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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Globosat Programadora Ltda, v. Artmidia Comunicação Visual Criação E Arte Ltda.
Case No. D2000-0605
1. The Parties
The Complainant is Globosat Programadora Ltda., a company based in Rio de Janeiro, Brazil, with its principal place of business located at Rua Itapiru, 1209, Rio de Janeiro – RJ, Brazil (the "Complainant"). Respondent is Artmidia Comunicação Visual Criação e Arte Ltda., with its place of business located at Rua Rocha Pita 173, Pompйia, Belo Horizonte – Minas Gerais, 30120-470, Brazil, (the "Respondent").
2. The Domain Name and Registrar
The domain names at issue are "globosat.com" and "globosat.net". The Registrar is Network Solutions, Inc. NSI (the "REGISTRAR"), 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Globosat Programadora Ltda. on June 15, 2000, by email and onJune 19, 2000, in hardcopy.
The Complainant made the required fee> payment, as informed in item 31. -Communications - of the Complaint.
On June 20, 2000, the Center acknowledge receipt of the Complaint and sent to the REGISTRAR, a request for verification of registration data that was answered in June 25, 2000, when the REGISTRAR confirmed, inter alia, that the domain names in dispute were registered through the REGISTRAR, that the "current registrant" is the Respondent, and that the domain names are in "Active" status.
On June 30, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), by running the Formal Requirements Compliance Checklist.
On June 30, 2000, the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.
On July 31, 2000, the Center sent to the parties the Notification of Respondent Default, considering that the Respondent failed to send a Response to the Complainant within the prescribed time limit.
On August 3, 2000, the Center received a Respondent’s Response.
On August 31, 2000, the Center appointed Mr. Josй Pio Tamassia Santos as the single member of the Administrative Panel (the "Panelist"), after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, and, on the same date, notified the parties of this appointment.
On September 5, 2000, this Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The Complainant is Globosat Programadora Ltda., a company based in Rio de Janeiro, Brazil, belonging to the group Organizações Globo, and responsible for the production of television channels for paid television.
Globosat is responsible for the production of 18 channels, 4 of them dedicated to Portugal, reaching approximately 2 million Brazilian homes, representing 70% of the paid television market.
The trademark upon which the Complaint is based is GLOBOSAT. The Complainant attached copies proving that owns, through an assignment from Globosat Comunicações Ltda. (formerly Horizonte Comunicações Ltda.), the Brazilian Trademark Registration n° 816 243 506 for GLOBOSAT, in class 41, filed on June 11, 1991, and registered on January 5, 1993 for entertainment services, and the Brazilian Trademark Registration n° 816 243 522 for GLOBOSAT, in class 38, filed on June 11, 1991 and registered on February 9, 1993 for communications, publicity and advertising services.
Complainant also owns the US Trademark Registration n° 2,126,699 for GLOBOSAT, in class 41, filed with the United States Patent and Trademark Office on June 12, 1996, and registered on January 6, 1998.
Complainant also attached copies of documents proving that he owns several trademark registrations for GLOBOSAT, in many different countries around the world such as Argentina, Uruguay, Paraguay, Mexico, Peru, Guatemala, Ecuador, Bolivia, France, Sweden, United Kingdom, Denmark, Portugal, Norway, Germany, Switzerland and Benelux.
The Complainant affirms that this registered mark GLOBOSAT has been used in Brazil and other countries for more than 8 years in numerous communications media, and that has developed substantial goodwill and name and brand recognition in its GLOBOSAT mark, based on its long and extensive use of GLOBOSAT mark.
Complainant also utilizes its GLOBOSAT mark on Complainant’s Brazilian web site, located at "globosat.com.br". Copies of certain pages from Complainant’s Internet site utilizing its GLOBOSAT mark were attached to the Complaint.
5. Parties' Contentions
Complainant contends that:
(1) The domain names "globosat.com" and "globosat.net" are identical, and therefore confusingly similar to Complainant’s GLOBOSAT mark, in the following manners:
(a) Are identical, and therefore confusingly similar, in appearance, pronunciation and sound to Complainant’s GLOBOSAT mark.
(b) Incorporate fully Complainant’s GLOBOSAT mark being the only difference between the "globosat.com" and "globosat.net" domain names and Complainant’s GLOBOSAT mark, the domain name additions of ".com"and ".net".
(c) Have suggestions, connotations, and commercial impressions associated with Complainant and Complainant’s expertise relating to Complainant’s television and entertainment products and services.
(2) Respondent has no rights or legitimate interests in respect of the "globosat.com" and "globosat.net" domain names, because of the following facts:
(a) Respondent’s use of the "globosat.com" and "globosat.net" domain names are not in connection with a bona fide offering of goods or services.
(b) Respondent is not commonly known or identified by the name "GLOBOSAT".
(c) Respondent does not operate a business or other organization commonly known as "GLOBOSAT" nor offers any goods or services under the GLOBOSAT mark.
(d) Respondent has not acquired trademark or service mark rights for the GLOBOSAT mark in Brazil.
(e) Respondent is not making a legitimate noncommercial or fair use of the domain names.
(f) Respondent is not a licensee of Complainant, nor is the Respondent otherwise authorized by Complainant to use Complainant’s GLOBOSAT mark or to apply for or use any domain name incorporating the GLOBOSAT mark.
(3) The "globosat.com" and "globosat.net" domain names have been registered in bad faith, because:
(a) Respondent does not conduct any legitimate commercial or noncommercial business under the GLOBOSAT mark.
(b) The Respondent has registered the "globosat.com" and "globosat.net" domain names for the purpose of selling or renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
(c) The Respondent has registered the "globosat.com" and "globosat.net" domain names in order to prevent Complainant from reflecting its mark in corresponding domain names unless Complainant pays to purchase or rent the domain names from the Respondent.
(d) By registering the "globosat.com" and "globosat.net" domain names, Respondent is diverting consumers away from the official site of Complainant and making it difficult for Complainant’s customers and the general public to locate Complainant’s official web site, thereby disrupting Complainant’s business.
(e) By registering the "globosat.com" and "globosat.net" domain names, Respondent is giving the impression that Complainant does not have a web site.
(f) If Respondent sells the "globosat.com" and "globosat.net" domain names to a competitor of Complainant, that competitor of Complainant could likewise use this domain names to disrupt the business of Complainant and cause a substantial likelihood of confusion and substantial actual confusion.
(4) Respondent’s use of the "globosat.com" and "globosat.net" domain names is diluting and weakening the unique and distinctive significance of Complainant’s GLOBOSAT mark.
(5) Respondent’s use of domain names identical to Complainant’s GLOBOSAT mark has caused serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its GLOBOSAT mark.
(6) Respondent’s conduct is in violation of Brazilian trademark and unfair competition law.
Respondent contends that:
(1) It has never received any Notification of Commencement of Administrative Proceeding setting a specified date for the submission of a Response to the Complaint.
(2) Considering that it has never received a copy of the statements and allegations in the Complaint, there was no way to answer them. The Respondent would only describe the reasons why it has the domain names disputed.
(3) It created several sites to discuss and spread his ideas about several different Brazilian problems, giving as examples "brasilebrazil.com" and "aldeiaglobal.com". These sites are used to show the Brazilian culture, with several poetries, song lyrics, paintings and all kinds of pictures of the Brazilian hand made art stuff.
(4) "globosat.com" and "globosat.net" were created with a non-commercial goal by the Respondent. The name of the site stands for TRANSGENIC ALIMENTS GLOBAL SERVICE, (Globo Serviço sobre Alimentos Transgкnicos).
(5) The site was registered under ".com" and ".net" because to register it under ".com.br" the Respondent would need to open a business what should represent a high cost procedure.
(6) The site has links to newspapers where there are discussions about the transgenic aliments and the latest news considering the Brazilian Consumers Act.
(7) The domain names were not created to be sold or rent to somebody else, and that the Respondent never contacted the Complainant to offer any business about the object of the Complaint.
It makes a few political considerations in reference to the Complainant, being these considerations not pertinent to the matter at issue.
6. Discussion and Findings
The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order 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"
Since the particles "com" and "net" are attributes of the gTLD, common to all the domain names under this TLD, it is beyond question that the trademark GLOBOSAT is identical to the domain names "globosat.com" and "globosat.net". Therefore, the requirement of Paragraph 4.a.(i) is fulfilled.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
"Globosat" is not part of the name of the entity registering the "globosat.com" and "globosat.net" domain names.
The Respondent has answered the complaint presenting his arguments to justify his rights and legitimate his interest in respect to the use of the phoneme "globosat" as a domain name.
This Panelist did not succeed visiting the site "globosat.net", because the domain name could not be resolved into an IP address, resulting in the reception of the message "Host name lookup for 'www.globosat.net' failed". The same happened when visiting the informed site "brasilebrazil.com" used to "show the Brazilian culture, with several poetries, song lyrics, paintings and all kinds of pictures of the Brazilian hand made art stuff".
When visiting the site "globosat.com", this Panelist found a single nicely produced but dead page, without any active link, except for a link to the e-mail address of the Respondent. Therefore, was not verified the allegation of the Respondent about "links to newspapers, where there are discussions about the transgenic aliments and the latest news considering the Brazilian Consumers Act".
On this basis, this Panelist concludes that the Respondent has not any legitimate interest in the domain names "globosat.com" and "globosat.net". Therefore, the requirement of Paragraph 4.a.(ii) is fulfilled.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
The Respondent affirms that he registered the domain name under ".com" because in Brazil the Respondent would need to open a business in order to make the registration under ".com.br" with a high cost procedure. This is not a valid reason since the Respondent is already a registered business organization, and the costs for registration of domain names are about the same as in U.S.A.
The Complainant attached a list of domain names registered by the Respondent and by the Administrative and Billing Contact for the domains at issue, corresponding to well-known marks in Brazil. The Panelist verified this, and when trying to access most of them, was redirected to a page informing that the URL was under the administration of Domains Bank, "domainsbank.com", a domain name belonging also to the Respondent.
Among the domains verified one can find "acesita.com", "oxiteno.com", "santista.com", "cosipa.com", "copene.com", all of them large Brazilian organizations and well-known trademarks.
The site of Domains Bank was at the moment of the visits, "under maintenance" and its use could not be verified. However, the name has a connotation related with the commerce of domain names.
The Complainant did not demonstrate having received any offer from the Respondent for selling the domain names at issue.
However, the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that, in this case, exist "circumstances indicating that the Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration".
Because of this, this Panelist arrives to the conclusion that the Respondent has registered and used the "globosat.com" and "globosat.net" domain names with bad faith. Therefore, the requirement of Paragraph 4.a.(iii) is fulfilled.
Registrar and ICANN Policies
As confirmed by Network Solutions in response to the Center’s request, Network Solutions Inc., NSI, is the Registrar of the domain names "globosat.com" and "globosat.net" and Network Solutions’4.0 Service Agreement is in effect.
As the basis for the application of the Policy and the Rules are the contractual obligations accepted by the domain name user when applying for it registration, this Panelist went to the REGISTRAR "Service Agreement" (http://www.networksolutions.com/legal/service-agreement.html) to check the applicable provisions.
In item 8 of this "Service Agreement", – Domain Name Dispute Policy –, is informed that the current version of the dispute policy may be found at (http://www.netsolutions.com/legal/dispute-policy.html).
A visit to this location resulted in a redirection to (http://www.domainmagistrate.com/dispute-policy.html) where can be found the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
In consequence, this Panelist adopted the present Decision on the basis of the Policy and the Rules approved by the Internet Corporation for Assigned Names and Numbers ("ICANN"), that are in force for NSI clients in the present case due to the terms and conditions accepted by the Respondent having consented to the REGISTRAR’s "Registration Agreement".
Complainant has proved that the domain name is identical to its trademark, that Respondent has no rights or legitimate interest in the domain name, and that Respondent registered and used the domain name in bad faith.
Therefore, according to Paragraph 4.i of the Policy, the Panel requires that the registration of the domain names "globosat.com" and "globosat.net" be transferred to the Complainant.
Josй Pio Tamassia Santos
Dated: September 13, 2000