WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Graça Artes Gráficas E Editora Ltda. v. Domain Amin
Case No. D2011-0734
1. The Parties
The Complainant is Graça Artes Gráficas E Editora Ltda. of Rio de Janeiro, Brazil, represented by Bonini&Biron - Advogados Associados, Brazil.
The Respondent is Domain Amin of Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name <shoppingdopovo.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2011. On April 28, 2011, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On April 28, 2011, eNom 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 May 6, 2011 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 amendment to the Complaint on May 11, 2011.
The Center verified that the Complaint together with the amendment to 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 on May 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2011. The Response was filed with the Center on June 1, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on June 20, 2011. 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 an evangelical publishing house based in Rio de Janeiro, organized under the laws of Brazil, responsible for publications, books, products and promotion of the International Church of Grace, a Brazilian evangelical church founded by Romildo Ribeiro Soares, in 1980.
It should be noted that the evangelical publishing house was created by this church with the intention to expand their principles and beliefs through their followers, by commercializing several products, like books, magazines, newspapers, posters and leaflets, printed and graphic material of all types, audio or audiovisual material, digital media, CDs and DVDs.
The Complainant owns trademark registrations for the marks SHOPPING DO POVO DE DEUS, registered on September 24, 1999, SHOPPING DO POVO, registered on March 11, 2008, SHOPPING DO POVO, filed on June 24, 2010, and SHOPPING DO POVO NO SEU LAR, also filed on June 24, 2010. Both trademark registrations have been granted with disclaimers.
The series of trademark registrations and applications above were all requested under the laws of Brazil, on behalf of the Brazilian Patent and Trademark Office (BPTO).
5. Parties’ Contentions
The Complainant alleges that the disputed domain name contains the terms “shopping do povo”, which is how the Complainant is recognized and identified in the Brazilian market and worldwide. Complainant alleges that the disputed domain name is clearly identical to its registered trademarks.
The Complainant alleges that the Respondent has no rights regarding the trademark SHOPPING DO POVO, affirming that the Respondent has no affiliation or connection to the Complainant, and also no license to use the disputed domain name.
Moreover, the Complainant asserts that the Respondent does not run any legitimate business activity in relation with the disputed domain name and contends that the Respondent’s usage of the disputed domain name is intended to host several sponsored links, commonly referred as “link farm”.
Further, states that the Respondent’s activities is not a bona fide offering of goods or services to customers, but only to make use of the credibility the Complainant acquired during decades. The Complainant compiles information provided by Internic database and Registrar to conclude that the Respondent has never been recognized by the domain name, and that the usage of the disputed domain name was in awareness of the Complainant’s trademarks.
At last, the Complainant affirms that all factual grounds exposed sums enough information to lead the Panelist to the conclusion that the Respondent has registered and uses the disputed domain name in bad faith.
In his defense, Respondent first states that the disputed domain name is a generic term, common expression that stands for “Shopping for the People” in Portuguese.
Moreover, the Respondent refers to the Complainant’s trademark SHOPPING DO POVO DE DEUS LTDA. to allege that the trademark was previously created by another company belonging to the same economic group, that has been deactivated on December 15, 2008, leading to the conclusion that the referred trademark is abandoned since then.
Further on the subject, the Respondent states that the Complainant never had the intention to use the expression “shopingdopovo” as trademark, reason why the formerly existing company with this name was deactivated, sustaining the argument with Annex 1 of the Response.
The Respondent informs that the Complainant’s application for the trademark SHOPPING DO POVO, on June 24, 2010 was the object of an opposition by a third party. The Respondent makes reference to annexes on page n.14 and n.15 of the Complaint.
Still on the documents attached by the Complainant, the Respondent notices that the Complainant’s abandoned trademark was a word and design mark, which was granted by BPTO with a disclaimer “without exclusive rights to use the nominative elements of the mark”. The Respondent further contends that such fact leads to the understanding that the BPTO imposed such exception in recognition that the terms “shopping” and “povo” are generic, of common use.
To reinforce the claims of lack of interest from the Complainant toward the disputed domain name, the Respondent mentions that a third company has been using the local domain name <shoppingdopovo.com.br>, without the Complainant’s opposition.
Regarding legitimate interest, the Complainant affirms that the website “www.shopingdopovo.com” is a third party commercial reference portal that exposes links to different offerings of goods and services from several sources, of variable types of products. Also affirms that the website is constantly updated by the provider that exposes new types of goods for purchase that does not compete with Complainant’s activity as a Church.
Regarding the accusation of using the disputed domain name in bad faith, the Respondents allege that they were never aware of the trademarks filed and registered by the Complainant, and that never offered the domain name for sale, restating that the Respondent does not compete with the Complainant, whose activities are exclusively religious.
At last, the Respondent argues that the option for the generic terms “shopping” and “povo” has a commercial essence, and not the intention to compete unfairly with the Complainant, requesting the Panel to make a finding of reverse domain name hijack against the Complainant.
6. Discussion and Findings
Pursuant to the Policy, the 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, Policy, paragraph 4(a).
The Panel finds that it is clear that the disputed domain name is identical to the Complainant’s SHOPPING DO POVO mark and confusingly similar to other marks which the Complainant has registered with the Brazilian Patent and Trademark Office (BPTO).
However, the Panel notes that the Respondent argues that the expression “Shopping do povo” would be generic, meaning “shopping for the people” in Portuguese. Respondent also argues that Complainant’s first trademark registrations would have been abandoned and that its pending applications were the object of oppositions by third parties.
In the present case, the Panel reviewed the BPTO records of the Complainant’s cited trademark registrations, considering that only the registration certificates have been attached, but not the historic record of the BPTO administrative proceeding. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) gives the consensus view of panelists’ conducting independent research. The consensus view includes that “the panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision”. The Panel has verified that Complainant’s trademark registrations are valid and active before the BPTO. While the first registrant of the trademark registrations is now an inactive company before the Brazilian IRS – as pointed by Respondent – the trademark registrations have been assigned to Complainant and have been duly renewed.
Nonetheless, the Panel also notes that both of Complainant’s trademark registrations (word and design mark SHOPPING DO POVO; No. 824.582.608 in class 35; and word mark SHOPPING DO POVO DE DEUS; No. 821.427.776, in class 35) have been granted with disclaimers by the BPTO. The word and design mark SHOPPING DO POVO was granted with a disclaimer “without exclusive rights over the word elements of the mark” and the word mark SHOPPING DO POVO DE DEUS was granted with a disclaimer “without exclusive rights over the term ‘shopping’”.
WIPO Overview 2.0 at paragraph 1.1 the consensus view is set out as being that the holding of a registered trademark generally confers such rights and legitimate interests. However, some limited exceptions to the consensus view are also pointed out. Among the cited exceptions is the case of PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437. In that case the Complainant applied for registration with the USPTO of a mark which issued on the Supplemental, rather than the Principal Register. The Panel noted that registration on the Supplemental Register meant that the USPTO found the mark not to be distinctive, but only capable of becoming distinctive upon the acquisition of secondary meaning. Since the complainant in that case failed to offer proof that the trademark had acquired secondary meaning, the complaint failed to show that the complainant had rights in the trademark.
The WIPO Overview 2.0 and decisions citied therein also establishes that where a trademark includes a word or textual component which has been entirely disclaimed (indicating the complainant has no exclusive rights in such word or text) within the relevant registration, or of a word plus design element in which the design element is found to be the sole source of distinctiveness, such registration alone may be insufficient to enable the complainant to establish relevant rights for standing purposes under the UDRP.
The Panel finds that the Complainant’s trademark registrations in this case, granted with disclaimers (as described above), and comprising generic and descriptive terms are not sufficient to establish rights under the UDRP.
The Panel also finds that the Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith. The Panel finds that there is nothing in the Complaint (including annexes) to indicate that (i) the Respondent was or should have been aware of the Complainant or its mark when it registered the disputed domain name, (ii) the Respondent ever used the disputed domain name for activities related to the Complainant’s business and/or religious activities, or (iii) the Respondent targeted the Complainant or its trademark in any way at any time.
Finally, the Panel has to address the question of Reverse Domain Name Hijacking as requested by Respondent. In this matter, the WIPO Overview 2.0 provides, inter alia, as follows:
“Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
“WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the Policy in such circumstances.”
“WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP ” Id.
Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy; see Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309. Furthermore, the fact that a complainant may have attempted to mislead the panel has been held to be grounds for Reverse Domain Name Hijacking; see Shoeby Franchise B.V. v. Shoebuy.com, Inc. / SHOEBUY.COM, WIPO Case No. D2010-2142. The Panel finds that Complainant failed to provide any argument or evidence which could support its Complaint. Also, the fact that Complainant has failed to inform the Panel that both its trademark registrations have been granted with disclaimers may be deemed as an attempt to mislead the Panel and/or willful recklessness in making incorrect factual allegations. Such behavior is a demonstration of bad faith in bringing the dispute. Given the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking, and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Dated: July 18, 2011