WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Votorantim Participações S/A v. Conexion Capital
Case No. D2002-0906
1. The Parties
1.1 The Complainant is Votorantim Participações S/A whose registered office is at 01448-000 São Paulo, SP, Brazil.
1.2 The Respondent is Conexion Capital, New York, 10016 NY, USA.
2. The Domain Name and Registrar
2.1 The domain name at issue (the "Domain Name") is <votorantim.com>.
2.2 The Registrar is Network Solutions Inc. ("the Registrar").
3. Procedural History
3.1 The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by email on September 30, 2002, and in hard copy on October 7, 2002.
3.2 The Center acknowledged receipt of the Complaint on October 3, 2002.
3.3 On October 3, 2002, the Center requested registrar verification from Network Solutions Inc. in connection with the Complaint. The Center received verification on October 4, 2002, confirming that the Respondent was the registrant.
3.4 On October 7, 2002, the Center sent a Deficiency Notification to the Complainant requiring the Complainant to include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. This deficiency was cured by the Complainantís amendment, sent by email, dated October 8, 2002, whereby the Complainant agreed to submit to the jurisdiction of the courts of the Eastern District of Virginia, Alexandria Division, the jurisdiction in which the business of the Registrar is located.
3.5 The Respondent emailed the Center on October 9, 2002. This email is the only correspondence received from the Respondent in connection with the Complaint and addressed the Complainantís submission to jurisdiction of the courts made by the amendment referred to at 3.4 above. The Center duly responded by email on October 11, 2002, clarifying the position in relation to submission to jurisdiction.
3.6 Notice of the proceedings was then served on the Respondent by email on October 18, 2002, in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). Hard copies were forwarded by courier on the same date.
3.7 The formal date for commencement of the administrative proceedings was October 18, 2002. Accordingly the Respondent had until the November 7, 2002, to submit its response.
3.8 No response to the Complaint has been filed and notification of Respondent Default was served by email on November 8, 2002.
3.9 A Panel was constituted on November 25, 2002, with a single member, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.
3.9 The projected date for the decision is December 9, 2002.
4. Factual Background
4.1 The Panel has been provided with a substantial amount of information by the Complainant, both in its complaint and as annexures to that document. The Panel has no information from the Respondent and the only correspondence received from it is the email of October 9, 2002, referred to at 3.5 of this decision. Attached to an email to the Complainant dated June 27, 2001, from Tom Herman of the Respondent, Mr. Herman provides information about a company called the Recognition Group, which purports to work with distressed technology companies. It is unclear what connection (if any) the Recognition Group has with the Respondent.
4.2 The Complainant is a holding company responsible for the formulation and implementation of the corporate strategies and policies of the Votorantim Group ("the Group"). It was founded in Brazil in 1918, and operates particularly in cement, mining, metallurgy and pulp and paper industries. It also has a presence in the chemical, agribusiness and flexible film for packaging industries. The Group has also set up a venture capital company which prospects and invests in new businesses or those which have some degree of synergy with the Groupís existing operations.
4.3 At the end of the fiscal year 2001, the Group employed 22,000 people and had consolidated net operating revenues of 9 billion Brazilian reais.
4.4 The Complainant is the registered proprietor of the trade mark "VOTORANTIM" in Brazil, Argentina, Bolivia, Canada, Chile, Colombia, Paraguay, Peru, the United States, Uruguay and Venezuela. Copies of available registration certificates have been provided. The Panel notes that the company name on some of the trade mark applications and/or registrations filed in Brazil and in other countries appears as the Complainantís former name: S/A Indústrias Votorantim. The Complainantís company name was changed to Votorantim Participações S/A, the name used in this complaint, on April 30, 2002, and the name change has not yet been universally recorded. (No formal change of name documentation has been provided to the Panel.)
4.5 The Complainant has been the registered owner of the domain name <votorantim.com.br> since 1996.
4.6 The Respondent registered the Domain Name on April 15, 1999.
4.7 No website has ever been established by the Respondent by reference to the Domain Name since its registration.
5. The Partiesí Contentions
5.1 The Complainant
These are set out in full in the Complaint, but may be summarised as follows:
5.1.1 The Domain Name is "literally identical" to the Complainantís registered trade marks.
5.1.2 Besides the trade marks for "VOTORANTIM", this word is not a common expression in Portuguese, English or any other language.
5.1.3. The Respondent has no rights to the Domain Name, nor any legitimate interest thereto as the Domain Name does not correspond to its corporate name, the Respondent does not own a corresponding trade mark and the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
5.1.4. The Domain Name should be considered as having been registered and used in bad faith for the following reasons:
(i) The Domain Name has been registered in the most common and most desirable generic top level domain. The Respondent must have known that its conduct would prevent the Complainant reflecting its trade mark in a corresponding Domain Name and would provoke a negotiation in order to transfer it to the Complainant.
(ii) By Clause 17 of the Registrarís Service Agreement the Respondent agreed and warranted that neither its registration nor its use of the Registrarís services would directly or indirectly infringe the legal rights of a third party.
(iii) When the Respondent registered the Domain Name it was already familiar with and aware of the international reputation of the Complainant.
(iv) An email dated June 27, 2001, attached to the Complaint as Annex H, from Tom Herman (the administrative contact for the Domain Name and presumably a representative of the Respondent) suggests both prior knowledge of the Complainantís Group and shows the Respondentís intentions in relation to the Domain Name which amount to bad faith, i.e. an intention to sell the Domain Name or to establish "some sort of partnership in relation to the Domain Name".
(v) The "empty and inactive" holding of the Domain Name is likely to have a negative effect on the Complainantís trade marks and amounts to bad faith as inaction is within the concept of use in bad faith.
5.2 The Respondent
5.2.1. The Respondent has not formally responded to the Complaint. The only correspondence between the Center and the Respondent was the email dated October 9, 2002, referred to at 3.5 above. In this email the Respondent asserts that:
(i) the Complainant is located in Brazil and has the Brazilian form of the Domain Name available to it;
(ii) Votorantim is a common last name and should be available for use as such for the Respondent or its American clients.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 The vast majority of the Complainantís trade marks was registered by the Complainant before the Domain Name was registered by the Respondent. The Claimantís first Brazilian trade mark for "VOTORANTIM" was granted in 1963.
6.4 The Domain Name is identical to the Complainantís registered trade marks.
6.5 The Respondent has not used the Domain Name for a website bearing the Complainantís registered trade mark. The Domain Name is inactive; there is no holding page and no evidence of any intention to use the Domain Name for a website since its registration in April 1999.
6.6 Absent any further information and in view of the Claimantís contrary assertion, the Panel does not accept the Respondentís contention, in its email of October 9, 2002, that Votorantim is a common last name.
6.7 There is no evidence to show that the Respondent had any legitimate basis to register the Domain Name or any intent to use it in any manner unconnected with the Complainantís business. Absent such evidence, the Panel concludes that the Complainant is correct and that the Respondent does not have any rights to or legitimate interest in the Domain Name.
6.8 Paragraph 4(b) of the Policy illustrates types of conduct which demonstrate bad faith. Paragraph 4(b) (i) states:
"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 for valuable consideration in excess of your documented out-of-pocket costs directly relating to the domain name".
6.9 The Panel regards the email, dated June 27, 2001, from the Respondent to the Complainant as indicating the Respondentís purpose in registering the name as being selling, renting or otherwise transferring the Domain Name for valuable consideration of some sort, whether that be purely financial or in terms of preferential treatment or as a negotiating tactic by the Respondent to persuade the Complainant to enter into some other transaction. The email stated:
"Ö this domain is available. I would love to hear some creative ways in which we might be able to work with the Votorantim Group. An outright purchase of the domain name would be less interesting than some sort of partnership, but nonetheless I would be happy to discuss the purchase of the domain name."
The circumstances, and the absence of any proper explanation from the Respondent, suggest to the Panel that the Domain Name was registered by the Respondent primarily for the purpose of selling or renting it and/or with the intent to gain commercial advantage in any negotiation with the Complainant in relation to "some form of partnership" as suggested by the June 27, 2001, email.
6.10 Accordingly the Panel concludes the Domain Name was registered and is being used in bad faith. The Panel therefore finds that the Complainant has established each of the elements of paragraph 4(a) of the Policy.
7.1. The Panel concludes that on the balance of probabilities:-
7.2 The Domain Name is identical or confusingly similar to the Complainantís registered trade marks.
7.3 The Respondent does not have any rights to or legitimate interest in the Domain Name.
7.4 The Domain Name was registered and is being used in bad faith.
7.5 Accordingly, the Panel directs that the Domain Name be transferred to the Complainant.
Dated: December 9, 2002