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. D2012-1544
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 <portocel.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 July 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint [together with the amendment to the Complaint/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 August 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2012. Apart from the email received on August 21, 2012 from P. Navarro of NetStructure – Altermedios, no further communication was received from Respondent. No formal Response was submitted.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 7, 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.
Complainants presented a supplemental filing, on September 26, 2012, alerting the Panel of the decision recently issued by the National Arbitration Forum, regarding the domain name <votorantim.us> and also involving Respondent Netstructure Soluções Ltda and Complainant Votorantim Participações S.A, where the National Arbitration Forum ordered Respondent to transfer the domain name <votorantim.us> to Complainant, pursuant to the U. S. Department of Commerce’s usTLD Dispute Resolution Policy.
The Panel issued a Procedural Order on September 28, 2012 requesting the Parties to clarify some uncertainties on the case record, namely the ownership and control of the disputed domain name at the time of its creation, between the time of its creation up to the entry into force of the Service Agreement, and after the entry into force of the Service Agreement to the time it appears to have been assigned to Respondent Netstructure Soluções Ltda. Complainants’ reply to Procedural Order No. 1 was received on October 8, 2012.
4. Factual Background
Complainants are Brazilian companies, both headquartered in the city and state of São Paulo. Votorantim Participações S.A’s (“First Complainant”) activities are focused on key sectors of the economy that demand capital intensive and high scale production processes such as cement, mining and metallurgy, steel mill, pulp, concentrated orange juice, and energy self generation.
In the pulp and paper industry, First Complainant operates through Fibria Celulose S.A. (“Second Complainant”), a company created in 2009 as a result of the merger between Votorantim Celulose e Papel S.A. and Aracruz Celulose S.A. The pulp is shipped through Portocel - Terminal Especializado de Barra do Riacho S.A. (Portocel), one of the only ports in Brazil specialized in shipping hardwood pulp.
Portocel is majorly owned by Second Complainant (Annex 5 to the Complaint), which, as previously mentioned, belongs to the same business group of the First Complainant.
Complainants are the legitimate owners of trademark registration for PORTOCEL in Brazil – Registration No. 824107489, in class 39, filed on October 10, 2001, and granted on April 17, 2007.
The disputed domain name was created on April 23, 1999 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 it is important to take note 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, thus, not the same person as the old company “Aracruz Celulose S.A”, but rather another entity, identified by the Registrar as “Aracruz Celulose S.A., Franz Delboni”. In the year of 2008, Votorantim Industrial S.A. – which is also part of the Votorantim Group, as is First Complainant – signed a Service Agreement (Annex 7 to the Complaint) with Second Respondent in order to obtain technical advice on domain names management and DNS services.
According to Complainants, during the contractual relationship between Votorantim Industrial S.A. and Second Respondent, over 400 domain names owned by the several companies of the Votorantim Group were being managed by Second Respondent.
The Service Agreement included relevant clauses specifically related to the protection of Complainants' intellectual property rights, such as clauses 16.6 and 16.8.
5. Parties’ Contentions
Complainants are the legitimate owners of Trademark Registration No. 824107489, for PORTOCEL, which is allegedly a well-known trademark indicating the only port in Brazil that is specialized in shipping pulp, through it more than 3.5 million tons of pulp are exported.
Complainants claim that the services contracted in the Service Agreement (“Agreement”) did not generate to Second Respondent any intellectual property rights over the domain names it managed for Complainants, whose property should remain with Complainants and the other companies of their Votorantim business group. They also state that during the contractual relationship several technical problems involving many domain names occurred, which justified Complainants’ legitimate intent to change the service provider – at that time, all Complainants' domain names were being held by Second Respondent and managed through its own login ID and password – data which was never shared with Complainants or the other companies of their business conglomerate, preventing them from making any arrangements over their own domain names’ portfolio. Complainants then requested Second Respondent to transfer the domain names back to them and to repair the technical problems that had occurred.
Complainants state that the transfers, which took place in late 2011 - early 2012, only included 88% of the domain names, having Second Respondent not transferred over 50 domain names – including the disputed domain name <portocel.com> – despite the contractual clauses mentioned above regarding Complainants' intellectual property (clauses 16.6 and 16.8 – Annex 7 to the Complaint).
Thereby, as a consequence, on February 28, 2012, during an in-person meeting with Second Respondent’s elected representative (clause 12.23 of the referred Annex 7 to the Complaint), Complainants delivered a rescission letter in accordance with clause 11.14 of the Agreement, with the legitimate expectation to recover the remaining domain names that were being still managed by Second Respondent (Attachment 11 of the Complaint).
Complainants allege that, from that moment on, Second Respondent started to impose explicit barriers to the transfer of the remaining domain names, with the clear intent to prevent Complainants from changing the service provider and to keep on receiving financial benefits. Second Respondent’s representative declared it would not proceed with the transfer of domain names without additional costs – even though the amount paid by Complainants in accordance with the Service agreement comprised “all the costs inherent to the rendering of services”, as established in clause 9.2 of the Agreement. Despite Complainants’ request for information about these additional costs, no budget was ever informed by Second Respondent.
Complainants then sent a cease-and-desist letter to Second Respondent, where they stated the absence of any debts regarding the domain names and stressed the request for transfer. Complainants did not get any result.
Complainants claim the disputed domain name remains in possession and management of the Second Respondent, despite the fact that the WhoIs database shows First Respondent as the owner. Second Respondent is in fact controlling the disputed domain name, being the only entity that knows the ID and password necessary for the domain name transference.
Complainants state that, Second Respondent intentionally turned unavailable the mentioned
website to sabotage the Complainants' business, once again, imposing obstacles for the Complainants' legitimate intent of changing their service provider, since it was responsible for the website’s maintenance.
Complainants argue that, in view of the narrated facts, there is no doubt that Respondent is clearly “kidnapping” Complainants’ domain names and sabotaging their DNS, in order to keep receiving financial advantages from Complainants, since it is refusing to proceed with the transfer of the domain names by not disclosing their ID and password, preventing Complainants from managing the domain names registered under their own name and supposedly under their control.
Moreover, Complainants responded the Procedural Order issued by this Panel stating the disputed domain name was registered on April 23, 1999 by the Votorantim business group, which Complainants belong to, and that its former employee and now Respondent Franz Delboni was at the time responsible for the groups’ IT department, reason why he was the one who registered and managed the disputed domain name on behalf of Complainants.
Complainants allege that after the execution of the Agreement, Second Respondent became responsible for the management of all Complainants’ domain names, included the disputed on, and DNS services. Subsequently, the ownership of the disputed domain name was assigned from “Aracruz Celulose S.A” (a predecessor of Complainants) to First Respondent, and, according to Complainants, “Aracruz Celulose S.A” never authorized such assignment. Since then, Complainants claim that Respondents have been illegitimately holding the disputed domain name.
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
Respondents are “Aracruz Celulose S.A, Franz Delboni” and Netstructure Soluções Ltda. Second Respondent was acting as manager and DNS service provider for Complainants and First Respondent is currently holding the disputed domain name before the Registrar.
As indicated above, this case involves two different Respondents with one of them having entered in a contractual relationship in 2008 with Complainants’ group of companies. Based on the case record, and taking into account the numerous other complaints filed by Complainant Votorantim Participações S.A. against Second Respondent and the similar pattern of conduct in each of these cases, the Panel is satisfied that the two Respondents must be somewhat related and likely controlled by the same entity. This Panel’s decision and its findings shall therefore apply equally to both Respondents in this case.
In order to succeed in a UDRP proceeding, Complainants must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondents has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
A. Identical or Confusingly Similar
Complainants have duly proved the first element under paragraph 4(a) of the Policy by attesting that they are the owners of Brazilian trademark registration for PORTOCEL, and that such trademark is entirely incorporated in the disputed domain name.
Complainants, therefore, have legitimate rights over the expression “portocel”, which is recognized in Complainants’ market segment as being one of the only ports in Brazil specialized n shipping hardwood pulp.
The Panel therefore finds that the disputed domain name is identical to Complainants’ trademark registrations and company name, and, thus, that the requirement of paragraph 4(a) (i) of the Policy is met.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
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.
Second Respondent celebrated an Agreement with Complainants and the other companies of their business group in order to provide technical advisement on domain names management and DNS services, including the disputed domain name.
As stated in the referred 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.
In view of the above, the Panel finds that Respondents have no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the disputed domain name, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
In this Panel’s view, the reported facts are unequivocal evidence of Respondents’ bad faith. In 2008, Complainants and Second Respondent concluded the Agreement under which Second Respondent was a mere representative of Complainants, entitled only to manage domain names as its agent and on its behalf. The disputed domain name <portocel.com> was created on April 23, 1999 and is currently registered to First Respondent.
The Agreement has now come to an end and the disputed domain name is still registered to First Respondent, who is denying Complainants access to the concerned ID and password, preventing them to manage, transfer or use the disputed domain name which was created after the Agreement between Complaints and Second Respondent took place.
In support of their arguments, Complainants cite a number of decisions made by previous UDRP 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 GbR Eberhard Düttra, WIPO Case No. D2001-0954.
In addition, Complainants and the other companies of their business group remain repeatedly facing technical problems, which leads us to believe Respondents are 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 bad faith conduct.
It is clear that the Respondent elected the disputed domain name to remain in its possession due to its value as an intellectual property asset, since PORTOCEL is a trademark indicative of the only port in Brazil that is specialized in shipping pulp and belonging to a widely renowned business group.
Evidently, the unavailability of the disputed domain name causes great damage to Complainants’ activities, and Second Respondent is apparently turning the disputed domain name into an element of coercion for Complainants to pay more money in order to recover it.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and, thus, that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 “Aracruz Celulose 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.
Finally, the Panel notes that in VOTORANTIM PARTICIPAÇÕES S.A. v. Carlos Navarro / NetStructure, NAF Claim No. FA1207001456005, which involved Respondent Netstructure Soluções Ltda and Complainant Votorantim Participações S.A, and where the facts were similar to this case, the panel ordered the domain name <votorantim.us> be transferred to Complainant.
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 <portocel.com> be transferred to Complainant Votorantim Participações S.A. as requested by Complainants.
Gabriel F. Leonardos
Dated: October 15, 2012