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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Churrascaria Porcão Ltda. v. Prime Products International, Inc.
Case No. D2001-0535
1. The Parties
The Complainant is Churrascaria Porcão Ltda., a Brazilian company with an address at Praia Belo Jardim, 285, Rio de Janeiro, Brazil, represented in this proceeding by Ms. Claudia Maria Zeraik, Esq. and by Mr. Edson Diogo de Oliveira, Esq., of Rio de Janeiro, RJ 20241-080 Brazil.
The Respondent is Prime Products International, Inc., with an address at 7206 N.W., 31st Street, Miami, Florida, 33122, U.S.A., represented in this proceeding by Mr. Ury Fischer, Esq., of Lott & Friedland, P.A., Coral Gables, Florida 33134-1098, U.S.A.
2. The Domain Name and Registrar
The disputed domain name is <porcao.com>, registered with NSI, of Herndon, Virginia, U.S.A.
3. Procedural History
On April 11, 2001, a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN"), ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") was electronically submitted before the WIPO Arbitration and Mediation Center ("Center"). On April 17, 2001, the Center acknowledged receipt of the complaint. On April 18, 2001, the complaint was submitted in hardcopy.
On April 18, 2001, the Center requested verification of the registration data to the concerned registrar. On April 19, 2001, Network Solutions Inc. replied to this request by informing that the domain name at issue was registered with it, that the registrant is Prime Products International, Inc., that the administrative and billing contact is Lim, Kooi and that the technical contact is KCL, Domain Accounts. The registrant and all contacts have the same address at 7208NW 31st Street, Miami. The service agreement in effect is version 5. The domain name registration is in active status.
On April 21, 2001, the Center verified the complaint’s compliance with formal requirements. On the same day the Center obtained a printout of the Web page corresponding to the web page under the domain name at issue. On April 23, 2001, the Center sent its Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent. The last day for sending the Response to the Complainant and to the Center was May 12, 2001. On May 12, 2001, the Respondent sent its Response to the Center. On May 21, 2001, the Center sent its acknowledgement of receipt.
On May 21, 2001, the Complainant submitted a supplementary filing with some comments on the Response, and requested the Panel to admit the filing.
On June 7, 2001, after having received Roberto A. Bianchiґs Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him a sole panelist in Case No. D2001-0535. The deadline for the Panel to render a decision was June 20, 2001.
On June 18, 2001, by Procedural Order No. 1 the Panel admitted the Complainant’s request regarding its supplemental filing of May 21, 2001. In line with the principle of equal treatment, the panelist allowed the Respondent to submit to the Center, on or before June 23, 2001, a reply by e-mail to Complainant’s additional comments, with copy to the Complainant as set out in the Rules. Pursuant to Rule 10(c), the Panel thereby reset the deadline for issuing a decision in this matter to July 6, 2001.
On June 23, 2001, (within the established deadline) Respondent sent by e-mail to the Panel its Reply to Complainant’s submission of May 21, 2001, with copies to the Complainant and the WIPO Center. The Panel acknowledged receipt of Respondent’s Reply.
There were no other orders issued. There were no further extensions.
Both the complaint and the response have been submitted in English. The registration agreement is in English. This proceeding shall therefore continue in English (Rules, Paragraph 11).
4. Factual Background
The following facts have not been contested:
Complainant is Churrascaria Porcão Ltda., known as PORCÃO by the public in general, a Brazilian steakhouse based in Rio de Janeiro, Brazil, since May 1975. PORCÃO has presence in Brazil with nine restaurants and abroad with restaurants in Miami, Lisbon and Milan. Churrascaria PORCÃO renders barbecue restaurant services. Since 1996 a PORCãO CHURRASCARIA restaurant is based in Miami, Florida, U.S.A.
Complainant owns a trademark registration in Brazil for the PORCÃO mark, Registration No. 007058438, in Class 38.60, filed in the Brazilian Patent and Trademark Office on October 05, 1978, and in force since January 25, 2000, (renewal) for bar, restaurant, buffet services and the like. The PORCÃO CHURRASCARIA (and design) mark is registered in United States under registration No. 2287591, filed on July 02, 1998 and granted on October 19, 1999, in international class 42. In Italy the PORCÃO CHURRASCARIA (and design) mark is registered under No.601254, filed on September 07, 1990 and granted on July 13, 1993 in int’l class 42. In Portugal the PORCÃO CHURRASCARIA (and design) mark is registered under No. 286.929, filed on October 26, 1992 and granted on July 12, 1994 in int’l class 42. Complainant also registered the PORCÃO (and design) mark as a European Community Trademark, under No. 46.309 filed on May 26, 1997 and granted on December 15, 1998, in int’l class 42. Complainant also filed the PORCÃO CHURRASCARIA (and design) mark in Argentina, under No. 2.248.875 on October 27, 1999 in int’l class 42. Complainant also filed the PORCÃO CHURRASCARIA (and design) mark in Uruguay, under nє 318.127 on November 04, 1999 in int’l class 42. In Paraguay the PORCÃO CHURRASCARIA (and design) mark is registered under nє 227.412, filed on October 29, 1999 and granted on August 2, 2000, in int’l class 42. Complainant also filed the PORCÃO (and design) mark in Spain, under nє 1747169 on February 23, 1993 in int’l class 42.
Respondent registered the <porcao.com> domain name on July 9, 1996 with NSI.
On June 17, 2001, the Panel tried to connect its computer to the <porcao.com> web site by using Internet Explorer. The attempt resulted in a DNS error consisting of a text that "the page cannot be displayed" and that "cannot find server".
According with the NSI reply to the Center’s request for data confirmation, the applicable service agreement is version 5, which incorporates by reference the ICANN UDRP in effect. This Panel has thus jurisdiction in this case.
5. Parties’ Contentions
A) Complainant contends, inter alia, the following:
- The <porcao.com> domain name is identical or confusingly similar to Complainant’s PORCÃO mark.
- Respondent has no rights or legitimate interests because Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services. A person who visits <porcao.com> on the Internet sees only a page titled "The page cannot be found." Respondent, as an entity, is not commonly known or identified by the name "PORCÃO", it is identified by its name Prime Products International, Inc. Respondent does not operate a business or other organization commonly known as "PORCÃO", or offer any goods or services under the PORCÃO mark. Respondent has not acquired trademark or service mark rights for the PORCÃO mark in Brazil nor in the USA where it is established. Respondent is not making a legitimate non-commercial or fair use of the domain name. Respondent is simply not using the <porcao.com> domain name for any legitimate purposes, other than to sell the domain name to Complainant. Respondent is not using the domain name <porcao.com> for an active web site since its registration, until the date of this complaint, April 9, 2001, i.e., it is not using for more than 4 (four) years, what characterizes that Respondent is a passive holder of such domain name. Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s PORCÃO mark or apply for or use any domain name incorporating the PORCÃO mark. The word "PORCÃO" is a distinctive and characteristic word, taken from the Brazilian vocabulary, and is being used extensively to identify, advertise, market and promote its typical Brazilian Steakhouse restaurant services in Brazil and abroad, and as such is not one that individuals or entities would legitimately choose unless seeking to create an impression of an association with Complainant or for purposes of selling the domain name to Complainant.
- Respondent has registered and is using the <porcao.com> domain name in bad faith. Respondent does not conduct any legitimate commercial or non-commercial business under the PORCÃO mark. Respondent is established in Miami and has registered the <porcao.com> domain name on July 09, 1996, i.e., 6 months after the opening of PORCÃO’s Steakhouse in Miami, which demonstrates the Respondent’s bad faith intent of registering the domain name <porcao.com>, to then sell it to Complainant. Respondent has registered the <porcao.com> domain name for the purpose of selling or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Respondent has registered the <porcao.com> domain name in order to prevent Complainant, as the owner of the PORCÃO mark, from reflecting its mark in a corresponding <porcao.com> domain name. The message in Respondent’s <porcao.com> domain name that the page cannot be found for more than 4 years, demonstrates Respondent’s intent to prevent Complainant from reflecting its PORCÃO mark in a corresponding <porcao.com> domain name unless Complainant pays to purchase the domain name from Respondent. By registering the <porcao.com> domain name, Respondent is diverting consumers away from the official site of Complainant, because the <porcao.com> site gives to consumers, especially those that are abroad, the impression that Complainant does not have a web site, and making it difficult for Complainant’s customers and the general public to locate Complainant’s official web site. By its registration of the <porcao.com> domain name, Respondent has created a likelihood of confusion as to his affiliation with Complainant and Complainant’s PORCÃO mark. For example, if a person views the <porcao.com> web site and sees that the "page cannot be found," that person may then search a Whois database for the registrant of <porcao.com> and assume that Respondent, whose name will appear, is affiliated with Complainant.
- If Respondent sells the <porcao.com> domain name to a competitor of Complainant, that competitor of Complainant could use the <porcao.com> domain name to disrupt the business of Complainant and cause a substantial likelihood of confusion and substantial actual confusion. In fact, sale or use of this domain name by any other company could disrupt Complainant’s business and cause substantial confusion among persons trying to reach Complainant’s business and addresses over the Internet. Respondent, since the registration of the domain name <porcao.com>, up today, has not taken any positive action in connection to such domain name. Even a passive holding of the domain name amounts to "acting in bad faith." See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003, Administrative Panel Decision, WIPO Arbitration and Mediation Center, 7.9-7.12. Respondent’s bad faith intent is strongly supported by the fact that Complainant and its mark have a strong reputation and are widely known, especially in light of the famous clientele that uses to go in Porcão’ restaurants, chiefly in Miami, and that Respondent has not shown up today, a web site under the domain name <porcao.com>.
- The Whois database shows that Respondent currently owns other domain names and there are no existing websites in relation to many of them. Respondent has actually not taken any positive action related to many domain names it owns, including <porcao.com>, what suggests that Respondent intends to obtain profit from the commercialization of those domain names.
- Respondent’s use of the domain name <porcao.com> is diluting and weakening the unique and distinctive significance of the PORCÃO mark. Respondent’s use of the domain name <porcao.com> could tarnish the PORCÃO mark by giving the impression that Complainant, or an affiliate of Complainant, despite its Latin, North American and worldwide presence and reputation somehow could not get a web site to work.
B) Respondent contends, inter alia, the following:
- The present dispute arises out of Complainant's misguided notion that it has exclusive worldwide trademark rights to the use of, and to exclude others from using, the word "porcão", the Portuguese translation of the English word "pig", not only in the Internet context but also in general parlance. Complainant does not enjoy such exclusive rights and therefore cannot meet its initial burden of establishing that the complaint is based on Complainant having acquired senior trademark rights over the domain name in question.
- Moreover, to the extent Complainant can establish it is the owner of a trademark, the domain name in question is neither identical nor confusingly similar to that mark. In addition, because the domain name in question is composed of only the word "porcão", a generic noun over which nobody enjoys exclusive rights, the Respondent has a legitimate interest in respect to the use of the word in its domain name.
- Complainant has altogether failed to present any evidence that Respondent registered or used the domain name in bad faith. In fact, it is Complainant who has demonstrated bad faith in bringing the present Complaint nearly five (5) years after registration of the subject domain name by the Respondent without ever voicing any concern over use of the domain name. Further evidence of the Complainant’s bad faith is demonstrated in the libelous statements in the Complaint, which portray the Respondent as an unscrupulous cybersquatter without presenting the Panel with even a shred of evidence to back up its claims. Complainant’s libelous and unsubstantiated statements are made in violation of the Federal laws of the United States and those of the State of Florida and may form the basis of separate legal action by the Respondent against the Complainant.
- In brief, Complainant has failed to meet its burden with regard to all three elements it is required to prove under Paragraph 4(a) of the Policy and therefore the Complaint should be denied and the Panel should not grant the relief sought.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has evidenced trademark rights in the PORCãO service mark, at least since its registration of January 25, 1980 in Brazil, as well as by its registrations in Italy (granted in July 1993) and Portugal (granted in July 1994), prior to the domain name registration. The Portuguese word PORCãO means "big pig" in English (see U.S. TESS printout as complaint’s Exhibit F). In Portuguese the suffix ãO (nasal sound) adds the idea of "big" to a noun, as would the Spanish ON and the Italian ONE suffixes.
The Brazilian trademark registration certificate is for PORCAO (denominative trademark) instead of PORCãO simply because that computerized registration system does not provide for characters such as "ã". A similar situation exists with regard to the registration of domain names. Anybody wishing to register <porcão.com> would have to register <porcao.com>.
The Panel finds that the <porcao.com> domain name is confusingly similar to the PORCãO and PORCãO CHURRASCARIA service marks of the Complainant, and that therefore the first prong of the Policy is present (Policy, Paragraph 4(a)(i)).
Rights and Legitimate Interests in the Domain Name
Complainant has contended that Respondent lacks any rights or legitimate interests in the domain name, and has specifically denied that any of the circumstances of Policy, Paragraph 4(c) be present in Respondent’s favor. Respondent contends that PORCãO is a common use or generic word, and that Respondent’s rights in registering such term derive from the "first come, first served" principle.
Respondent alleged that PORCãO means "pig". The Panel considers that
such interpretation seems supported by evidence furnished by Complainant itself. See article by Jen Karetnick, Exhibit "O" of the complaint, stating: "Then I visited the churrascaria Porcão (Portuguese for "pig") in the Four Ambassadors Hotel on South Bayshore Drive (…)".
This means that at least that for some English-speaking persons the word PORCãO may translate as "pig". In any case both PORCO and PORCãO are common words in the Brazilian-Portuguese language, referring to "pig" or "big pig". See Dicionário Brasileiro Espanhol-Português Português-Espanhol, Oficina de Textos, São Paulo, 1996, page 807, where entries exist for both PORCO and PORCãO (masculine gender nouns). This fact affords support to Respondent’s allegation that at the moment of registration of <porcao.com> it had in mind to develop a web portal dedicated to the agricultural sector in Brazil or other Portuguese-speaking countries.
The Panel cannot accept Complainant’s argument that the most appropriate word for Respondent’s alleged purpose of developing an agricultural web portal should be PORCO or PIG (instead of PORCãO). In this respect the Panel does not believe that a registrant must have any specific nationality or native language, the lack of which would have the effect of preventing it from registering a particular domain name. Nor must a registrant be fluent in any particular language as a requisite for a domain name registration.
It is true that no use of the web site for the alleged purpose of developing a web portal has been evidenced by Respondent, either in the intended agricultural field or in any other respect. It is also true that Complainant waited almost five years to show some interest in the domain name by initiating the present proceeding. Even if Complainant’s inaction does not necessarily amount to "acquiescence" (as contended by Respondent) the Panel notes that PORCãO is a common use word, and that during a considerably long period following registration the domain name <porcao.com> remained unchallenged by Complainant.
Therefore the Panel is inclined to accept that in this particular case the principle "first come, first served" was a sufficient basis for acquiring rights or legitimate interests in the (common use) domain name at issue. Even if Respondent has not proved that any of the circumstances of Policy, Paragraph 4(c) are present in its favor, the Panel finds that Complainant has not evidenced that Respondent lacks rights or legitimate interests in a domain name basically consisting of a common use word (Policy, Paragraph 4(a)(ii)).
The Panel’s conclusion about the common use nature of the word PORCãO should not be construed as a finding that any of the Complainant’s trademark applications or registrations are not in compliance with the respective trademark laws and regulations, as they may be applicable. An administrative proceeding under the Policy is not the proper forum to decide about such questions.
Bad Faith Registration and Bad Faith Use
Complainant has not proved its contention that Respondent’s primary purpose at the moment of the domain name registration was to transfer it to Complainant for a profit. Nor has Complainant submitted any other evidence of bad faith registration or bad faith use.
The list of domain names held by Respondent (<acuarela.com>, <cuento.com>, <kepong.com>, <lumut.com>, <mahal.com>, <papoula.com> <perdana.com>, <products.net>, <showz.com>, <silvina.com>, <strawberrypark.com>, <sungaiwang.com> or <traducelo.com>) does not allow the Panel to conclude that "a pattern of such conduct" as described in Policy, Paragraph 4(b)(ii) is present in this case, because Complainant failed to prove that such domain names are not generic or common use words, or that such domain names would reflect or correspond to third parties’ trademarks. This in turn prevents the Panel to find that the purpose of the domain name registration was to create an obstacle for Complainant to reflect its mark in a domain name.
The Response accurately shows this lack of evidence of the complaint. Respondent is also right that the reasoning of Telstra should not be applied in the present case, because the relevant circumstances required for concluding that inactivity amounts to a positive bad faith action are not present in this case.
In many cases where this Panel (like many other panels) has followed the doctrine established in Telstra the Panel considered a set of circumstances which, considered together, indicated that inactivity could amount to positive bad faith action. One cannot forget that the much-cited Telstra case refers inter alia to the particular situation where the respondent (in default and unavailable for notification at the address furnished for registration purposes) was most likely a resident in Australia, and that "Telstra" is the famous trademark of the Australian telecommunications company. "Telstra" is in no way a generic or common use word.
In the present case the registrant has its domicile in the U.S. and the Complainant derives its trademark rights on PORCãO or PORCAO mainly from a Brazilian registration. Complainantґs registrations in Italy and Portugal, which also pre-date the domain name registration, are for the PORCãO CHURRASCARIA (and design) mark. The U.S. service mark was applied for and granted after the domain name had been registered, and in any case it reads "PORCãO CHURRASCARIA" (a disclaimer on CHURRASCARIA exists).
The Panel considers that the <azaleia.com> case – WIPO Case D2000-1745 referred to by Complainant in its "additional comments" of March 20, 2001,– differs from the present case. In Azaleia the learned panelist found inter alia that respondent had registered many other domain names corresponding to third parties’ marks or celebrities names, which does not resemble the situation in the present case.
Complainant has failed to prove that the third leg of the Policy is present (Policy, Paragraph 4(a)(iii)).
The Panel has found that the domain name registration of <porcao.com> is confusingly similar to Complainant’s mark. However Complainant has not succeeded in evidencing that Respondent lacks rights or legitimate interests in the domain name, or that Respondent has registered and is using the domain name in bad faith.
For the reasons above the complaint is denied. Pursuant to Policy, Paragraph 4(i) and Rules, Paragraph 15, the Administrative Panel orders that the domain name registration of <porcao.com> should not be transferred to the Complainant.
Additionally, and contrary to Respondent’s contention, the Panel does not find that Complainant has brought its complaint in bad faith.
Roberto A. Bianchi
Dated: July 6, 2001