WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telefônica Brasil S.A. v. Domain Discreet Privacy Service / Phonecall, Luciano Simoes Neto
Case No. D2012-1814
1. The Parties
The Complainant is Telefônica Brasil S.A. of São Paulo, Brazil, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Domain Discreet Privacy Service of Florida, United States of America / Phonecall, Luciano Simoes Neto of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <vivospeedy.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 September 11, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 28, 2012.
The Center verified that the Complaint together with the amended 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 on October 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2012.
The Center appointed José Pio Tamassia Santos, Alvaro Loureiro Oliveira and Erica Aoki as panelists in this matter on November 8, 2012. 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
4.1 The Complainant, Telefônica Brasil S.A. (formerly Telecomunicações de São Paulo S/A – TELESP) was founded in 1998 in Brazil, as a result of the demerged and privatization of Telecomunicações Brasileiras S.A. - Telebrás. Since its foundation, the Complainant is part of the “Telefônica Group” controlled by the Spanish company named Telefônica S.A.
4.2 Telefônica S.A. is one of the world leaders integrated operator in the telecommunication sector, providing communication, information and entertainment solution, present in 25 countries in Europe, Africa and Latin America.
4.3 Telefônica S.A., on July 28, 2010, gained control of Vivo Participações S.A. (parent company of Vivo S.A.), which was later acquired and merged with the Complainant in 2011. With such acquisition, the Complainant became the undisputed leader integrated telecommunication operator in Brazil, and also the biggest operation of the Telefônica Group in the world.
4.4 The Complainant states that the trademark VIVO has been considered the most valuable mark in the telecommunication sector in Brazil, and the 5th most valuable mark in Brazil at least since 2010, according to Brand Finance (Exhibit 5 of the Complaint).
4.5 Thus the Complainant states that there has been an inevitable creation of an identity between the word “vivo” and trademark VIVO generating the association of them to the Complainant’s products and services offered to the consumers in Brazil. In fact, due to its remarkable reputation and image before the consumers, the Complainant decided to identify all of its products and services in Brazil with the trademark VIVO.
4.6 The Complainant states that since 2010, the possible choice of VIVO as the main trademark of the Complainant in Brazil was object of much speculation in the press (Exhibit 6-A of the Complaint).
4.7 The Complainant states that in order to develop its commercial activity on the Internet, the Complainant and other companies of the “Telefônica Group” registered and have been using more than a hundred domain names and Internet keywords, many of them containing the trademarks VIVO and SPEEDY, registered by the Complainant in Brazil and in other countries (Exhibit 7 of the Complaint).
4.8 The disputed domain name <vivospeedy.com> was created on May 26, 2011.
5. Parties’ Contentions
5.1 The Complainant has always endeavored its best efforts to protect its intellectual property rights. In Brazil, the Complainant indicates that it has hundreds of trademark registrations or applications for the words “vivo”, “speedy” and “vivo speedy”, solely or composed by other words (Exhibit 9-A of the Complaint - trademark registration certificates, and Exhibit 9-B of the Complaint - list of the Complainant’s trademark registrations and applications).
5.2 The Complainant states that the Respondent, by registering the disputed domain name through the Registrar, has contracted some obligations in relation to such domain name. The Registrar’s Registration Agreement provides that in the event of dispute of ownership or control of a domain name, the Applicant agrees to be bound by the terms and conditions of the Policy. Therefore, the Respondent’s registration is subject to the provisions of the Policy (Exhibit 4 of the Complaint – Registration Agreement).
5.3 The Complainant states that on March 20, 2012, sent a cease and desist letter to Luciano Simões Neto – ME, the owner of the domain name <vivospeedy.com.br>, which is also object of a complaint filed simultaneously before the Center ( WIPO Case No. DBR2012-0014), and to the entity that appeared as the responsible for the website at the disputed domain name <vivospeedy.com> (Exhibit 10-A of the Complaint).
5.4 The Complainant states that in response to the cease and desist letter, Mr. Luciano Simões Neto sent an email informing that he was only the owner of the disputed domain name <vivospeedy.com> and the domain name <vivospeedy.com.br>, and such ownership did not infringe any of the Complainant’s right. Moreover, Mr. Luciano Simões Neto informed that he had no commercial relation with the Complainant, and that the commercial use of the disputed domain name <vivospeedy.com> was made by Kronnus Suporte & Desenvolvimento Tecnológico Ltda. (Exhibit 10-B of the Complaint).
5.5 The Complainant answered Mr. Luciano Simões Neto requesting the assignment of the disputed domain name and the domain name <vivospeedy.com.br> because the Complainant and/or other companies of the conglomerate are the only companies entitled to use trademarks VIVO, SPEEDY or VIVO SPEEDY in Brazil and in other countries, being absolutely clear that the use of such trademarks to compose the disputed domain name <vivospeedy.com> is abusive and illegitimate (Exhibit 10-C of the Complaint).
5.6 The Complainant states that received no answer to the second cease and desist letter.
5.7 The Complainant states that moreover verified that Kronnus Suporte & Desenvolvimento Tecnológico Ltda. has never been an authorized dealer, despite the information displayed on the website, and also sent the correspondent cease and desist letter on May 5, 2012, but did not received any answer (Exhibit 10-D of the Complaint).
5.8 The Complainant requests that the disputed domain name should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (complainant) proves each of the following elements:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(b) The registrant (respondent) has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
6.2 The Complainant has the burden of proof, by a preponderance of the evidence, respecting each element indicated above (paragraph 4(a) of the Policy).
6.3 The Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraph 14(b) of the Rules:
“(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
A. Identical or Confusingly Similar
6.4 The Complainant and its parent company Telefônica S.A. are the owners of several trademark registrations and applications in Brazil and in other countries, containing the words “vivo”, “speedy” and “vivo speedy”. The disputed domain name <vivospeedy.com> bears exactly the same words, “vivo” and “speedy”, registered by the Complainant as trademark, and “vivo speedy”, object of trademark applications.
6.5 The Complainant has exclusive rights in the marks VIVO and SPEEDY and has provided evidence of this fact.
6.6 The Complainant’s mark has received worldwide recognition. The disputed domain name incorporates the entirety addition of both marks VIVO and SPEEDY adding the generic top-level domain suffix “.com”. These additions do nothing to distinguish the disputed domain name from the Complainant’s well-known trademarks.
6.7 This Panel, accepting the opinion of the panel in Belstaff S.R.L. v. andyTim, WIPO Case No. D2012-0800 (“The Domain Name consists of the BELSTAFF trademark in its entirety, together with words “jacken” and “outlet”, two hyphens and the generic top-level domain suffix “.com”. The Panel finds that it is already an established principle that the addition of generic terms such as “jacken” and “outlet”, as well as the suffix “.com” as the top level domain indicator does not sufficiently differentiate the domain name from the trademark concerned. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 […] and also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662”), finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely-registered trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years.
The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.8 Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) 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
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) 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.
6.9 Regarding the Complainant statement that, “even if the Respondent, LUCIANO SIMÕES NETO ME or KRONNUS SUPORTE & DESENVOLVIMENTO TECNOLÓGICO LTDA, had the right to resell or deal the Complainant’s products and services, which is not the case, other panel decisions have established that without the express consent of the relevant trademark holder, a reseller or a distributor of the Complainant do not have the right to use, much less register a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark”, this Panel, accepting the opinion of the panel Vibram S.p.A. v. Chen yanbing, WIPO Case No. D2010-0981 (“The Panel notes the goods sold (or resold) on the website that operates under the disputed domain name is (according to the Complainant) the Complainant’s genuine branded goods (in the sense that they are not counterfeits). This potentially indicates that the Respondent may have rights or legitimate interests in the Complainant’s trademarks, provided that the Respondent is able to prove that he is a reseller or distributer of the Complainant’s trademarked products only, and that he meets certain other requirements such as adequately disclosing his relationship with the trademark owner (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in which the Oki Data case is cited as representative of the majority view of WIPO panelists. The WIPO Overview also notes a minority view in which panels have found that, without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name. See also more recently X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207). This Panel is more inclined towards what is described as the minority view, but in any event finds that in this case, the Respondent did not meet the relevant burden of proof under either approach. The Respondent did not allege that he is a licensee, reseller or distributer of the Complainant's goods and did not file any evidence that indicates a relationship of any sort between the parties. There is no evidence of the Complainant having authorized the Respondent to sell its branded goods, let alone through a domain name which fully incorporates and is confusingly similar to the Complainant’s trademark. There is no evidence of the Complainant having given its permission for the (rather prominent) use of its trademark on the website at the disputed domain name. Even if there were, the website at the disputed domain name does not appear to describe the relationship (or lack thereof) with the trademark owner. This, along with the fact that the Complainant has indicated that it is not connected to the Respondent, convinced the Panel that the Respondent is a non-licensed distributer of the Complainant’s goods, that it has obtained no permission to the use the Complainant’s trademark in the domain name, and that even if it had it would still fail to meet all of the requisite criteria set out in the Oki Data case, and therefore has no rights or legitimate interest in the disputed domain name.”), concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
6.10 The Complainant has offered sufficient evidence that it has never authorized, licensed or permitted the Respondent to use its trademarks VIVO and SPEEDY.
6.11 In the circumstances where the Complainant possesses exclusive rights in the VIVO and SPEEDY trademarks while the Respondent seems to have no trademark rights in “vivo” and “speedy” or any variations thereof, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy.
6.12 As the Respondent has chosen to remain silent on this issue, the Panel holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
6.13 Paragraph 4(a)(iii) of the Policy states:
(iii) your domain name has been registered and is being used in bad faith.
6.14 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a domain name as follows:
(i) circumstances indicating that you 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 web site or location.
6.15 Bad faith can be found when a respondent was aware of the complainant’s trademark at the time of registering the domain name. This Panel considers the discussions and findings of Burberry Limited v. Guosong Chen, WIPO Case No. D2012-0817, fully applicable to this case:
“The disputed domain name was registered many decades after the Complainant first used its BURBERRY trademark. The evidence on the record provided by the Complainant with respect to the use of its BURBERRY trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s trademark as to the affiliation of that website. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.”
Therefore, this Panel finds that the disputed domain name was registered in bad faith.
6.16 Regarding the use of the disputed domain name, paragraph 4(b)(iv) of the Policy is instructive. After analyzing the facts and evidences presented by the Complainant, this Panel believes that the disputed domain name was intentionally registered and used to attract customers for commercial gain to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website or a product on that website. Thus, this Panel finds that the disputed domain name was also used in bad faith.
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 <vivospeedy.com> be transferred to the Complainant.
José Pio Tamassia Santos
Alvaro Loureiro Oliveira
Dated: November 19, 2012