleo S.A. of Rio de Janeiro, Rio de Janeiro, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Domain Admin, Mrs. Jello, LLC of Livingston, New Jersey, United States of America, represented by Kenyon & Kenyon LLP.
2. The Domain Name and Registrar
The disputed domain name <ipiranga.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 31, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 31, 2011, Moniker Online Services, LLC 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” or “UDRP”), 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 February 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response February 23, 2011. The Response was filed with the Center February 23, 2011.
The Center appointed Dr. Clive N.A. Trotman, Alvaro Loureiro Oliveira and Diane Cabell as panelists in this matter on April 13, 2011. 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.
4. Factual Background
The facts about the Complainant are taken from the Complaint.
The Complainant is a major Brazilian oil distribution company with a history dating back to 1933. It took the word “Ipiranga” into its name in 1936 as Ipiranga S.A. Companhia Brasileira de Petróleo and has since adopted other name changes always incorporating the word “Ipiranga”. The present scale of the company is that it has 5500 “Ipiranga” service stations, employs 70,000 people and had an income of over USD 17 billion in 2009.
The company has diversified and its activities include a loyalty programme “km de vantagens ipiranga” enabling air travel; the “Ipirangashop” on-line outlet for goods such as computer products, books, furniture and electrical appliances; and convenience stores and automotive product supplies at its service stations. The company also operates an Ipiranga branded credit card with an environmental theme.
The Complainant as presently constituted, partly by virtue of the incorporation of Distribuidora de Produtos de Petróleo Ipiranga and Companhia Brasileira de Petróleo Ipiranga S.A., owns a number of trademarks incorporating IPIRANGA, of which 36 are tabulated in the Complaint. Of these 3 (and another 4 in other South American countries) are for the plain word IPIRANGA, many are for IPIRANGA in combination such as IPIRANGA MARINA, and 11 are in stylised or device form.
Specimen trademark registrations are:
IPIRANGA, Brazilian trademark no. 812819365, class 19.10, dated August 15, 1989
IPIRANGA, Brazilian trademark no. 812819381, class 38.20, dated June 19, 1990
IPIRANGA, Brazilian trademark no. 812819438, class 35, dated June 25, 1991
IPIRANGA, Paraguayan trademark no. 246224, dated April 24, 2002
The Respondent is given as Mrs. Jello, LLC, and the Response refers to Igal Lichtman, founder and principal of Mrs. Jello, LLC, thus the Respondent is taken to be a company and will be referred to in the impersonal. The Respondent has not stated its business, but can reasonably be inferred to be occupied with Internet and domain name matters including the ownership of and trading in domain names, and the generation of revenue from domain names. It has stated that “Ipiranga” is the name of a historic district of São Paulo and the name of a famous river.
The disputed domain name was apparently first registered on January 9, 2003.
5. Parties’ Contentions
The Complainant submits copies of trademark registration documents as evidence of its ownership of the trademarks referred to in section 4 above. It is contended, among other things, that the trademarks are famous in Brazil and IPIRANGA has received the awards: The Most Reminded Trademark; The Most Reminded and Preferred Trademark in the field of fuel; Services Excellent and Respect to the Customer; The Most Reminded Trademark in the field of gas stations; and The 7th Company of Strongest Reputation of the State of Rio Grande do Sul in 2009.
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark IPIRANGA. Additionally it is identical to the IPIRANGA component of the Complainant’s various other trademarks and is identical to the IPIRANGA component of the name of the Complainant’s company and associated companies. The disputed domain name is also identical to the essential part of the Complainant’s own Brazilian domain name <ipiranga.com.br> and to other domain names such as <ipirangashop.com> owned by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and has not been granted any permission or license to use the Complainant’s trademark. The Respondent is not commonly known by the name “Ipiranga” and has not operated a business by that name. Whilst the name “Ipiranga” means red river or muddy river in the indigenous language of Brazil, on the shore of which was proclaimed the independence of Brazil, and is the name of a small borough of the city of São Paulo, nevertheless, neither the Complainant’s trademark nor the Respondent’s use of the disputed domain name have anything to do with such meanings.
Furthermore it is not realistic that the Respondent’s disputed domain name is used as claimed for the promotion of travel to Ipiranga. Instead it is used for pay-per-click references to sites purveying car rental, package tours, furniture and other things. The Respondent’s website also links to providers including car maintenance and fuel, which could include the Complainant’s services. From there, purchases could result in the collection of points in the Complainant’s loyalty service and qualification for flights, and the Complainant is also related to the travel industry. The Respondent has attempted to trade on the Complainant’s good name in this field.
The Complainant further contends that the disputed domain name was registered and has been used in bad faith. The trademark IPIRANGA was first registered in 1959 and was notorious when the disputed domain name was registered in 2003. The Respondent is a large scale dealer in domain names. As such it can be expected to make the necessary enquiries, and not to be willfully blind to the rights of others, when registering domain names.
Particularly in the terms of paragraph 4(b)(iv) of the Policy the Complainant contends that the disputed domain name was intentionally registered by the Respondent in order to create a likelihood of confusion with the Complainant’s trademarks, and that search engine results for IPIRANGA return predominantly references to the Complainant. All searchers for IPIRANGA are from Brazil, according to Google. The website corresponding to the disputed domain name, although apparently owned in the United States, is displayed in Portuguese with Brazilian links offered. It is contended that the disputed domain name is being used in bad faith for commercial gain in the terms of paragraph 4(b)(iv) of the Policy.
The Complainant also says that the disputed domain name was registered in order to prevent the Complainant from doing so (paragraph 4(b)(ii) of the Policy), and that it has been offered for sale, and was registered in order to offer for sale to the Complainant or a competitor for a higher price than the cost of registration (paragraph 4(b)(i) of the Policy).
A cease and desist letter was sent to the Respondent dated October 22, 2010, and a reply was received summarising the Respondent’s position, dated November 1, 2010,
The Complainant has submitted a number of previous decisions and quotations from decisions under the UDRP that it wishes the Panel to consider as precedent.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent denies the Complaint and says that the Complainant, having failed to obtain the disputed domain name years ago, is now trying to take it from its legitimate owner. Its contentions include the following.
The Respondent says that “Ipiranga” is the name of one of the most famous rivers in Brazil and a historical district of São Paulo. The disputed domain name thus refers to a geographical location and has value for that reason. The report of the Second WIPO Internet Domain Name Process declined to extend protection to geographical names under the UDRP and the only way the Complainant can prevail is if the disputed domain name is being used in a trademark sense. The Respondent acquired the disputed domain name because it is a geodomain and it is not being used to reference a petroleum distributor, the Complainant, or any of its competitors.
The Respondent contends that there is no proof that it had any knowledge of the Complainant or its trademark when the disputed domain name was registered. A Google search in the United States for “oil company”, “oil distributor”, or “gas company” did not reference the Complainant [in the two pages produced in evidence].
The Respondent says the Complaint is presented 52 years after the trademark IPIRANGA was registered, 15 years after the Complainant’s domain name <ipiranga.com.br> was registered, and 8 years after the disputed domain name was registered. It is contended, with reference to certain previous UDRP decisions, that such delay should be fatal to the Complaint and that the doctrine of laches should apply.
The Respondent contends there is no evidence the disputed domain name was registered in order to block the Complainant from doing so.
The Respondent has referred to a number of previous decisions under the UDRP that it wishes the Panel to consider as precedent.
The Respondent requests that the Complaint be denied and a finding of reverse domain name hijacking be made against the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence of its registered trademark IPIRANGA in Brazil and certain South American Countries. The disputed domain name <ipiranga.com> is clearly identical to the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy and the Panel so finds.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that it has not permitted or licensed the Respondent to use the trademark IPIRANGA in any way or to register a domain name containing the trademark, and that it has no relationship with the Respondent.
Paragraph 4(c) of the Policy sets out certain circumstances, without limitation, whereby the Respondent may be able to refute the Complainant’s prima facie case by seeking to establish rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy, namely:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The use to which the disputed domain name has been put through the corresponding website is to provide an array of links through which visitors may access other websites. According to a screenprint produced by the Complainant dated August 17, 2010, the links were broadly in the arena of travel and accommodation and associated matters including car rental, accommodation and air travel. It may be assumed that the Respondent is paid a commission for referrals to links and the use of the disputed domain name is found not to be noncommercial in the terms of paragraph 4(c)(iii) of the Policy. There is no evidence that the Respondent is known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Whether the Respondent’s offering of goods or services through links from its website is bona fide within the meaning of paragraph 4(c)(i) of the Policy, or whether the Respondent has rights or legitimate interests in the disputed domain name by any other criterion, are inter-related with the question of whether there was registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that “shall be evidence of the registration and use of a domain name in bad faith”:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The Complainant asserts bad faith registration and use particularly under paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy. The Respondent replies that it is entitled to register and use a domain name comprising a geographical location or place name, referring to previous disputes under the Policy and to article 1.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel interprets paragraph 4(a)(iii) of the Policy as requiring proof of both bad faith registration and bad faith use. The question of registration in bad faith will be visited first. Registration of a domain name is an event that happened at one time and the determination of bad faith is necessarily retrospective taking into account among other things the nature of the disputed domain name, the registrant’s inherent right to register it or otherwise, and the apparent intentions of the registrant at the time of registration.
Significantly, the disputed domain name comprises the word “Ipiranga” standing alone and not in conjunction with any additional component that could associate the disputed domain name with any business or activity. The Complainant defines “Ipiranga” as “an expression for “red river”/”muddy river” in the Indigenous language and the name of a famous Brazilian river on whose shores was proclaimed the Independence of Brazil - being also used in order to designate a small borough of the city of São Paulo, Brazil”. The Respondent says “Ipiranga” is “commonly known as one of the most famous rivers in Brazil and a historical district of São Paulo, Brazil”. Within the powers of the Panel to undertake limited inquiries of the public record (article 4.5, WIPO Overview 2.0) these facts appear to be corroborated (“http://en.wikipedia.org/wiki/Pedro_I_of_Brazil”). The Subprefeitura Ipiranga has a website. Whilst the Complainant later describes “Ipiranga” in more diminutive terms, the consensus is that it was a river of historical and cultural significance that has given its name to a district of São Paulo. As such it is a geographical place name and a name of cultural and historical significance, well known in Brazil.
It would appear prima facie that the name “Ipiranga” alone, as a geographical location, was available to any registrant on a first-come basis and is not necessarily, in itself, protected under the UDRP. The onus is upon the Complainant to prove that the registration was made in bad faith.
The incorporation of the name “Ipiranga” into the trademark of what is now a large oil company might be compared with other examples such as Sudan Petroleum Company; British Petroleum (BP); Gulf Oil International; Royal Dutch Shell; China National Petroleum Corporation; and Saudi Aramco. It is recognised, for the Complainant, that the location “Ipiranga” may now have a diminished meaning as a source of the Complainant’s products or activities. Nevertheless, it is unlikely in the context that a company name could grant exclusive rights to a geographical term such as Sudan, British, Dutch etc., or to a common dictionary word such as “shell” or “petroleum” unless used in a trademark sense in conflict with the trademark holder. Not even the use of a geographical descriptor standing alone, such as the one-time marketing of the brand “British” standing alone by British Airways, or “Danish” for bacon, could necessarily grant the trademark holder exclusive rights in the geographical description except in strictly a trademark sense. Only where a place name is associated more readily with its product than with the place, for instance Champagne, might the word arguably be claimed to stand alone as a trademark for the product.
Enquiries within the remit of WIPO Overview 2.0 reveal the existence of a palatial historic building in Ipiranga, the Museu Paulista, commonly known as the Museu do Ipiranga; at least one Ipiranga Futebol Clube; an Ipiranga News On-Line; a Radio Ipiranga; and the Imperador do Ipiranga samba school which performs at the São Paulo festival. These examples illustrate the availability and usage of the geographical, historical or cultural word “Ipiranga” for bona fide purposes by entities that do not apparently seek to infringe the Complainant’s trademark. Thus the Panel is not persuaded that the Complainant can claim exclusivity in the place name “Ipiranga”.
The Complainant has gone to some lengths to portray an overlap between its areas of business and the Respondent’s advertisement links. For example, the Complainant’s automotive goods and services are used in travel, which overlaps with the Respondent’s links to travel. The Complainant supports a loyalty card that could result in the reward of air travel, and the Respondent offers links to air travel. The Complainant offers certain general goods, some impinging on the Respondent’s links, through its Ipiranga Store. To the extent that the Complainant may consider its trademark to have been infringed, the remedy lies elsewhere than under the UDRP. More significantly, however, such tenuous and seemingly incidental business overlap as is claimed would not be sufficient to persuade the Panel that the Respondent had been minded to register the disputed domain name with bad faith towards the Complainant at the time. The distinction between initial bad faith registration being construed partly from evidence of subsequent usage, and bad faith usage without necessarily bad faith registration, has been discussed in some detail recently (Saurikit, LLC v. Cykon Technology Limited, WIPO Case No. D2010-2193).
The Respondent has additionally taken issue with what it portrays as unreasonable delay in taking action on the Complainant’s part. The bringing of a proceeding is not time-barred under the Policy and the doctrine of laches is not specifically incorporated. Nevertheless Panels have on occasions rejected a Complaint on grounds of unjustified delay, and the doctrine of laches occasionally has been canvassed.
On the facts, the Complainant had an awareness of domain names when it registered <ipiranga.com.br> in May 1996; the disputed domain name was registered on January 9, 2003; the cease and desist letter was sent to the Respondent on October 22, 2010; and the Complaint has been brought in 2011. The reason why the Complainant as a major and sophisticated corporation did not register <ipiranga.com> before the Respondent did so, is its own business. It is not for the Panel to inquire into the first-come basis by which domain names were distributed. There is no time bar, but the Panel notes that the rights the Complainant asserts so strongly were slept upon for at least the 7 years between the registration of the disputed domain name and the issuance of the cease and desist letter. In terms of laches there is no evidence that the Complainant has deliberately disadvantaged the Respondent by not acting sooner, but it has at least allowed the Respondent to believe for 7 years that its possession of the disputed domain name was uncontested. These factors, whilst not decisive, may be weighed by the Panel.
The Panel has considered all the points raised and previous decisions cited by the Complainant but does not find the totality of them to outweigh on balance the established principle that a geographical name standing alone is difficult to protect under the UDRP unless there are extraordinary circumstances. The Panel accepts that many people in Brazil and elsewhere may associate the trademark IPIRANGA with the Complainant’s petroleum and automotive products and services, and with other goods and services supplied in connection with the trademark, but is not persuaded that the word “Ipiranga” has displaced other opportunities for innocent references to the geographical, historical or cultural significance of the word, or for its use in non-conflicting trademarks. The Respondent was at liberty to register the disputed domain name, and although it has not specifically denied that it knew of the Complainant, there is no evidence that in making the registration it targeted the Complainant or its trademark. On balance, the Panel does not find proven that there was registration in bad faith.
The Panel does not consider it productive in this case to return to a further consideration of Respondent rights under paragraph 4(c)(i) of the Policy, or bad faith use as distinct from bad faith registration under paragraph 4(a)(iii) of the Policy.
The dispute was sufficiently arguable that the Panel does not find attempted reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Alvaro Loureiro Oliveira
Dated: May 4, 2011