WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ronaldo de Assis Moreira v. Goldmark - Cd Webb

Case No. D2004-0827

1. The Parties

The Complainant is Mr. Ronaldo de Assis Moreira, resident of Spain, represented by Cuatrecasas Abogados, Spain.

The Respondent is GOLDMARK - CD WEBB, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <ronaldinhogaucho.com> is registered with Direct Information Pvt. Ltd. dba Directi.com.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2004, and in hard copy on October 11, 2004. On October 11, 2004, the Center transmitted by email to Direct Information Pvt. Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On October 13, 2004, Direct Information Pvt. Ltd. dba Directi.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on November 4, 2004.

The Center appointed Miguel B. O’Farrell as the Sole Panelist in this matter on November 22, 2004. 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.

4. Factual Background

The Complainant is currently one of the most well-known professional football players in the world.

The Complainant began his career in the junior categories of Grêmio Foot-Ball Porto Allegrense, the most important football club of his hometown Porto Allegre as well as one of Brazil’s most famous football clubs.

The Complainant played two seasons with Grêmio Porto Allegre. During that time his reputation spread internationally due to his exceptional skills. As a consequence of such fame, the Complainant received offers to play in some of the world’s most prestigious football clubs. Eventually he signed with Paris Saint Germain (PSG), one of France’s most successful teams.

Ronaldinho Gaúcho soon became one of the stars on the PSG team, being considered at the end of his first season as one of the most talented midfielders in the world.

In August 2003, the Complainant moved from PSG to FC Barcelona, one of the most important football clubs in Europe. During his first season, the Complainant became the leader of the team being considered as one of the Spanish Championship’s most valuable players of the season. At present, Ronaldinho Gaúcho is playing at FC Barcelona performing at an exceptional level. Due to his outstanding achievements, the Complainant has been nominated several times to be awarded with French Football’s ‘Ballon d’Or’, the most prestigious recognition a player may win in Europe.

The Complainant has also secured international recognition as a player on the Brazilian national team. In 1997, playing in the under-17-year-old team, his team won FIFA’s World Championship.

By 1999 he was playing on the senior Brazilian national team, winning the Copa America’s Championship in Paraguay. Since that moment he became a permanent member of the Brazilian national squad. His international experience has led him to play the FIFA Confederations Cup, the qualifying round for Sydney’s Olympic games as well as the FIFA World Cup Championship in Korea and Japan. At the last World Cup Ronaldinho Gaúcho together with his Brazilian team was crowned world champion.

The Respondent registered the disputed domain name on July 27, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The Complainant is currently one of the most prominent and well-known professional football players in the world.

His image has been licensed to international brands, including Nike, Pepsi and Electronic Arts, and has been involved in numerous worldwide advertising campaigns for these companies.

The birth name of the Complainant is Ronaldo de Assis Moreira, however, his professional name is Ronaldinho Gaúcho.

On February 29, 2000, the Complainant applied, via his agent, for the registration of eleven denominative trademarks based on the name “Ronaldinho Gaúcho” in Brazil.

Presently, the registration process of these marks is pending and no oppositions have been filed.

Such a fact should not impede the application of the Policy. On the contrary, the Policy does not require the registration of the affected trademark in order to obtain its protection, as previously decided in many decisions.

Regardless of the rights derived from the trademarks requested by the Complainant before the Brazilian trademark office, it is clear that the Complainant holds common law trademark rights in the name “Ronaldinho Gaúcho”, given the international reputation the Complainant has acquired as a consequence of the development of his professional activities.

Complainant has always used the name “Ronaldinho Gaúcho” during his professional football career as well as with the advertising campaigns based on his name and image. In addition, the Complainant has always been identified as “Ronaldinho Gaúcho” in the development of his professional activities and he has been the star of several international advertising campaigns, using the name “Ronaldinho Gaúcho”.

The name “Ronaldinho Gaúcho” has obtained a commercial value on which the Complainant holds exclusive rights. In this respect, both under Brazilian and United States law, the Complainant would be entitled to assert common law rights in the name Ronaldinho Gaúcho.

The Complainant, via his agent, is the registrant of the domain names <ronaldinhogaucho.info> and <ronaldinhogaucho.com.br>.

The Complainant asserts that the Respondent has been involved in different proceedings under the Policy, including: Rusconi Editore SPA v. Bestinfo WIPO Case No. D2001-0656; Nike, Inc. v. Bestinfo WIPO Case No. D2002-0543; CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark WIPO Case No. D2004-0330; Pacific Cycle, LLC v. Bestinfo a/k/a David Web NAF Case No. FA0403000247972.

The Complainant asserts that the Respondent used different identifications when registering the disputed domain names in the above-related procedures. As stated by the decisions derived from such proceedings, the Respondent’s real identity is actually Mr. David L. Webb, a United States citizen residing in Richardson, Texas.

At present, the domain is linked to a web page offering different links to third parties’ websites. These links are distributed among different categories clearly related to the Complainant. Included as links are categories such as “Videos de Ronaldinho Gaucho” (Ronaldinho Gaúcho’s videos, in Spanish), “Barcelona” (at present, the Complainant plays at FC Barcelona), “Ronaldo” or “Online Game”. In addition, several links unrelated to the Complainant (such as “Play Poker Online”) are highlighted. Moreover, several pop-up banners containing advertising materials appear on the desktop of the users monitor when the web page is loaded.

According to the decisions set out in the above-mentioned proceedings, the corresponding disputed domain names were used in the same way as the disputed domain. In the earlier proceedings the Respondent was forced to transfer the affected domain names because the Respondent’s use was considered as bad faith. Only in one proceeding was the Respondent allowed to keep the domain name (Rusconi Editore SPA v. Bestinfo WIPO Case No. D2001-0656), because the panel considered that such a domain name was composed by two generic words (<vitalityonline.com>).

The Complainant asserts that the Domain Name is identical to the Complainant’s “Ronaldinho Gaúcho” professional name.

The Respondent is not known by the name “Ronaldinho Gaúcho”. Additionally, the Respondent is not associated with the Complainant nor is the Respondent associated with the development of professional or amateur football activities. The Respondent has not signed any contract or entered into any kind of licensing agreement with the Complainant in order to use his name. The Respondent is using the name of the Complainant for the development of his own activities without being entitled to do so and the Respondent has no legitimate authority to use that name.

The Respondent registered the disputed domain name for the purpose of impeding the Complainant’s use of the domain, since the Respondent has no legitimate rights at all in the name “Ronaldinho Gaúcho”.

Since the name “Ronaldinho Gaúcho” constitutes such a well-known name in the sector of professional football, it is impossible that there was a “miraculous coincidence” in the present case.

The Respondent has repeatedly registered domain names corresponding to third parties’ trademarks. This evidences that rather than an unfortunate coincidence, it is clear that the Respondent was aware of the Complainant’s reputation and aimed at misleading consumers and unfairly benefiting from it.

When the Respondent registered the domain name he identified himself as “Goldmark – CDWebb”, even though the Respondent’s actual name is Mr. David L. Webb. Furthermore, the Respondent provided a false telephone number (+ 000.000000) in order to make it more difficult to contact him. Such behavior constitutes evidence of bad faith, as numerous decisions have already confirmed.

The Complainant asserts that as shown, the Respondent is using the domain name for his own commercial gain, by means of linking a commercial website to a domain name with a great international recognition using the same name as a world renowned football player. The domain name redirects Internet users to a website owned and managed by the Respondent which offers search-services on products linked to the Complainant and pop-up banners. Such a behavior has been considered as a use in bad faith by many decisions adopted under the Policy.

Complainant requests that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous UDRP Cases in which the Respondent failed to file its response, the Panel’s decisions were based upon the Complainant’s assertions, and evidence as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064. See also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp WIPO Case No. D2001-0936. The failure to dispute the allegations permits the inferences that the Complainant’s allegations are true.

Notwithstanding the above, the Panel must not decide in the Complainant’s favor solely given the Respondent’s default. See: Cortefiel S.A. v. Miguel García Quintas WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof which allow the Panel to presume that its allegations are true.

A. Identical or Confusingly Similar

The Panel finds that the domain name <ronaldinhogaucho.com> is identical to the Complainant’s professional name “Ronaldinho Gaúcho”.

Although the Panel finds that a mere trademark application does not suffice to comply with the first element required by the Policy, it is worth mentioning that almost five years ago (in February 2000) via the Complainant’s agent, Roberto de Assis Moreira & Cia Ltd., the Complainant filed eleven applications for the registration of “Ronaldinho Gaúcho” in Brazil and, as asserted by Complainant, none of those applications have met with oppositions. It is known that the Brazilian Patent and Trademark Office (Instituto Nacional da Propiedade Industrial) takes several years to grant a trademark application.

The Panel finds that the Complainant has always been identified as “Ronaldinho Gaúcho” in the development of his professional activities.

Many decisions under the Policy have indicated that common law or unregistered trademark rights in personal names satisfy the first condition of the Policy.

In this case, Complainant is one of the most well-known professional football players in the world. He participates in international advertising campaigns based on his name and has been licensing his name for commercial purposes. As a result of this, the name “Ronaldinho Gaúcho” has obtained important commercial value. In this respect, under a common law trademark right, the Complainant is entitled to property rights in his name.

The Panel notes that in similar cases, it was found that well-known sport persons may achieve common law trademark rights arising out of their fame. See: Freddy Adu v. Frank Fushille WIPO Case No. D2004-0682; Terrell Eldorado Owens v. Aran Smith d/b/a Sportsphenoms.com and/or Sportphenoms WIPO Case No. D2003-0463; Joe Cole v. Dave Skipper WIPO Case No. D2003-0843; Francesco Totti v. Jello Master WIPO Case No. D2002-0134; Xavier Hernández Creus v. Isidro Sentis Sales WIPO Case No. D2001-0710; Daniel C. Marino, Jr. V Video Image Productions WIPO Case No. D2000-0598.

Moreover in this case, the Complainant has licensed the use of his name to identify and promote products, thus creating in the mind of the consumers a particular association between “Ronaldinho Gaúcho” and such products, from which the Complainant receives a commercial benefit.

Therefore, the Panel finds that the Complainant has common law trademark rights in his professional name, which, pending the grant of his applications, is currently used as an unregistered trademark by third parties under license.

For all the reasons, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name”. See The Vanguard Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064.

Complainant has introduced some arguments in order to prove that the Respondent has no rights or legitimate interests in the disputed domain name, namely: Respondent is not commonly known by this domain name; no connection between Respondent and the name “Ronaldinho Gaúcho” was found on the Internet; the Respondent is not linked at all neither to the Complainant nor to the development of professional or amateur football activities; the Complainant has not signed any contract or entered into any kind of licensing agreement with the Respondent in order to use his name for commercial purposes.

On the other hand, Respondent failed to file a reply and therefore it did not bring to these proceedings any element to show that it has rights or legitimate interests in the disputed domain name.

In view of the above and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules the Panel finds that the Respondent has no rights or legitimate interests in the conflicting domain name.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b)(iv) of the Policy the use of the domain name with the intention to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s mark shall constitute evidence of the registration and use in bad faith.

Respondent registered the domain name on July 27, 2004.

Complainant has proved that he is one of the most well-known football players in the world and that he has been known professionally, for many years before the year 2004, as “Ronaldhino Gaúcho”.

Therefore, the Panel finds that the Respondent knew the well-known name “Ronaldinho Gaúcho” when he registered the domain name.

The Complainant proved that the domain name hosts a web page offering different commercial pay-per-click links to third party websites. These links are distributed among different categories related to the Complainant’s fame and appearing under categories such as “Videos de Ronaldinho Gaucho” (Ronaldinho Gaúcho’s videos, in Spanish), “Barcelona” (at present, the Complainant plays at FC Barcelona), “Ronaldo” and “Online Game”. In addition, several pop-up banners containing advertising materials appear on the screen of the user when the web page is loaded.

The Respondent does not have rights or a legitimate interest in the domain name and the domain name is identical to the Complainant’s well-known name.

The Panel finds that the above-given reasons constitute sufficient evidence that the Respondent registered and uses the domain name with the intention of attracting for commercial gain Internet users to the website by creating a likelihood of confusion in users minds.

The fact that Respondent has not filed a reply to the Complaint nor filed any evidence that could justify its conduct reinforces the conclusion that Respondent has chosen Complainant’s name “Ronaldinho Gaúcho” in bad faith.

The Panel finds that the above-given reasons constitute sufficient evidence of Respondent’s bad faith and therefore there is no need to further analyze whether Respondent’s real identity is actually Mr. David L. Webb, a citizen of the United States residing in Richardson, Texas who has been involved in other proceedings under the Policy and who has repeatedly registered domain names corresponding to third parties’ trademarks. See Rusconi Editore SPA v. Bestinfo WIPO Case No. D2001-0656; Nike, Inc. v. Bestinfo WIPO Case No. D2002-0543; CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark WIPO Case No. D2004-0330; Pacific Cycle, LLC v. Bestinfo a/k/a David Webb NAF Case No. FA0403000247972.

In view of the foregoing and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that Respondent has registered and used the domain name in bad faith.

Consequently, the Complainant has proved the third element required in paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ronaldinhogaucho.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist

Dated: December 3, 2004