WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivo S.A., Portelcom Participações S.A. v. Whois Privacy Services, provided by DomainProtect LLC

Case No. D2010-0968

1. The Parties

Complainants are Vivo S.A. of Londrina, State of Paraná, Brazil and Portelcom Participações S.A of São Paulo, State of São Paulo, Brazil, represented by Silveiro Advogados, Brazil.

Respondent is Whois Privacy Services, provided by DomainProtect LLC of Saint-Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <vivotorpedo.com> is registered with OPENNAME LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 11, 2010. On June 14, 2010, the Center transmitted by email to OPENNAME LLC a request for registrar verification in connection with the disputed domain name. On June 16, 2010, OPENNAME LLC 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 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on July 15, 2010.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 23, 2010. 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

Both the terms “vivo” and “torpedo” are the subject of extensive trademark registrations in Brazil by members of Complainants’ commercial group of companies, alone and in combination with other terms. For example, Tagilo Participações Ltda., a company created and incorporated by members of Complainants’ economic group, owns the following registrations: VIVO TORPEDO WEB, Brazilian Trademark Registration No. 825788269 in Class 38 with a priority date of September 18, 2003, and VIVO FOTO TORPEDO, Brazilian Trademark Registration No. 826266410 in Class 41 with a priority date of April 7, 2004.

The disputed domain name was registered December 2, 2008 and currently routes to a web page stating that the domain name is for sale.¹

5. Parties’ Contentions

A. Complainants

Complainants allege that they are both controlled by Portugal Telecom and Telefónica Móviles Groups. Complainants aver that VIVO S.A., has been operating under the trademark VIVO since 2003 and is currently the largest mobile telephone carrier in Brazil, with more than 46 million customers. Complainants also aver that Portelcom Participações S.A. is now owner of the trademark VIVO, which is one of the most important brands in Brazil.

Complainants explain that they have widely used the term “vivo torpedo” for services involving text (SMS) messaging and the sending of MMS and SMS messages to mobile phone devices.

With respect to confusing similarity, Complainants aver that their VIVO trademark is widely known in Brazil. Complainants contend that the addition of the term “torpedo” simply adds a descriptive term to their VIVO trademark, therefore, the disputed domain name is confusingly similar to their VIVO trademark. Complainants also note that they have several trademarks or trademark applications containing the terms “vivo” and “torpedo”.

Complainants also allege that Respondent has no rights or legitimate interests in respect of the domain name <vivotorpedo.com>, as follows: first, Respondent is not affiliated with Complainants and has no license of permission to use Complainants’ trademarks; second, Respondent is not commonly known as “vivo torpedo”, has not operated a business under the VIVO TORPEDO trademark and does not have any registration for this expression; third, Respondent is essentially making no use of the domain name <vivotorpedo.com>, since there is “no content” on the website to which the disputed domain name routes – thus Respondent’s passive holding is not a bona fide use of the disputed domain name.

Finally, with respect to bad faith, Complainants contend that the VIVO trademark was initially filed with the Brazilian Industrial Property Office in 2001, has a high degree of public recognition in Brazil and that Respondent targeted Complainants and their trademarks when Respondent registered the disputed domain name. Complainants add that in 2003, further trademark filings were made including the terms “vivo” and “torpedo” – such as VIVO FOTO TORPEDO, VIVO TORPEDO WEB, and VIVO TORPEDO WAP.

Complainants also contend that the mere offering for sale of the disputed domain name, without setting a price, must be indicative of bad faith under Policy, paragraph 4(b)(i). See Hipertex, S.A. v. Lambda Software Solutions BV, WIPO Case No. D2001-0332; Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. Complainants further contend that the absence of development of the website to which the disputed domain name routes, along with the use of a proxy registration to service to avoid identification, are indications of bad faith use.

Complainants conclude that “it is clear that the Respondent has registered the Disputed Domain Names in order to prevent Complainants from reflecting their mark in a corresponding domain name, as well as in order to gain financial profits with the sell of the domain name to the Complainants or to theirs competitors with a higher price, because of the renown of the Complainants trademarks.” [sic]

On the basis of the above allegations, Complainants request transfer.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainants must establish 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 Complainants have rights;

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

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

Complainants must establish these elements even if Respondent does not respond to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

Although the disputed domain name <vivotorpedo.com> is not identical to Complainants’ VIVO or VIVO TORPEDO family of marks, the Panel agrees that Respondent’s domain name is confusingly similar to Complainants’ marks.

As noted above, Complainants have registered trademark rights in various combinations including the terms “vivo” and “torpedo”, including the mark VIVO TORPEDO WEB. In the Panel’s view, the distinctive features of Complainants’ marks are the terms “vivo” and “torpedo”.

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademarks alone. Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The top level domain “.com” in the disputed domain name is to be disregarded. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Disregarding the “.com” suffix, the disputed domain name <vivotorpedo.com> incorporates the distinctive “vivo” and “torpedo” terms in Complainants’ family of marks. The Panel concludes, therefore, that the disputed domain name is confusingly similar to the registered marks of Complainants and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers . . . .” Policy, paragraphs 4(c)(i)–(iii).

Complainants must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no Reply. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Complainants aver that Respondent is not commonly known by the disputed domain name, does not operate a business related to Complainants’ marks, and that Respondent has no license or registration to use the marks. In the absence of a Reply, the Panel accepts these undisputed facts as true.

Complainants also allege that Respondent does not use the domain names for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use. The Panel agrees.

The web page to which the disputed domain name routes simply announces that:

“The owners of the domain name vivotorpedo.com are accepting offers from interested parties willing to obtain ownership rights over the domain name. You may learn more about how to place your offer by clicking [link]”.

Respondent is not, however, actively offering any other goods or services, or making use of the site for any sort of other information or commentary that might support a finding of bona fide or fair use.

Therefore, the Panel rules that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complaint has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.

Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or 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 or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

These circumstances are not exhaustive, however. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, concealment of identity, and other circumstances. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondent registered the disputed domain name in 2008, when Complainants’ business and use of the VIVO and VIVO TORPEDO family of marks were well established and widespread in Brazil. The Panel infers therefore that Respondent was aware of Complainants’ trademarks when it registered the disputed domain name. “It seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith.

It remains to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain name in bad faith. E.g., E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

In many decisions involving inactive websites or so-called “passive holding,” UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In Telstra, the panel explored the question of which circumstances of inaction, or passive holding, beyond those identified in paragraphs 4(b)(i), (ii) and (iii) of the Policy, constituted use of a domain name in bad faith.

The Telstra Panel explained that

“[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”

In the present circumstances, the Panel concludes that Respondent’s behaviour supports a finding of bad faith use, as explained below.

First, Respondent has chosen to refrain from filing a Response to the Complaint.

Second, it appears that Respondent attempted to conceal its identity under circumstances suggesting bad faith.

The use of proxy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration. Id. In this case, however, it appears that Respondent has a bad faith motive for using a privacy registration service, to conceal its true identity and try to avoid responsibility. The Panel finds, therefore, that Respondent’s use of a proxy service is further evidence of Respondent’s bad faith. See, e.g., Canadian Tire Corp. Ltd v. CK Aspen, WIPO Case No. DTV20007-0015) (also citing other decisions finding use of privacy registration services as indications of bad faith).

The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled.²

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 <vivotorpedo.com> be transferred to Complainants.³

Jeffrey D. Steinhardt
Sole Panelist
Dated: August 6, 2010