юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TV Globo Ltda. v. Radio Morena

Case No. D 2000 - 0245

 

1. The Parties

The Complainant is TV Globo Ltda., a companybased in Rio de Janeiro, Brazil, with its principal plac e of business located at R ъa Marquкs de São Vicente, 30 - Sobreloja, Depto. Jurнdico, Rio de Janeiro, Rio de Janeiro, Brasil (the "Complainant ").

The Respondent is Mr. Marcel Leal de Oliveira, who resides at Av. Buerarema, 819, Conceição, 45600-000, Itabuna, BA, Brasil (the "Respondent").

 

2. Domain Name and Registrar

The domain names at issue are <jornalnacional.com> and <globoesporte.com>. The registrar is Network Solutions, Inc. (the "Registrar") of Herndon, Virginia, USA.

 

3. Procedural History

The WIPOArbitration and MediationCenter (the "Center") received the Complaint of TV Globo Ltda. on March 31, 2000, byemail and on April 3, 2000, in hardcopy.

The Complainant made the required fee payment.

The Center sent to the Registrar, a requestfor verification of registration data which was answered in April 14, 2000, when the Registrar confirmed, interalia, that the domain name in dispute was registered hrough the Registrar, that the "current registrant" is the Respondent, and that the domain name is active.

Having verifed that the Complaint satisfed the formal requirements of the ICANN Uniform Domain Name DisputeResolution Policy (the "Policy "), the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules "), the Center sent the Respondent a notification under Paragraph 2(a) of the Rules, together with copies of the Complaint on April 14, 2000.

The Respondent answered to the Complaint by e-mail on May 5, 2000, and the Center sent an acknowledgement of Response on May 8, 2000.

On May 30, 2000, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Antonio Millй as the single member of the Administrative Panel (the "Panelist").

On the same date, the Center notified the parties of this appointment.

On June 2, 2000, the Panelist received via courier a complete copy of the Complaint, the Response, and the corresponding enclosures. On the same date, the Panelist received messages from the Center, one of them attaching a copy of the sentence issued by the Justice of Sao Paulo State in rem "TV GLOBO Ltda. v. Editora de Jornais e Revistas Ltda." (presented by the Complainant) and the other one making observations about such sentence (presented by the Respondent).

 

4. Factual Background

The trademarks upon which the Complaint is based are JORNAL NACIONAL and GLOBO ESPORTE. The status of each of these trademarks is the following:

a) JORNAL NACIONAL:

The Complainant attached copies proving that it obtained a prorogation for ten years of this trademark registration in Brazil in the year 1994 (class 38.10). The Complainant asserts that it used the trademark for more than 30 years to identify and promote a television program, attaching copies of screens proving such a use and that the alluded program is titled "Jornal Nacional". The Respondent did not deny such circumstances.

b) GLOBO ESPORTE:

The Complainant attached copies proving that it applied for the registration of this trademark in Brazil in the year 1998 (class 38.10) having also registered trademarks containing the word "globo" in Brazil, the European Union and other 12 countries. The Complainant declares that the trademark GLOBO ESPORTE was previously registered at its name, but that the registration expired in 1992 because of non-renewal. The Respondent confirmed such circumstance and asserts that the trademark was vacant at the time of the domain name registration, a fact that the Complainant did not discuss. The Complainant asserts that it used the trademark for more than 20 years to identify and promote a television program, attaching copies of screens proving such use and that the alluded program is titled "Globo Esporte". The Respondent did not deny such circumstances.

The Complainant asserts that it is the largest and most famous television company in Brazil and that it is one of the largest television companies in the world, its television and entertainment products and services being available in more than 130 countries. The Complainant declares that it provides these products and services under a number of names and trademarks, including the JORNAL NACIONAL and GLOBO ESPORTE trademarks, that are used extensively to identify, advertise, market and promote such products and services.

The Complainant affirms that the domain names in dispute have been offered for rent by the Respondent in its site "Bank of Domains", where also the Respondent invited the public to make purchase offers for this and other domain names. Such circumstances are accepted by the Respondent.

The Complainant also affirms that at the time of the Complaint, the URL <jornalnacional.com> directed the Internet user to the site titled "The Brazilian", and the URL <globoesporte.com> directed the Internet user to the "Bank of Domains" site, both sites being owned by the Respondent. The Respondent does not deny these facts.

 

5. Parties' Contentions

5.1 Complainant contends that:

a) The domain names <jornalnacional.com> and <globoesporte.com> are identical, and therefore confusingly similar to the trademarks JORNAL NACIONAL and GLOBO ESPORTE, respectively, because:

i) Both domain names incorporate fully the respective trademarks textual components, with the sole difference of the ".com" extension.

ii) The use of the phonemes "jornalnacional" and "globoesporte" has suggestions, connotations and commercial impressions associated with the Complainant and with the Complainant's television and entertainment products and services.

b) the Respondent has no legitimate interest in the contested domain names, because:

i) The domain name <globoesporte.com> was not being used in connection with a bona fide offering of goods and services, but to link the Internet user with the Respondent’s "Bank of Domain" site where, among others, the contested domain names were offered for sale or rent.

ii) The domain name <jornalnacional.com> was not being used in connection with a bona fide offering of goods and services, but to link the Internet user with the Respondent’s "The Brazilian" site, whose services are in competition with those of the Complainant.

iii) The Respondent is not identified by the names "Jornal Nacional" or "Globo Esporte".

iv) The Respondent does not operate any business known as "Jornal Nacional" or "Globo Esporte", nor offers goods or services under the JORNAL NACIONAL or GLOBO ESPORTE trademarks.

v) The Respondent has not acquired trademark or service mark rights for the JORNAL NACIONAL and GLOBO ESPORTE trademark in Brazil.

vi) The Respondent is not making a legitimate noncommercial or fair use of the domain name. Furthermore, the deviation of Internet users to sites offering publicity and the sale or rent of domain names implies a commercial use of such domain names.

vii) The Respondent was not authorized in any way to use the Complainant’s JORNAL NACIONAL and GLOBO ESPORTE trademarks nor to use any domain name incorporating such trademarks.

c) The <jornalnacional.com> and <globoesporte.com > domain names have been registered and are being used in bad faith, because:

i) The Respondent does not conduct any legitimate commercial or noncommercial business under the JORNAL NACIONAL or GLOBO ESPORTE trademarks.

ii) The Respondent has registered the <jornalnacional.com> and <globoesporte.com > domain names for the purpose of selling or renting or otherwise transferring the domain name registrations to the Complainant or to a competitor of the Complainant for a considerable value in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.

iii) The Respondent has registered the <jornalnacional.com> and <globoesporte.com > domain names in order to prevent the Complainant from using its marks as domain names unless the Complainant purchases or rents the domain name from the Respondent.

iv) By registering the <jornalnacional.com> and <globoesporte.com > domain names, the Respondent is diverting consumers away from the official site of the Complainant and making it difficult for the Complainant's customers and the general public to locate the Complainant's official web site.

v) By using the <globoesporte.com> domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Web site or other on-line locations by directly linking users to its "Bank of Domains" site. In these sites, the Respondent or its affiliates have offered numerous domain names for sale or rent, including the <jornalnacional.com> and <globoesporte.com> domain names.

vi) By using the <jornalnacional.com> and <globoesporte.com> domain names, to link Internet users to <thebrazilian.com> and <bankofdomains.com>, the Respondent has created a likelihood of confusion with the Complainant’s JORNAL NACIONAL and GLOBO ESPORTE trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Web site, products and services.

vii) If the Respondent sells the <jornalnacional.com> and <globoesporte.com> domain names to a competitor of the Complainant, that competitor could likewise use these domain names to disrupt the business of the Complainant and cause a substantial likelihood of or actual confusion.

viii) The Respondent falsely identified other entities and has permitted that these entities identify themselves as the registrant of the domain names in dispute.

d) The Respondent's use of the <jornalnacional.com> and <globoesporte.com>

domain names is undermining the unique and distinctive significance of the Complainant's JORNAL NACIONAL and GLOBO ESPORTE trademarks, giving the public the impression that the Complainant is offering its domain names in rent or sale, and providing a news service titled "The Brazilian".

e) The Respondent's use of domain names identical to the Complainant's trademarks has caused serious and irreparable damage to the Complainant and to the goodwill associated with the Complainant and its JORNAL NACIONAL and GLOBO ESPORTE trademarks.

i) The Respondent's conduct is in violation of Brazilian trademark and unfair competition Law.

5.2 Respondent contends that:

a) Prior to registering the domain names in question, the Respondent researched the Brazilian Trademark and Patent Office database, verifying that at that time "Globo Esporte" was not a valid trademark.

b) JORNAL NACIONAL trademark was registered by the Complainant only for "communication services, advertising and publicity" and not for Internet Web sites.

c) There are 405 trademarks containing the word "Globo" registered in Brazil by different registrants for many different business activities; 6 trademarks containing the word "Jornal Nacional"; and 272 trademarks containing the word "Nacional". Any of the registrants of these trademarks could make justified use of domain names <jornalnacional.com> or <globoesporte.com>.

d) The domain names are identical to the trademarks, but not confusingly similar, because any newspaper about national issues or of a national cover or from a company named "Nacional" can use the same denomination and "anyone that comes to bankofdomains.com through the globoesporte.com knows immediately that we have nothing to do with Globo Esporte".

e) He considers to have rights or legitimate interests in respect of the domain names under dispute and also that he has registered and used the names without bad faith, because "Jornal Nacional" is an old project of his consisting of a virtual newspaper made by journalists working via the Internet, and <globoesporte.com> was registered to build a Web site and then rent it or sell it to any of the many companies with a "Globo" trademark.

f) Being the Respondent in the business described as "to rent a combo of a domain name, content, maintenance and promotion services to someone who wants to start easily on the web", he never tried to sell any of these domains to the Complainant nor offered these domains to any other specific company, either a competitor or an affiliate of the Complainant.

g) He has not registered the domain names in order to prevent the Complainant from using the mark in a corresponding domain name because the Complainant has no intention to use these domain names and because the Complainant has the possibility to use these names for websites using different second level division of ".br" ccTDL.

h) The Complainant and the Respondent are not competitors and/or the domain names were not registered by the Respondent with the primary intention of disrupting the Complainant's business because the Respondent is "a small guy from the interior of a poor state in Brazil" devoted to Internet, regional radio and printed journalism and the Complainant "is the most powerful media company in Brazil".

i) The domain names were not registered by the Respondent in an intentional attempt to attract Internet users for commercial gain to its web site or other on-line location nor by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location, because he have not paid sponsors in "Bank of Domains" service, and because it is "virtually impossible to confuse bankofdomains.com with TV Globo or www.thebrazilian.com (a printed newspaper) with Globo's Jornal Nacional (a tv program)". Moreover, the Respondent display a conspicuous warning adverting that his enterprises have "no relation nor affiliation with other companies which bear similar names nor with companies that have products or services with similar names".

j) The Respondent's used the disputed domain names with bona fide offering services, before the Respondent received notice of the dispute, because when the Respondent was first contacted by the Complainant he "was already using jornalnacional.com as a domain for The Brazilian and was contacting some companies with 'Globo' trademarks for a joint website about sports using globoesporte.com".

k) The Respondent has not been known by the domain names in issue, but by his potential clients.

l) The Respondent is making a fair use of the domain name, because is "using jornalnacional.com for my project and trying to sell not the domain globoesporte.com, but the content of a website with this domain".

m) The Panelist should take into account some additional circumstances, as:

h That the Complainant" is very well known for it's unfair practices in Brazil.

h the Complainant has no valid trademark for GLOBO ESPORTE nor

JORNAL NACIONAL in the USA.

h That are applicable to the Case the principles stated by the court in Juno Online Services, L.P. v Juno Lighting, Inc., 979 F. Supp. 684; 1997 U.S. Dist. LEXIS 15699 (USDC N.D. Ill. 1997) where supposedly the Court found "that registration and warehousing of a domain name without establishment of a connected web site does not constitute use in commerce nor create a likelihood of confusion or deception in the public"

h That are also applicable to the Case the principles stated by the court in Network Solutions, Inc. v Clue Computing, Inc., 946 F. Supp 858; 1996 U.S. Dist. LEXIS 18013; 41 U.S. P.Q. 2d 1062 (USDC D. Colo. 1996) where the Court supposedly "held that ownership of a registered trademark, even corresponding to a well-known brand, does not automatically entitle its owner to use of the corresponding domain name".

h It shall be taken into account the popularity between the American public of "Jornal Nacional" and "Globo Esporte" television programs, because "we're disputing a .com domain".

h That the Complainant "spent two years ignoring the internet. It had two whole years to register the domains and never did so".

h That the useby him of those domain names is not in violation of Brazilian trademark law because his is not using the the Complainant trademarks for communication services, advertising and publicity.

 

6. Discussion and Findings

The Policy institutes in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant to succeed in an administrative proceeding for abusive domain name registration. We will examine each one of these elements in the following points.

"4.a.(i) Identity or Confusing Similarity"

Being the ".com" extension an attribute of the gTDL, common to all the domain names under this TDL, and having no significance the suppression of the separation between the words "jornal" and "nacional" and "globo" and "esporte", there is no possibility to discuss that the trademarks JORNAL NACIONAL and GLOBO ESPORTE are not identical to the domain names <jornalnacional.com> and <globoesporte.com >. Therefore, the requirement of Paragraph 4.a.(i) is met.

"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"

The expressions "jornalnacional", "Jornal Nacional", "globoesporte" and "Globo Esporte" are not part of the name of the Respondent, nor the denomination of one of its enterprises or business, nor the title of one of his programs or journalistic works. The eventual existence of a virtual newspaper project and the goal of building a Web site and then rent it or sell it, can not be considered as source of rights or basis for a legitimate interest in using such expressions as part of a domain name.

The Respondent has not demonstrated the existence of the circumstances alluded in paragraphs "i." to "iii." of section 4.c. of the Policy, nor the existence of any other circumstance that could demonstrate rights or legitimate interest to the domain names for purposes of Paragraph 4(a)(ii) of the Policy.

On these bases, the Panelist concluded that the respondent has not any legitimate interest in the domain names <jornalnacional.com> and <globoesporte.com >. Therefore, the requirement of Paragraph a.(ii) is met.

"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"

To examine the existence of good will or bad faith, it is advisable to review the parties allegations about the circumstances mentioned in the non-exhaustive list of bad faith evidence enclosed in the four paragraphs of section 4.(b) of the Policy:

About 4.(b)(i):

It has been proved by the Complainant and was accepted by the Respondent that the last one it is the owner of the service "Bank of Domains", where "Domains for use in Brazil" and "International Domains" are offered for "Rent" and "Sell". The wording of the screens of this service (including the ‘abstract’ advertising "Domains and great web site names for your business") does not allow the Panelist to find any evidence about the real purpose of the Respondent is not to rent or sell only the domain names but a combo of a domain name, content, maintenance and promotion services. By all means, the purpose of make this "combined" business should imply "the purpose of selling, renting, or otherwise transferring the domain name registration ."

The Panelist believes that the sole fact that the disputed domain names have been registered by a person that does not use them but publicly offers them for rent or sell is the most perfect evidence of a bad faith activity in prejudice of Internet community and of the owner of the trademarks used as domain names.

About 4.(b)(ii):

The Panelist does not find proved that the Respondent have "registered the domain name in order to prevent the owner of the trademark. from reflecting the mark in a corresponding domain name". The pattern of conduct of the Respondent shows clearly that he registered the domain name to rent or sell it and not to gratuitously create obstacles to the commercial moves of the Complainant. The defenses in the sense that the Complainant has no intention to use these domain names and in the sense that the Complainant could have used the same domain names over other ccTDL are inefficient, because this point of the Policies refers to the acts and purposes of the Respondent and not to the ones of the Complainant.

About 4.(b)(iii):

As was stated before, the Panelist find proved that the Respondent is a professional domain names reseller, primarily interested in taking profit by selling to third parties the domain names he put out of the circulation, and in this way does not find that he "have registered the domain name primarily for the purpose of disrupting the business of a competitor". By all means, before the Respondent’s defenses on this point shall be recalled that "competitors" are for the Law all the merchants active in the same branch of business whatever be it comparative rank, and that -by definition- "Internet, regional radio and printed journalism" it is a part of the "media" business, reasons for which the Respondent defenses lacks of substance.

About 4.(b)(iv):

The Panelist finds that by using the domain names to drive the Internet users to commercial Web sites identified by other domain names, the Respondent performed an intentional attempt to attract for commercial gain, Internet users to his own Web sites. In the case of typing <jornalnacional.com> the Internet user were introduced to the journalistic site "The Brazilian", that -for the similitude of the content- could be confused by members of the public with an Internet service provided for the Complainant, or affiliate to it, or sponsored or endorsed by it. In the case of <globoesporte.com> the Internet user were automatically directed to the site "Bank of Domains", where the <globoesporte.com> (among other variations of domain names containing trademarks and titles of the Complainant copyrighted works) was included in a way that could suggest some ingenuous Internet users that the Respondent were acting as a broker of the Complainant’s domain names.

The Respondent's defenses discarding "commercial gain" for not having paid sponsors in "Bank of Domains" service do not have merit, and the same shall be said about the supposed impossibility to confuse "The Brazilian" with "Jornal Nacional" being both of them journalistic services distributed by Internet. In the same way, the notices in the Respondent "Bank of Domains" site screens are not sufficient in the Panelist opinion to avoid confusion of the Internet users.

Examined the constitutive circumstances of paragraph 4.(b), the Panelist shall review at this time if the excusatory circumstances included in the non exhaustive list of paragraph 4.(c) are or not present:

About 4.(c)(i):

There is not any evidence showing that "before any notice of the dispute" the Respondent used the domain names in connection with a bona fide offering of goods or services. As was previously remarked, the sole use that the Respondent makes of the domain names was to offer it for rent or sale and to deviate Internet user to his own Web sites (that is, performing a bad faith offer of services).

About 4.(c)(ii):

The Respondent affirms that he has not been known by the domain names on dispute. The fact that other companies are known by names including the words "jornal", "nacional", "globo", or "esporte", does not have any relationship with the way in which the Respondent is commonly known.

About 4.(c)(iii):

The Panelist does not find any evidence showing that the Respondent did or is making any "legitimate noncommercial or fair use of the domain name". This provision tent to allow ** the use of trademarks in domain names identifying sites that mention the correspondent trademarks in the context of a legitimate activity, as for example commentary or criticism about products or services. The Respondent is far of acting with such as altruist purposes as son is "using jornalnacional.com for his project and trying to sell not the domain globoesporte.com, but the content of a website with this domain".

Because of this, the Panelist arrives to the conclusion that the Respondent has registered and used the <jornalnacional.com> and <globoesporte.com > domain names with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is met.

Use and registration of the trademarks

The Respondent repeatedly asks the Panelist to remember that "TV Globo had no valid trademark for Globo Esporte when he registered the domain globoesporte.com" and affirms that prior to register the domain names sub examination, the Respondent researched the Brazilian Trademark and Patent Office database, verifying that such trademark was not registered. The Panelist took in consideration these defense, finding that it have not merit to excuse the Respondent conduct.

It is a fact accepted by the Complainant that the GLOBO ESPORTE trademark registration expired in 1992, but it is equally accepted by the Respondent that such trademark continued in active and uninterrupted use in connection with the same the Complainant’s products and services until present. This legitimate use of the trademark gave sufficient ground to the Complaint as far as at the time of the domain name registration and after, the Complainant has rights to the trademark GLOBO ESPORTE, that was never abandoned by its owner.

Classes of the trademarks

The Respondent also insisted in remarking the circumstance that the JORNAL NACIONAL trademark was registered only for "communication services, advertising and publicity" and not for Internet Web sites, and the Panelist shall consider this argument, that is not deprived of significance.

One of the main factor of conflict between Trademark regime and domain name regime is precisely the fact that the second one does not allow to share the same phoneme for more than one registrant, like the class division of the Trademark regime permits. Because the impossibility of multiplying the use of the same domain name inside the same TDL, the ICANN Policy section 4. provisions apply to anyone of the owners of a trademark with the same wording or design. The rule "first come, first served" defines the priorities in the domain name use between the legitimate possessors of determinate trademark in different classes, but it can not be alleged by third parties not having any legitimate right to the use of the pertinent trademark in any class, that is the situation of the Respondent.

For the same reason, it is indifferent for the result of the present Case the existence in Brazil of a number of registered trademarks containing the words "Globo", "Jornal Nacional"; and "Nacional": the Respondent did not allege any title to the use of anyone of these trademarks.

In support of the decision, the Panelist took into account that the evidence produced in the Case shows that both "Jornal Nacional" and "Globo Esporte" are titles of programs, protected as integral and inseparable part of artistic and literary works, as both the plot of the television programs and the text of the Internet pages contents are 1.

The invoked precedents

The present Case involves domain names over the gTDL ".com" that is global and not national. For this reason, the Panelist does not consider necessary to enter in the analysis of the lack of registration of the Complainant trademarks in USA, nor of the renown that these trademarks could have between the US public (nor between the Brazilian TV audience). But the Panelist considers due to enter in the analysis of any decision issued by a Tribunal of any country or by an ICANN administrative-dispute-resolution services provider that could bring guidance to the Panel. In this way, the Panelist evaluated the US Case Law precedents invoked by the Respondent, as well as the pertinence of taking into account the recent Brazilian sentence that the Complainant attached for the Panelist consideration, which copy were communicated by the Center.

The "Juno" case:

The Panelist finds that the Respondent wrongly quoted the doctrine in Juno Online Services, L.P. v Juno Lighting, Inc. case. Precisely this case illustrates the aforementioned situation of two persons or entities having rights on the same trademark in different classes. After having used the <juno.com> domain name for a while, the claimant in this case decided to register JUNO as trademark, then, the defendant filed opposition to the trademark application and simultaneously start the procedures before NSI, requesting the <juno.com> domain name cancellation and registered at its name the <juno-online.com> domain name, apparently with the intention of obtaining from the other party consent for an exchange of domain names.

Juno Online Services issued a civil claim asking the court to declare that by registering the <juno.com> domain name it has not violated US trademark law and seeking declaratory, injunctive and monetary relief for trademark misuse. It was in this context that the defendant alleges that it was not in violation of Section 43 of Lanham Act because it did not use the domain name in commerce and that the court –between the limits of the aforementioned US legislation- decided that "the mere ‘warehousing’ of the domain name is not enough to find that the defendant placed the mark on goods or used or displayed [the mark] in the sale or advertising of services", dismissing the claimant’s motion and reserving final judgement on whether cancellation of trademark is a valid remedy for trademark misuse.

In summary, no-one part of these case’s doctrine is in the Panelist view is applicable to the present Case, in which there are not two parties with equal rights to use trademarks containing the same phoneme.

The "Clue Computing" case:

The quotation of this case it is also not accurate (that, by the way, is perfectly justified as far as this case transited different tribunals and changed of name). Once more, this case affects two legitimate right holders, one of them having registered the domain name <clue.com> as early as in 1994 and the other one being owner of the trademark CLUE since 1950.

The well-known toys-maker (that uses its trademark CLUE for a board-game) begins the war in 1996 asking NSI to put the <clue.com> domain name in hold. Then, Clue Computing, Inc. filed suit in a Colorado state court and received an injunction on June 28, 1996, forbidding NSI from altering Clue Computing's use of "clue.com". At this time, NSI started the action that the Respondent quoted. Three years and three litigation later, in a process named Hasbro, Inc. v. Clue Computing, Inc. the September 2, 1999, judged by Judge Douglas Woodlock, seems have been finished the saga, with a resolution that said: "Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark".

In the present Case, there is not a similar "innocent and legitimate reason for using the famous mark", and for this reason the precedent is not applicable.

Adtional Submissions:

1. The Brazilian sentence:

The parties have submitted communications about this sentence without requiring previous consent of the Panel.

2. Respondent's email dated June 12, 2000

The Respondent has submitted this communication without requiring previous consent of the Panel.

The Panelist does not consider necessary to enter in the analysis of such communications nor in the evaluation of the precedent (a decision in favor of the Complainant in this Case, transferring to it the same domain names in the ccTDL ".br") because the present Decision has sufficient grounds with the arguments and documents presented by the parties at the time of the Complaint and the Response.

Internet is for communication

This case is another example of the negative consequences that have for the Internet community the activity of those who sees the domain names as instrument for speculation and parasite profit and not as an user friendly way to transform numeric IP addresses into alphanumeric expression easier to remember and enter into the navigation resources.

Internet is for communication, not for speculation. Internet flourished with solidarity, not with parasitism. Domain names are technical resources necessary for Internet functioning, assigned to the users on the basis of clear rules and by means of contractual relationship. No one can ignore these rules and contractual obligations and act as the owner of a permanent and exclusive property right.

All the members of Internet community shall keep in mind that each time that those trying to corner domain names forces legitimate possessors of trademarks, titles of works, personal names, or domain names to react against a domain name abusive registration, more and more IP numbers resulted reserved only with defensive purpose (contributing to squander a valuable resource, offered for free to the global community) and obliged the ICANN disputes resolution system to dispense efforts that could be reserved for the solution of more justifiable controversies.

The Panelist can not pass over his opinion that ICANN should consider the way to restrain activities that goes in direct collision against the basic rules and needs of the Internet community. Obviously, for the Panelist Internet values come first in matters related with domain names assignation and use, before the lucrative hungers and also before some principles of Trademark Law developed for the ‘brick and mortar world’.

 

7. Decision

The Complainant has proved that the domain names are identical to its trademarks, that the Respondent has no rights or legitimate interest in the domain names, and that the Respondent registered and used the domain names in bad faith. Therefore, according to Paragraph 4.(i) of the Policy, the Panel requires that the registration of the domain names <jornalnacional.com> and <globoesporte.com > be transferred to the Complainant.

 


 

Antonio Millй
Presiding Panelist

Dated: June 16, 2000

 


 

Footnotes:

1. For example, as per Brazilian Trademark Act Lei nє 9.610, de 19 de fevereiro de 1998, Art. 10 "A proteção а obra intelectual abrange o seu tнtulo, se original e inconfundнvel com o de obra do mesmo gкnero, divulgada anteriormente por outro autor". See http://www.planalto.gov.br/CCIVIL/Leis/L9610.htm

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0245.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.