WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Votorantim Participações S.A., Fibria Celulose S.A. v. Aracruz Celulose S.A., Franz Delboni, Netstructure Soluções Ltda.

Case No. D2012-1545

1. The Parties

Complainants are Votorantim Participações S.A. and Fibria Celulose S.A both of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.

Respondents are Aracruz Celulose S.A., Franz Delboni of Aracruz, Espírito Santo, Brazil; Netstructure Soluções Ltda. of São Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <aracruz.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2012, the Registrar 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 Respondent of the Complaint, and the proceedings commenced on August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. Apart from the email received on August 21, 2012 from P. Navarro, Respondent did not submit any formal response.

The Center appointed Eduardo Machado as the sole panelist in this matter on September 13, 2012. 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.

On September 26, 2012, the Center received a Complainants’ supplemental filling regarding new facts to be considered in this administrative proceeding.

On November 8, 2012, the Center received a Complainants’ supplemental filling giving notice to the Panel of the decisions issued by the Center regarding the domain names <fibria.com> ( WIPO Case No. D2012-1543), <fibria.net> ( WIPO Case No. D2012-1536), <citrovita.com> ( WIPO Case No. D2012-1546), <portocel.com> ( WIPO Case No. D2012-1544) and <uszinc.com> ( WIPO Case No. D2012-1549). According to Complainants, the above-referenced proceedings were filed against Respondent Netstructure based on the same factual and legal grounds found in the present case.

4. Factual Background

Votorantim Group, established in 1918, is a major brazilian industrial conglomerate, comprised by eight companies. With net revenues of USD 29.5 billion and 41.500 employees, the group does business worldwide, with presence in more than 20 countries.

The First Complainant Votorantim Participações S.A. – hereafter named “Votorantim” – is the holding responsible for the strategic management and for the operational performance of the three main areas of business of the group (votorantim industrial,votorantim finance and votorantim new business).

Votorantim’s activities are focused on key sectors of the economy that demand capital intensive and high scale production processes such as cement, mining and metallurgy(aluminum, nickel and zinc), steel mill, pulp, concentrated orange juice, and energy self-generation.

Specifically in the agribusiness field, it operates through the Second Complainant Fibria Celulose S.A. – hereafter named “Fibria” –, a company created in 2009 from the merger between Votorantim Celulose e Papel S.A. and Aracruz Celulose S.A. The company is currently the world's largest manufacturer of hardwood pulp, with 5,250 thousand tons/year and 29.3% of market share.

Complainants are the legitimate owners of several trademark registrations and pending applications for the trademark ARACRUZ in Brazil and abroad.

All trademarks are registered in the name of Aracruz Celulose S.A., which, as referred, was recently incorporated by Votorantim Celulose e Papel S.A. to create Fibria, both companies belonging to the business group of the complainant Votorantim. Such circumstance allows Complainants’ operation under those trademarks.

The disputed domain name was created on June 17, 2000 by “Aracruz Celulose S.A”, a predecessor of Complainants, and it stood under that same ownership until 2008. During such time, Franz Delboni was an employee from Complainants, in charge of the IT department and responsible for managing all Complainants’ domain names. The disputed domain name is currently registered to “Aracruz Celulose S.A., Franz Delboni”.

Respondents are Aracruz Celulose S.A, Franz Delboni (“First Respondent”), and Netstructure Soluções Ltda. (“Second Respondent”). First Respondent is identified in this Complaint as “Aracruz Celulose S.A., Franz Delboni” but the Panel notes that “Aracruz Celulose S.A” is a company that no longer exists with such name and it is a predecessor of Complainants. First Respondent is not the same person as the old company “Aracruz Celulose S.A”, but another entity, identified by the Registrar as “Aracruz Celulose S.A., Franz Delboni”.

In 2008, Votorantim Industrial S.A. – which is also part of the Votorantim group – signed a Service Agreement with the Brazilian company Netstructure Soluções Ltda. – hereafter named “Netstructure”, the Second Respondent – in order to obtain technical advice on domain names management and dns services (clause 1.11 of the referred agreement). In accordance with clause 1.32 of the Service Agreement, the services contracted would be provided on behalf of other companies of the group, including Fibria and, as a consequence, Votorantim.

During the contractual relationship over 400 domain names owned by the Votorantim group were managed by the Second Respondent.

Nevertheless, the reiteration of technical problems caused dissatisfaction on the Complainants and the companies of their business group, which lead them to request the transfer of the domain names management to another service provider.

Thus, the domain names management was transferred to another service provider between September 2011 and February 2012, being, however, successfully completed in only 88% of the domain names.

5. Parties’ Contentions

A. Complainant

Complainants allege that although the Services Agreement executed between them and Second Respondent specifically retained all intellectual property rights for Complainants, Respondent unexpectedly refused to give back to the Complainants’ over 50 domain names, including the disputed domain name <aracruz.com> and continues to gain financially from its holding of the domain names.

Complainants also allege that Second Respondent has been in control of Complainant’s domain names, and all login ID’s and passwords have been held by Second Respondent.

Complainants also argue that, on February 28, 2012, during an in-person meeting with P. Navarro – the Netstructure elected representative - Complainants delivered a rescission letter in accordance to clause 11.14 of the Service Agreement with the legitimate expectation to recover the remaining domain names that were being still managed by Second Respondent.

However, from that moment on, Complainants affirm that Second Respondent started to impose explicit barriers to the transfer of the remaining domains, with the clear intent to prevent Complainants from changing the services provider and to keep on perceiving financial benefits.

Complainants inform that just hours after the in-person meeting, Respondent agent P. Navarro sent an email informing an alleged “impossibility” to proceed with the transfer of domain names, which would have “additional costs”. Complainants also inform that despite of their request for information about such “additional costs”, no budget was submitted by Netstructure.

Complainants assert that Second Respondent sought to renew the terminated Service Agreement with Complainants and has sent a bill for services related to the hijacked domain names.

Complainants argue that the Second Respondent incurred in bad faith by keep perceiving financial gains and its refuse to return the domain names to Complainants – the proper owner, as recognized even by Second Respondent on the signed Service Agreement – motivated the sending of a cease-and-desist letter that did not produce any result.

Complainants also inform that, due to a DNS modification made by Second Respondent that interrupted the flow of emails, it urgently called Respondent’s new representative who noticed the acquisition of the company by a third party.

Complainants assert that Respondent’s representative requested Second Respondent financial department to contact Fibria to “regularize the contract”, sending a bill of R$ 28.817,12 (around US$ 14,000) for the “services” provided on May, 2012 – despite the contract was revoked and the “services” were made in order to repair the problems caused by Second Respondent regarding the DNS of the domain names.

Complainants affirm that they did not agree with the costs charged, it tried to solve the issue friendly, by paying the referred “debts” and requesting an in person meeting with the company’s representative Alexander Padilla.

Complainants also affirm that, during such meeting, the Complainants were informed that Second Respondent had been sold and their domain names were now incredibly considered intellectual property assets of the buying company, which hinder their transfer.

Complainants state that, during the following days, the Austrian office of another company of Complainants' group (Votorantim GMBH) reported problems on external emails, the unavailability of the website <votorantim.at>, and that Second Respondent did not offer any solution one more time.

Complainants argue that the facts reported raise no doubt that Second Respondent is clearly “hijacking” Complainants’ domain names and sabotaging their DNS, in order to keep perceiving financial advantages from it.

Complainants also argue that the company is refusing to proceed with the transfer of the domain names by not disclosing their ID and password, preventing Complainants and companies of their business conglomerate from managing the domain names registered under their own names and supposedly under their control.

Complainants state that, specifically in the present case, the disputed domain name <aracruz.com> – which has already been a target for Netstructure’s bad faith measures – remains in the possession and management of the referred company, apart from the appearance that it is registered by the previous company Aracruz Celulose S.A. and its former employee Franz Delboni.

Complainants also state that, in fact, regarding the registration of the disputed domain name, according to the concerned WhoIs database, the registrant is still Aracruz Celulose S.A./Franz Delboni. However, Complainants affirm that, in reality, the Respondent Netstructure is controlling the disputed domain name, being the only entity that knows the ID and password necessary for the transfer of the disputed domain name.

Complainant asserts that recently Second Respondent also turned the website under the disputed domain name unavailable. According to Second Respondent, such unavailability was intentional and aimed to sabotage the Complainants' business, once again, imposing obstacles for the Complainants’ legitimate intent of changing their service provider.

Complainants affirm that the disputed domain name is identical to the Complainants’ registered trademark

ARACRUZ.

Complainants assert that the disputed domain name <aracruz.com> reproduces the Complainants’ registered trademark ARACRUZ with the addition of the gTLD (generic top level domain) “.com”, as well as the central and distinctive portion of the company name Aracruz Celulose S.A., the company that merged with VotorantimCelulose e Papel S.A. in order to create the Complainant Fibria.

Complainants also assert that the trademark ARACRUZ was initially filed before the Brazilian Trademark Office (INPI) in 1967, and its certificate of trademark registration was issued in 1975 and that, since then, several trademark registrations for the name “Aracruz” have been filed and issued in Brazil and abroad, raising no doubts of the Complainants’ trademark rights over the expression.

Complainants argue that the trademark ARACRUZ has been widely used worldwide, being undoubtedly well known in its market.

Complainants state that the Respondents have no rights or legitimate interests in respect of the domain

Name.

Complainants affirm that the Second Respondent was only authorized to register and manage Complainants’ domain name on its behalf.

Complainants state that the Second Respondent has no legal rights over the domain names.

Complainants also state that the Second Respondent is not commonly known as “Aracruz”, and has never operated a business under ARACRUZ mark.

Complainants argue that the same assertion applies to the First Respondent Franz Delboni (the registrant of the disputed domain name according to the WhoIs records), who is not commonly known as “Aracruz”, is not affiliated to Complainants and Complainants have not licensed or otherwise permitted the referred Respondent to keep using any of their trademarks.

Complainants affirm that the Policy second requirement is also met.

Complainants state that the domain name was registered and is being used in bad faith.

Complainants also state that Second Respondent was only hired to register and manage Complainants’ disputed domain names.

Complainants allege that the Second Respondent was not authorized to use Complainants’ trademarks in any way.

Complainants affirm that Respondents are attempting to continue to profit from Complainants’ domain name registration, which is clear evidence of bad faith.

Complainants argue that as sufficiently explained, the disputed domain name <aracruz.com> is in control of Second Respondent, who is denying access to the concerned ID and password by the Complainants, preventing them to manage, transfer or use their own domain name.

Complainants also argue that they are even prevented from correcting the technical problems regarding the website under the disputed domain name, which is currently offline, causing tremendous damages to their business.

Complainants state that it is important to refer that Complainants and the other companies of their business group are repeatedly facing technical problems regarding their domain name, including unavailability of website and interruption of emails flow, which is causing inestimable harm to the companies and their services.

Complainants affirm that the Second Respondent is intentionally withholding the disputed domain name in order to prevent Complainants from effectively changing their management provider, keep perceiving financial benefits, which constitutes an unequivocal use in bad faith.

Complainants also affirm that it is clear that Respondents elected the disputed domain name to remain in their possession due to its value as an intellectual property asset, since ARACRUZ is a well-known trademark.

Complainants assert that the third requirement of the Policy is also met.

B. Respondents

Respondents’ did not reply to Complainants’ contentions, although P. Navarro, apparently on behalf of Second Respondent, sent an email communication to the Center stating that the disputed domain name was never owned by Second Respondent, so it is not part involved in the matter and cannot participate in the dispute.

6. Discussion And Findings

A. Preliminary Issue: Supplemental Filing

The Panel finds that since no explicit provision is made under the Rules for supplemental filling, in accordance with Rules, paragraph 10 (d), it will be at the discretion of the panel to consider it.

In light of this, the Panel has taken into consideration the new facts stated on Complainants’ supplemental filling dated September 26, 2012, in which Complainants give notice of a recent favorable decision issued by the National Arbitration Forum concerning the case Votorantim Participações S.A.v. Carlos Navarro / NetStructure, NAF Claim No. 1207001456005 (<votorantim.us>).

The Panel notes that the above-referenced administrative proceeding was filed against Second Respondent based on the same factual and legal grounds found in the present UDRP case.

The Panel notes that the following main arguments were raised in such decision:

- “Complainant notes that it has no control over the disputed domain name and that Respondent is continuing to hold on to Complainant’s domain name after the business relationship ended. Complainant contends that Respondent was only supposed to register the domain name and maintain it, not take it over for itself. Complainant notes problems in the past with Respondent where Respondent disrupted Complainant’s other websites and e-mail communications that injured Complainant’s business. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to [UDRP] 4(a)(iii).”); see also Altavista Co. v. Brunosousa, WIPO Case No. D2002-0109 (WIPO April 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use) (emphasis omitted). This is a classic example of opportunistic bad faith.”

- “Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <votorantim.us> domain name be TRANSFERRED from Respondent to Complainant”.

The Panel has also taken in consideration Complainants’ supplemental filing of November 8, 2012, in which Complainants give notice to the Panel of the decisions issued by the Center regarding the domain names <fibria.com> ( WIPO Case No. D2012-1543, Votorantim Participações S.A., Fibria Celulose S.A. v. Domains By Proxy, LLC, Sedo.com, LLC, Netstructure Soluções Ltda.), <fibria.net> ( WIPO Case No. D2012-1536, Votorantim Participações S.A., Fibria Celulose S.A. v. Carlos Navarro, Netstructure Soluções Ltda.), <citrovita.com> ( WIPO Case No. D2012-1546, Votorantim Participações S.A., Citrovita Agro Industrial Ltda. v. Citrovita (Rodrigo Borsato), Netstructure Soluções Ltda.), <portocel.com> ( WIPO Case No. D2012-1544, Votorantim Participações S.A., Fibria Celulose S.A. v. Aracruz Celulose S.A., Franz Delboni, Netstructure Soluções Ltda.) and <uszinc.com> ( WIPO Case No. D2012-1549, Votorantim Participações S.A. v. Fatec S.A., Netstructure Soluções Ltda., Carlos Navarro). The Panel notes that the above-referenced administrative proceedings were filed against Second Respondent based on the same factual and legal grounds found in the present UDRP case.

The Panel notes that the following main arguments have been raised in such decisions:

- “In this case, Complainants have provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondents. As Respondents have not filed any valid response, that burden has not been discharged, and the Panel has considered Complainants’ prima facie proof to be sufficient evidence to demonstrate that Respondents have no rights or legitimate interests in the disputed domain name” (Votorantim Participações S.A., Fibria Celulose S.A. v. Aracruz Celulose S.A., Franz Delboni, Netstructure Soluções Ltda., supra);

- “As stated in the referred Service Agreement, “the service provider, by itself, its representatives, employees and occasional subcontractors, may not use names, trademarks, signs and distinctive colors, as well as any other means of identification of the company and its products and services, unless with the express authorization of this one” (clause 16.6 of the Agreement). It is also established that 'Belongs to the company [in this case, Complainants] any intellectual property rights that may arise as a consequence of the fulfillment of this contract' (clause 16.8 of the Agreement). Thus, in this Panel’s view, it is clear that Second Respondent was only authorized to register and manage Complainants’ domain names on their behalf, having no legal rights over the domain names (…)” (Votorantim Participações S.A., Citrovita Agro Industrial Ltda. v. Citrovita (Rodrigo Borsato), Netstructure Soluções Ltda, supra);

- “In this Panel’s view, the reported facts are unequivocal evidence of Respondents’ bad faith. The disputed domain name <uszinc.com> was managed by the Second Respondent since 2008 due to the Agreement signed with Complainant, under which Second Respondent was a mere representative of Complainant, entitled only to manage and register its domain names, as its agent, on its behalf (…) In addition, Complainant and the other companies of its business group remain repeatedly facing technical problems, which leads us to believe Respondents are intentionally withholding the disputed domain name in order to prevent Complainant from effectively changing its management provider, keep perceiving financial benefits, which constitutes an unequivocal use of bad faith” (Votorantim Participações S.A. v. Fatec S.A., Netstructure Soluções Ltda., Carlos Navarro, supra);

- “Moreover, this Panel acknowledges that the disputed domain name was before 2008 being managed by First Respondent Franz Delboni because he was an employee of “AracruzCelulose S.A”, a predecessor of Complainants, and at that time he was responsible for the group’s IT department, but after the execution of the Service Agreement Second Respondent took over this responsibility. Complainants have proved that after the execution of the Service Agreement the disputed domain name was unduly assigned from “AracruzCelulose S.A” to First Respondent and that since then Respondents have been illegitimately holding the disputed domain name in a clear act of bad faith” (Votorantim Participações S.A., Fibria Celulose S.A. v. Aracruz Celulose S.A., Franz Delboni, Netstructure Soluções Ltda., supra).

- “This Panel finds Complainants have duly proved the disputed domain name was only registered in the name of Respondents because Second Respondent was at the time contractually in charge of the implementation and registration of international domain names on behalf of Complainants, as per the Service Agreement, and the fact that Respondents appear to be holding the disputed domain name in order to gain profits from Complainants (who have already acquired the disputed domain name before from Sedo.com, LLC., and should now be its legitimate registrant of record) indicates bad faith” (Votorantim Participações S.A , Fibria Celulose S.A. v. Domains By Proxy, LLC, Sedo.com, LLC, Netstructure Soluções Ltda, supra).

- “In support of their arguments, Complainants cite a number of decisions made by previous panels in similar cases, such as one regarding the withholding of a domain name by the former service provider, where the panel found the registration of the domain name during the contractual relationship in the name of others than the contracting party constitutes bad faith: Nürmont GmbH v. PCC Heilbronn GbREberhardDüttra, WIPO Case No. D2001 0954” (Votorantim Participações S.A., Fibria Celulose S.A. v. Carlos Navarro, Netstructure Soluções Ltda, supra).

- “Finally, the Panel notes that in VOTORANTIM PARTICIPAÇÕES S.A. v. Carlos Navarro / NetStructure, NAF Claim No. FA1207001456005, which involved Respondent NetstructureSoluções Ltda and Complainant VotorantimParticipações S.A, and where the facts were similar to this case, the panel ordered the domain name <votorantim.us> be transferred to Complainant” (Votorantim Participações S.A., Citrovita Agro Industrial Ltda. v. Citrovita (Rodrigo Borsato), Netstructure Soluções Ltda., supra).

B. Preliminary Issue: Multiple Respondents

Complainants inform that First Respondent Aracruz Celulose S/A is a company belonging to its holding. Complainants inform that all trademark registrations and application for the trademark ARACRUZ are registered in the name of Aracruz Celulose S.A. which was recently incorporated by Votorantim Celulose e Papel S.A. to create Fibria, both companies belonging to the business group of the Complainant Votorantim.

Complainants inform that even though the WhoIs records show that the disputed domain name is registered in the name of Aracruz Celulose S/A (a company belonging to the business group of the Complainant Votorantim) and its former employee Franz Delboni, it is actually managed and controlled by the Second Respondent, which apparently holds the ID and password necessary for the transfer of the disputed domain name.

Complainants have informed and have submitted substantial evidence proving that there was a contractual relationship between Complainants and Second Respondent and that Second Respondent refuses to return the administrative control of the disputed domain name to Complainants.

In light of the above, the Panel considers that Second Respondent is using First Respondent Aracruz Celulose S/A (a company belonging to the business group of the Complainant Votorantim) and its former employee Franz Delboni as a “shield” for it’s owns actions. Therefore, the Panel will conduct the analysis of the Complaint only in relation to Second Respondent and will render its decision against the two Respondents.

After the analysis of the preliminary issues above, the Panel will continue to analyze the merits of the Complaint. Pursuant to the Policy, paragraph 4(a), complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Panel finds that the disputed domain name <aracruz.com> reproduces the Complainants’ registered trademark ARACRUZ with the addition of the gTLD (generic top level domain) “.com”, as well as the central and distinctive portion of the company's name Aracruz Celulose S.A. i.e. the company that merged with Votorantim Celulose e Papel S.A., in order to create the Complainant Fibria.

Panel also finds that the trademark ARACRUZ was initially filed before the Brazilian Trademark Office (INPI) in 1967, and its certificate of trademark registration was issued in 1975 and that, since then, several trademark registrations for the name ARACRUZ have been made in Brazil and abroad, raising no doubts of the Complainants’ trademark rights over the expression.

The Panel, therefore, finds that the Complainants have established the first condition of the paragraph 4(a) of the Policy.

D. Rights or Legitimate Interests

The Panel notes that Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No.741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that “the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name”).

The Panel notes that no evidence on record indicates that the Second Respondent owns a trademark or service mark encompassing the disputed domain name.

The Panel finds that the Second Respondent was only authorized to register and manage Complainants’ domain name on its behalf.

The Panel also finds that the second Respondent is not commonly known as “Aracruz”, and has never operated a business under the ARACRUZ trademark.

As stated in the Panel in Votorantim Participações S.A., Citrovita Agro Industrial Ltda. v. Citrovita (Rodrigo Borsato), Netstructure Soluções Ltda, supra, “As stated in the referred Service Agreement, “the service provider, by itself, its representatives, employees and occasional subcontractors, may not use names, trademarks, signs and distinctive colors, as well as any other means of identification of the company and its products and services, unless with the express authorization of this one” (clause 16.6 of the Agreement). It is also established that 'Belongs to the company [in this case, Complainants] any intellectual property rights that may arise as a consequence of the fulfillment of this contract' (clause 16.8 of the Agreement). Thus, in this Panel’s view, it is clear that Second Respondent was only authorized to register and manage Complainants’ domain names on their behalf, having no legal rights over the domain names (…)”.

So, in view of the above, the Panel finds that Complainants have established the second condition of the paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

As stated in by the panel in Votorantim Participações S.A., Fibria Celulose S.A. v. Aracruz Celulose S.A., Franz Delboni, Netstructure Soluções Ltda., supra, "Moreover, this Panel acknowledges that the disputed domain name was before 2008 being managed by First Respondent Franz Delboni because he was an employee of “AracruzCelulose S.A”, a predecessor of Complainants, and at that time he was responsible for the group’s IT department, but after the execution of the Service Agreement Second Respondent took over this responsibility. Complainants have proved that after the execution of the Service Agreement the disputed domain name was unduly assigned from Aracruz Celulose S.A to First Respondent and that since then Respondents have been illegitimately holding the disputed domain name in a clear act of bad faith”.

The Panel notes that Complainants do not argue bad faith under any circumstances of paragraph 4(b) of the Policy. However, the Panel also notes that the Panel is not limited to the factors identified in Policy, paragraph 4(b), but may instead take into consideration, in making a bad faith determination, the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397 (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

The Panel finds that that Second Respondent was not authorized to use Complainants’ trademark in any way. Second Respondent was only authorized to register and manage domain names on behalf of Complainants. However, by registering a domain name without granting access to its rightful owner and by refusing to give back the control over such domain name, Second Respondent has clearly violated the terms of the Service Agreement and has abused its powers, in a demonstration of both bad faith registration and use of the disputed domain name.

The evidence provided by Complainants confirms Second Respondent’s attempt to continue to profit from Complainants’ domain name registration, which is clear evidence of bad faith.

In this sense, the Panel notes Complainants’ allegation that the disputed domain name is in control of Second Respondent, who is denying access to the concerned ID and password by the Complainants, preventing them to manage, transfer or use their own domain name.

The Panel also finds that Complainants are also prevented from correcting the technical problems regarding the website under the disputed domain name, which is currently offline. The Panel notes that the unavailability of the website under the disputed domain name can cause damages to the Complainants’ activities.

The Panel notes that the evidence submitted by Complainants shows that Second Respondent is intentionally withholding the disputed domain name in order to prevent the Complainants from effectively changing their management provider.

Therefore, the Panel finds that Second Respondent registered and used the disputed domain name in bad faith.

Complainants have established the third element of the Paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aracruz.com> be transferred to the Complainant Votorantim Participações S.A. as requested by Complainants.

>Eduardo Magalhães Machado
Sole Panelist
Dated: November 12, 2012