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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fluminense Football Club. v. Building Centre International Corporation
Case No. D2000-0829
1. The Parties
The Complainant is FLUMINENSE FOOTBALL CLUB, a company based in Rio de Janeiro, Brazil, with its headquarters located at Rua Álvaro Chaves, 41, Laranjeiras, Rio de Janeiro, Brazil, Zip Code 22231-220 (the "Complainant"). Respondent is BUILDING CENTRE INTERNATIONAL CORPORATION, with its place of business at 20808 North East 37th Avenue – Aventura, Florida 33180, USA, (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is <fluminense.com>. 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 on July 19, 2000, by email and on July 27, 2000, in hardcopy.
The Complainant made the required fee payment, as informed in item X. – Payment – of the Complaint, on July 12, 2000, by means of a bank transfer.
On August 11, 2000, the Center sent to the REGISTRAR, a request for verification of registration data that was answered on August 15, 2000, when the REGISTRAR confirmed, inter alia, that the domain name in dispute was registered through the REGISTRAR, that the "current registrant" is the Respondent, and that the domain name is in "Active" status.
On August 14, 2000, the Respondent filed a Response to the Complaint, and on September 29, 2000, sent e-mail to the Center validating the Response filed previously, which was acknowledge on October 2, 2000.
On August 29, 2000, the Respondent sent e-mail to the Center informing that it was waiting the given allowed period to eventually present further information about the case at issue.
On September 12, 2000, the Center notified the Respondent under Paragraph 2(a) of the Rules together with copies of the Complaint.
On October 9, 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 October 12, 2000, the Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The Complainant is FLUMINENSE FOOTBALL CLUB, a Brazilian sporting association based in Rio de Janeiro, Brazil, founded on July 21, 1902, one of the greatest and most traditional clubs of Brazil.
The Complaint is based upon the service mark FLUMINENSE. The Complainant attached copies proving that owns the Brazilian Patent and Trademark Office Service Mark number 006332536 for FLUMINENSE, in local class 41. (41.20, 41.40, 41.60), granted on June 10, 1976, for amusement, entertainment and auxiliary services, services related to the organization of fairs, exhibitions, congresses, shows, sporting and cultural events, and non-profit sporting, recreational, social and cultural services.
The Complainant has used its registered mark FLUMINENSE ("the FLUMINENSE mark"), in Brazil, to identify its sporting activities, as shown in copies, attached to the Complaint, of several articles published in one of the most important Brazilian periodicals.
5. Parties' Contentions
Complainant contends that:
(1) The domain name <fluminense.com> is identical, and therefore confusingly similar to Complainant’s FLUMINENSE mark, because:
Being the Complainant the title holder of the mark "FLUMINENSE", registered in Brazil, in connection to sporting events and non-profit soorting services, and beeing "FLUMINENSE" the relevant part of the disputed domain name, it is incontrovertible that the domain name at issue is identical to Complainant’s mark.
(2) Respondent has no rights or legitimate interests in respect of the <fluminense.com> domain name, because:
(a) The only entity which has legitimate rights over the expression "FLUMINENSE" is the Complainant, specially when such signal is used in connection to football or any other sport.
(b) The Respondent has never used such expression to identify itself and its services.
(c) The Respondent does not operate a business or other organization known as "FLUMINENSE".
(d) The Respondent does not own any registration for mark "FLUMINENSE".
(e) The Respondent has not any kind of relationship with the Complainant and has not been authorized to use "FLUMINENSE" mark or any domain name incorporated by such mark.
(f) Due to the Complainant nationwide renown in Brazil, the expression "FLUMINENSE" could not be legitimately used by other entity in connection to football or any other sport, unless if such entity is seeking to create an impression of association with the Complainant.
(3) The <fluminense.com> domain name has been registered and is being used in bad faith. To prove this bad faith, the Complainant presents the following arguments.
Although the Respondent is a company with headquarters at Florida, United States, its legal representatives are all Brazilians citizens. Considering the fact that a Brazilian individual certainly knows the Complainant and its nationwide renown in the sporting field, the Complainant concludes that the identity between the domain name in issue and the name of the Complainant is not a coincidence.
The Complainant attaches printouts of the database searches of other domain names registered by the Respondent, listing the names <vascodagama.com>, <mengo.com>, <saopaulo.com>, <inter-rs.com>, <guarani.com> and < atletico-mg.com>.
The Complainant also informs that these domain names are identical or virtually identical to the name of other famous Brazilian football teams, (Club de Regatas Vasco da Gama, Clube de Regatas Flamengo, São Paulo Futebol Clube, Sport Club Internacional, Guarani Futebol Clube and Clube Atlйtico Mineiro).
The Complainant says that it is clear that the Respondent is engaged in registering without any kind of authorization, on its behalf, the name of several Brazilian football teams, and that this evidence clearly proves that the disputed domain name and the above domain names have been registered in bad-faith.
The Complainant also affirms that by registering the names of several Brazilian football teams as domain names, the Respondent has clearly planned a form to take advantage from the renown of the football teams before the Brazilian population and consequently, increase its profits.
The informed domain names are all redirected to a site at address <www.futeboltotal.com>, (meaning "Total Football"), a site written in Portuguese, providing everything about football and related subjects, such as news of national and international football teams, current situation of all football championships, match results, teams history, idols, stadiums, supporters, female football, Brazilian football squad.
This domain name <www.futeboltotal.com> also belongs to the Respondent as proved by printouts of the "Whois" database search attached to the Complaint.
In this site its possible to get a personalized e-mail address, using one of the above mentioned domain names, sold by a yearly amount of US$ 14.95.
The Complainant proves the above by attaching copies of a sequence of pages showing this registering process.
The Complainant concludes that it is incontestable that the Respondent has been using the disputed domain name to take advantage from the use of the Complainant’s famous name and mark before the Brazilian Internet users, and in addition to the dilution caused by the unauthorized use of the Complainant’s mark, the Respondent is trickily diverting the FLUMINENSE’s fans to its web site and providing a service of e-mails formed by referred mark.
The Complainant also argues that the Internet users, by keying the address <fluminense.com> and being redirected to the site at address <futeboltotal.com>, shall believe that the services in that site are provided in association with the Complainant. Thus, the Respondent is attempting to attract Internet users to its Web Site, for commercial gain, by creating confusion with the Complainant’s mark.
Finally, the Complainant draws the Panel’s attention to the decisions rendered in the administrative proceedings raised by Nabisco Brands Company against The Patron Group, Inc. (Case n° D2000-0032), and Bennett Coleman & Co. Ltd. against Long Distance Telephone Company (Cases n° D2000-0014 and 2000-0015). These decisions, according to the Complainant, stress the arguments presented to demonstrate the Respondent’s register and use of the domain names in bad-faith.
On August 14, 2000, the Respondent filed a Response to the Complaint. In this Response it informs:
(1) that it was authorized by the responsible for the "official site" of the Complainant, which was on line from 1996 to 1998.
(2) that on 1995, the Complainant, represented by its President, Josй Gil Carneiro de Mendonça, and the Brazilian firm CENTRO DA CONSTRUÇÃO INFORMAÇÃO E PROCESSAMENTO LTDA. signed a contract, named "ACORDO DE ESTIPULAÇÃO DE DIREITOS E OBRIGAÇÕES", where the Complainant authorized that firm to create its official web site. The Respondent enclosed copy of this contract.
(3) that CENTRO DA CONSTRUÇÃO was one of the firsts and most successful Brazilian firms whose specialty is web pages construction and that is why it was responsible for the official web sites from almost every big soccer teams existing in Brazil, since it signed contracts with each of them, just like the one signed by the Complainant.
(4) that according to the contract, CENTRO DA CONSTRUÇÃO would invest its own money for all the expenses of the creation of the web site: installation, maintenance and marketing — and, of course, the domain name registration.
(5) that to simplify the registration and the protection of the domain name subject of this Complaint, CENTRO DA CONSTRUÇÃO licensed the Respondent to do it, in its own name, transferring, also, to the Respondent, the responsibility of protecting the domain name worldwide.
(6) that It’s undeniable that the Complainant was always aware of the registration of the domain name, because during the 2 (two) years that the official web site prepared by CENTRO DA CONSTRUÇÃO was on line, the Complainant highlighted it and also the web address <www.fluminense.com>, even knowing that the domain name belonged to a third part.
(7) that through the referred official web site, the club fans could not only buy "official" products related to the club but also membership of the Complainant, and this happened several times, with the agreement and the support of the Complainant, of course.
(8) that after 2 (two) years, the Complainant decided to create a new "official web site", ending with ".com.br" — which is much more popular in Brazil. That web site is on line, in the web address <www.fluminense.com.br>.
(9) that the explained above proves that the domain name <fluminense.com> was registered in good faith, and the Complainant was aware of it and accepted it for a long time, with full agreement.
(10) that the Complainant can not even allege that CENTRO DA CONSTRUÇÃO should have transferred the domain name back to them, after the end of the contract, since that obligation was not foreseen in the contract between them.
(11) that CENTRO DA CONSTRUÇÃO owned the old "official web site" and the referred contract did not oblige them to transfer the domain name to the Complainant.
(12) that after the end of the contract, the Complainant did not even try to get the domain name back. It just created a new "official web site" in a completely different web address.
(13) that if there were any rights for the Complainant to get the domain name back, it would, of course, have at least notified the Respondent and/or CENTRO DA CONSTRUÇÃO.
(14) that the Respondent had the right to register the domain name <fluminense.com> and registered it, legitimately, and also legitimately uses it, because of the contract signed by the Complainant, that gave CENTRO DA CONSTRUÇÃO rights in respect of the domain name.
(15) that the Complainant can not affirm that the Respondent has no any kind of relationship with the Complainant and has not been authorized to use "FLUMINENSE" mark or any domain name incorporated by such mark.
(16) that there was good faith upon registration, and also in the use of the domain name which was dully authorized by its rightful owner.
(17) that the actual use of the domain name is legitimate, because it was authorized by the owner of the right of registering in — CENTRO DA CONTRUÇÃO. The Complainant was aware of such registration, agreed to it and the use does not cause any kind of damage to the Complainant.
At last the Respondent says that the Complainant knows that the individuals mentioned in the Complaint are responsible for the "official web sites" from the most important soccer clubs in Brazil, including, until recently, Fluminense, who had as "official web site" the site at address <fluminense.com> having the Complainant agreed with such registration done by a third person.
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 particle "com" is an attribute of the gTLD, common to all the domain names under this TLD, it is beyond question that the servicemark FLUMINENSE is identical to the domain name <fluminense.com>.
Therefore, the requirement of Paragraph 4.a.(i) is fulfilled.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name"
In order to prevail on its claim of abusive domain name registration under the Policy, Complainant must also establish that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, para. 4(a)(ii)). The Policy expressly enumerates several ways in which a Respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c)).
The Respondent affirmed in its Response that it has used the domain name at issue since the end of 1995, when it was created, to be the address of the "official web site" of the Complainant.
The Complainant having received a copy of this Response did not contest this declaration, and private investigations made by this Panelist, confirmed that this statement is true.
This fact could lead to the conclusion that the circumstance listed above under alternative (i) is met. However, one must consider that the domain name was registered and used because of the obligations imposed by the contract of service signed between the Complainant and the entity CENTRO DA CONSTRUÇÃO to design and run the "official FLUMINENSE web site".
In addition, the registration of the domain name was done by the Respondent authorized by CENTRO DA CONSTRUÇÃO, which was not the owner of the mark FLUMINENSE. CENTRO DA CONSTRUÇÃO had just been contracted to design and run a web site for the Complainant. The fact that the Complainant agreed with this strange situation for years, appears to reflect no more than lack of knowledge from the Complainant about the rules and procedures involved with the structure of the Internet.
In consequence, the circumstance listed above under alternative (i) is not fulfilled
As to the other alternatives, we note that:
(a) "FLUMINENSE" is not part of the name of the individual registering the <fluminense.com> domain name.
(b) The Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(c) The Respondent does not own any registration for mark "FLUMINENSE".
Considering the above, this Panelist concludes that the Respondent failed proving to have any legitimate rights or interest in the domain name <fluminense.com>.
Therefore, the requirement of Paragraph 4(a)(ii) is fulfilled.
"4.a.(iii) Respondent Registration and Use of the Domain Name in Bad Faith"
As stated in the policy, for the purposes of Paragraph 4(a)(iii), the following circumstance, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location." (Policy, para. 4(b)(iv))
This circumstance is found to be satisfied if we analyze the likelihood of confusion that can be created by the system of personalized e-mail offered at the Respondent’s site.
This Panelist ran the process of purchase a personalized e-mail up to the point where it was asked to pay for this service, when it aborted the sequence. This made clear that it was possible to purchase and register, for instance, the e-mail "email@example.com", with which the owner could send bulk messages to the general public that could be understood as coming from the President of the club.
In addition, by redirecting the address <fluminense.com> to the address of the site of "futeboltotal.com" the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site.
Because of all these facts, this Panelist arrives to the conclusion that the Respondent has registered and used the <fluminense.com> domain name 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 name <fluminense.com>, and Network Solutions’5.0 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 its 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 the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") can be found.
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 name <fluminense.com> be transferred to the Complainant.
Josй Pio Tamassia Santos
Dated: October 24, 2000