WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GL Eletro-Eletrônicos Ltda. v. WhoisGuard Protected, WhoisGuard, Inc. / Joao Victor
Case No. D2021-0578
1. The Parties
The Complainant is GL Eletro-Eletrônicos Ltda., Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo Advogados, Brazil.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Joao Victor, Brazil.
2. The Domain Name and Registrar
The disputed domain name <gleletro.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2021, 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 March 4, 2021 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 March 5, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 14, 2021. 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.
On May 7, 2021, the Panel issued the Procedural Order No. 1, requiring the Complainant to provide evidence of its unregistered trademark rights, within 5 days. On May 13, 2021, the Complainant answered the Procedural Order No. 1, submitting documents and requesting the extension of the term initially set, due to limitations related to the COVID-19 pandemic in Brazil. On May 17, 2021, the Panel issued the Panel Order No. 2, extending the deadline to comply with Procedural Order No. 1 until May 21, 2021. On May 21, 2021, the Complainant answered the Procedural Order No. 2 providing additional documents.
4. Factual Background
The Complainant is a Brazilian company engaged in the manufacture and sale of electrical and electronic components. The Complainant was founded in 1983 and operates under the tradename GL ELETRO since 2000.
The Complainant does not own any trademark registrations for the term “GL Eletro”, which forms part of its corporate denomination.
The Respondent registered the disputed domain name <gleletro.com> on October 19, 2020.
The Panel tried to access the disputed domain name on April 25, 2021, without success, receiving a security alert from the Internet browser stating that the corresponding website would not be safe and could be associated with fraud. The Complainant claims that the disputed domain name use to resolve to a website offering electronics products as if the Complainant owned it.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical to the GL ELETRO tradename, to which the Complainant has prior and unencumbered rights. The Brazilian Federal Constitution and Industrial Property Law provide for the protection of tradenames.
- The possibility of confusion is evident given that consumers will immediately identify the domain name registered by the Respondent with the Complainant’s well-known tradename, believing that the registration identifies the same company. The Complainant’s tradename GL ELETRO has been registered since 2000 in Brazil, at least 20 years before the Respondent registered the disputed domain name.
- On the other hand, as far as the Complainant knows, there is no trademark registered, in the name of the Respondent, that consists of, or contains, the expression GL ELETRO, or that it has any right on an unregistered basis in such a tradename. And the Complainant has not entered in any agreement, authorization or license with the Respondent with respect to the use of the expression GL ELETRO. The element GL ELETRO does not appear in the Respondent’s denomination, or any other identification.
- The Complainant knew about the existence of the disputed domain name due to a consumer complaint, in which the consumer has bought a TV on the website at the disputed domain name and did not receive it. On the website at the disputed domain name there was the name of the Complainant and the number of its National Register of Legal Entities (“CNPJ”). Through the website at the disputed domain name, the Respondent was selling TVs, cell phones, watches, air-conditioning and videogames. The Complainant filed a report about the fraud to the Brazilian police authorities.
- The Respondent’s bad faith can be deduced by the fact that he has used the tradename GL ELETRO as the identical domain name, in circumstances in which the Respondent has no rights or legitimate interest in the tradename. GL ELETRO is a well known sign in Brazil that immediately identifies the Complainant. Therefore, it is right to affirm that GL ELETRO functions as a trademark regarding the Complainant, requiring the disputed domain name to be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the present case, the Complainant does not own any trademark registrations for the term “GL Eletro”. The Complaint is based on alleged rights to the non-registered brand and tradename GL ELETRO, adopted by the Complainant in Brazil, since 2000.
Thus, a preliminary issue to be checked is if the Complainant is entitled to unregistered trademark rights for the purposes of the Policy, in the circumstances of the case.
As a Civil Law Country, trademarks in Brazil are governed by a system of attribution of rights upon registration within the Patent and Trademark Office (Instituto Nacional da Propriedade Industrial - INPI). See art. 129 of the Brazilian Industrial Property Act (Statute 9.279/96): “Trademark ownership is acquired by validly issued registration…” (“A propriedade da marca adquire-se pelo registro validamente expedido…”, in Portuguese).
At the same time, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), for purposes of the UDRP a Complainant may establish unregistered or common law trademark rights, showing that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services.
Therefore, taking into account the provisions of the section 1.3 of the WIPO Overview 3.0 and in order to give the Complainant the opportunity to bring additional information to support his argument, the Panel issued a procedural order requiring the Complainant to provide relevant evidence of its unregistered trademark rights, such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, (v) consumer surveys, (vi) other domain names owned by the Complainant incorporating the term “GL Eletro”, (vii) Complainant’s official websites or social network profiles making references to the brand GL ELETRO, or (vii) any other evidence of distinctiveness. In response, the Complainant brought pictures of electrical components and their packaging containing references to GL ELETRO but not used as a brand to mark the products (which appear to be marked as “legrand”), but merely to show corporate affiliation (and moreover in somewhat fine print and on the back or underside of the packaging); references to the Complainant corporate name in ISO certifications and within the ABINEE – Brazilian Electrical and Electronic Industry Association; and proof of ownership of the domain name <gleletroeletronicos.com.br>.
The Panel has no doubt that the Complainant uses the expression GL ELETRO as part of its trade name and along with its electrical components. However, in this Panel’s perspective, the information brought in the Complaint and in response to the Procedural Order is not sufficient to characterize a distinctive identifier supporting unregistered trademark rights in Brazil, according to the Policy and to the WIPO Overview 3.0 standards.
GL ELETRO is not a famous brand in Brazil, nor does it even have a well-known status (GL ELETRO does not form part of the list of well-known trademarks published by the Brazilian Patent and Trademark Office – INPI; see “https://www.gov.br/inpi/pt-br/assuntos/marcas/arquivos/inpi-marcas_-marcas-de-alto-renome-em-vigencia_-18-02-2020_padrao-1.pdf”).
The Complaint and the response to the Procedural Order also do not bring any indication of high brand distinctiveness: no public recognition surveys, nor brand notoriety prizes or demonstrations of vast marketing investments.
No references were made or evidence brought indicating impressive amount of sales under the mark or extensive advertising using the mark, nor even were indicated social network profiles named GL ELETRO.
A Google search for the expression “GL Eletro” does not point on the first pages to any GL ELETRO websites, but only to side references to the Complainant’s products or tradename in third parties’ websites.
Actually, neither the Complainant makes references to any active GL ELETRO website. The only domain name referred by the Complainant comprising the expression “gl eletro” (<gleletroeletronicos.com.br>) was registered just on December 8, 2020 (after the registration of the disputed domain name) and is not linked to any active page.
The Complainant’s public statement alerting for the fraud at the disputed domain name was made on another website (<legrand.com.br>). On that website, there is a section in which the owner Legrand presents the list of its brands (“Marcas do Grupo”, in Portuguese), but there is no reference to GL ELETRO. There is also no reference to GL ELETRO in the section “Legrand in Brazil” (“A Legrand no Brasil”, in Portuguese) of such website.
Annex B2 to the Complaint demonstrates that GL ELETRO is not even the title of the Complainant’s headquarters, but only its corporate denomination.
In addition, the acronym “GL” is quite common in other brands and the complement “eletro” can be considered descriptive of electronic products. Again, according to the WIPO Overview 3.0, section 1.3, “Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning”.
As a result, despite reasonable suspicions of fraud in the disputed domain name, the Panel concludes that the Complainant has not sufficiently demonstrated that GL ELETRO is a distinctive identifier in Brazil, which consumers associate with the Complainant. Therefore, it is not possible to recognize unregistered trademark rights to the Complainant in the present case.
The absence of trademark rights (registered or unregistered) indicates that the present case – although it could be successful in a wider dispute before the judiciary – does not deserve to prosper within the strict limits of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: May 27, 2021