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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ibope Instituto Brasileiro de Opinião Pъblica e Estatнstica Ltda. v. Domнnios Brasil
Case No. D2000-1034
1. The Parties
The Complainant is IBOPE – INSTITUTO BRASILEIRO DE OPINIÃO PUBLICA E ESTATÍSTICA, a company based in Rio de Janeiro, Brazil, with its headquarters located at Rua Uruguaiana no. 174 – 10o andar, Centro, Rio de Janeiro, Brazil, Zip Code 20050-092 (the "Complainant>"). Respondent is DOMÍNIOS BRASIL, with its place of business at the city of São Josй dos Campos, São Paulo, Brazil, Zip Code 12230-990, Postal Address 1635, (the "Respondent").
2. The Domain Name and Registrar
The domain name at issue is <ibope.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 IBOPE on August 12, 2000, by email and on August 18, 2000, in hardcopy, the receipt being acknowledged by the Center on August 18, 2000.
The Complainant made the required fee payment, as informed in item XI. – Payment – of the Complaint.
On August 21, 2000, the Center sentto the REGISTRAR, a requestfor verification of registration data that was answered in August 22, 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 29, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules by running the Formal Requirements Compliance Checklist.
On August 29, 2000, the Center notified the Respondent of the Complaint under Paragraph 2(a) of the Rules.
On September 18, 2000, the Respondent sent an e-mail communication to the Center.
On October 6, 2000, the Center appointed Mr. Josй Pio Tamassia Santos as the sole panelist of the Administrative Proceeding (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 9, 2000, the Panelist received, via courier, a complete copy of the Complaint and the corresponding enclosures.
4. Factual Background
The Complainant is IBOPE, a company based in Rio de Janeiro, Brazil, the oldest and largest market and opinion research institute in Latin America.
The Complaint is based upon the service mark IBOPE. The Complainant attached copies proving that owns the Brazilian Servicemark Registration number 813569125 for IBOPE, in class 40.36, granted on January 3, 1989, for market and opinion research services. The Brazilian Patent and Trademark Office has also concluded that the mark IBOPE achieved a well known status and could be considered a "notorious mark" and, because of this condition, protected under the provisions of the Brazilian Industrial Property Law in all classes of goods and services.
The Complainant has used its registered mark IBOPE ("the IBOPE mark"), in Brazil and other countries, to identify its market and opinion research services.
The Complainant attached registration certificates of its mark IBOPE, granted in USA, European Union, Portugal, Bolivia, Mexico, Venezuela, Paraguay, Chile, Peru, Uruguay, Ecuador, Colombia, Guatemala, Dominican Republic, Panama, Costa Rica and El Salvador.
The Complainant informs that it utilizes its IBOPE mark on its Brazilian web site, located at <ibope.com.br>, attaching copies of some pages to the Complaint.
In the Complaint, the Complainant also attached a copy of a previous warning letter sent to the Respondent, requesting the assignment of the disputed domain name to the Complainant.
5. Parties' Contentions
Complainant contends that:
(1) The domain name <ibope.net> is identical, and therefore confusingly similar to Complainant’s IBOPE mark, because:
Being the Complainant the title holder of mark "IBOPE", registered in Brazil as well as in several countries throughout the world, in connection to market and opinion research services, and being "ibope" 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 <ibope.net> domain name, because:
(a) The only entity which has legitimate rights over the expression "IBOPE" is the Complainant.
(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 commonly known as "IBOPE".
(d) The Respondent does not own any registration for mark "IBOPE".
(e) The Respondent does not have any kind of relationship with the Complainant and has not been authorized to use "IBOPE" mark or any domain name incorporated by such mark.
(f) The Respondent is not using the disputed domain name. It has only registered domain name "ibope.net" before the Registrar and up to the current date has not used it for any legitimate purposes.
(3) The <ibope.net> domain name has been registered and is being used in bad faith, because:
(a) The Respondent does not conduct any legitimate commercial or noncommercial business under the IBOPE mark.
(b) The Respondent has registered the disputed domain name in order to obtain advantages from the substantial goodwill developed in the IBOPE mark.
(c) By registering the <ibope.net> domain name, Respondent is diverting consumers away from the official site of Complainant, and as the site under address "www.ibope.net" is ‘Under construction’, the consumers may think that the Complainant does not have a web site, thus, causing damages to the Complainant.
(d) If the Respondent starts to use this address in connection to an active web site, the Respondent would be using the disputed domain name to attract Internet users to its web site and would give the impression that the Complainant controls or has some kind of relationship with such web site.
(e) If the Respondent sells the disputed domain name to a Complainant’s competitor or any other company interested in obtaining advantage from the use of a well-known mark, this use of the disputed domain name could disrupt the Complainant’s business and cause a substantial likelihood of confusion among the people who are trying to reach the Complainant’s business over the Internet.
(4) Respondent’s use of the disputed domain name is diluting and weakening the distinctiveness of IBOPE mark before the market and consumers, because the Internet users, by keying the address "www.ibope.net" and facing only the warning "Under construction", shall have the impression that the Complainant, despite of its organization and high-technology methods, is not interested in advertising itself and its services in the Internet.
The Complainant also argues that due to the notable renown of the IBOPE mark, it is extremely unlikely that a person in good faith would register the domain name "ibope.net", and that it is evident that the Respondent knew the Complainant and consequently was acquainted of its rights over the expression "IBOPE".
Finally, the Complainant draws the Panel’s attention to the decision rendered in the administrative proceeding raised by Telstra Corporation Limited v. Nuclear Marshmallows (Case D2000-0003), where the Panel considered to be strong evidences of bad-faith the registration of a well-known mark as well as the lack of any positive action in connection with the domain name.
On September 18, 2000, the Respondent, through the representative of Netdados S/C Ltda, sent an e-mail to the Center, declaring that:
(a) Their organization is very small having neither power nor money to join in a judicial dispute with the Complainant.
(b) In Brazil, the name "ibope" has the meaning of "fame" or "success condition" and is like slang.
(c) That when the domain name was registered, they did not want to get advantages but just create a site of varieties and entertainment without relation to the Complainant’s company or its kind of products and services.
The Respondent also declares in this e-mail to be very open to a possible conciliation in order to resolve the problem.
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 "net" is an attribute of the gTLD, common to all the domain names under this TLD, it is beyond question that the trademark IBOPE is identical to the domain name "ibope.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"
"IBOPE" is not part of the name of the individual registering the <ibope.net> domain name.
The Respondent argues that the word IBOPE is a popular word meaning "fame" and "success condition". In fact, as the Complainant also informs, the Brazilian dictionary Aurйlio shows this entry as having the meanings of "prestige" and "audience index" besides being the acronym of Instituto Brasileiro de Opinião Pъblica e Estatнstica.
This meaning of "prestige", however, only exists because of the work developed by the Complainant that attributes index rates to organizations and people according to the way they act. High IBOPE indexes mean a prestigious work.
A visit to the address "www.ibope.net" presented an empty white page with the words "em construção" – ‘under construction’ in Portuguese –, in the upper left corner of the browser, thus the Respondent’s argument that the domain name was registered ‘to create a site of varieties and entertainment’ could not be confirmed.
the facts discussed above;
that the name IBOPE is in Brazil a well known acronym constructed with the first letters of the Complainant’s name;
that it is a registered and notorious mark belonging to the Complainant;
and that no use of the domain name nor connection between this name and the Respondent could be found;
this Panelist concludes that the Respondent does not have any legitimate rights or interest in the domain name <ibope.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"
In its response, the Respondent could not prove to be making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers from the Complainant’s official web site or to tarnish the service mark at issue.
On the contrary, the argument presented in the response sent to the Center, informs that the domain name was selected to take advantage of the popular meaning of the name IBOPE achieved through many years of professional expertise and work of the Complainant.
An investigation worked out by this panelist about other domain names registered by the Respondent, could not succeed because the name "Domнnios Brasil" is written using an extended character of the ASCII set – the character (н).
However, another investigation found 34 domain names registered by Netdados S/C Ltda., an organization at the same postal address of the Respondent, and having the same Administrative and Billing Contact as the Administrative, Technical, Zone and Billing Contact of the Respondent. Among the registered domains, this panelist could find the domain names "roupanova.com" and "roupanova.net" which refers to a well-known Brazilian musical group.
This is an indication that the Respondent and/or individuals and/or organizations related to him, conducts a strategy of registering a large quantity of domain names, having at present, besides the domain name at issue, one of them belonging to a well known musical group and keeping most of them inactive for unknown future purposes.
Because of all these facts, this Panelist arrives to the conclusion that the Respondent has registered and is using the <ibope.net> domain name in 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 <ibope.net>, 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’s "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 –, states 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 service mark, that the Respondent has no rights or legitimate interest in the domain name, and that the Respondent registered and is using 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 <ibope.net> be transferred to the Complainant.
Josй Pio Tamassia Santos
Dated: October 17, 2000