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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gradiente Electronica S.A. v. Acaramba, Inc and Mr. Jose Gerstl
Case nє D2000-1062
1. The Parties
The Complainant is Gradiente Electronica, S.A., a corporation organized and existing under Brazilian Law, with principal place of business at Rua Dr. Fernandes Coelho, 64, 05423-911 São Paulo, Brazil. The Respondents are Acaramba, Inc., (att: Mr. Jose Gerstl) 1 Soldiers Field, #404 Boston, MA 02163 USA and Mr. Jose Gerstl, Bosque de Minas, 51-802, Huixquilucan, Estado de Mйxico, MX52783, Mexico.
2. The Domain names and Registrar
The domain names in issue here are:
The registrar in which the domain names are registered are:
<gradiente.com>. Network Solutions, Inc.
<gradiente-tech.com>. Network Solutions, Inc.
<gradiente.org>. Register.com, Inc.
<gradiente.net>. Register.com, Inc.
3. Procedural History
The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution
Policy approved by the Internet Corporation for Assigned Names and Numbers
("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for
Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on
October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the
The Complaint was received by the WIPO Arbitration and Mediation Centre (the "Centre") by email on August 15, 2000, and in hard copy by courier on August 18, 2000.
An Acknowledgement of Receipt of Complaint was sent from the Center to Complainant on August 18, 2000.
The Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondents on October 3, 2000.
The Respondents did not file a response, and a Notification of Respondent Default, dated October 25, 2000, was forwarded by The Center to Respondents.
The administrative Panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by The Center or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s decision was November 22, 2000.
4. Factual Background
Since Respondents have not filed a Response within the requisite period, the dispute shall be decided upon the allegations in the Complaint. (Rule 5(d); Rule 10(d); Rule 14(b)).
Complainant is one of the most outstanding companies in the consumer electronics business in Brazil and overseas for the audio, video, and video-games markets and services related to those segments. The company has also incorporated an affiliated entity in the United States named Gradiente Electronics, Inc, a Florida Corporation.
Complainant has registered and used trade names and trademarks consisting of the term "GRADIENTE" in various forms and combinations in Brazil and seventeen other countries.
Complainant is the registrant of domain names "gradiente.com.br","gradiente.com.mx". The domain name "gradiente.com.ar" is in the process of registration.
5. The Complaint
Complainant submits that the Respondents may be joined in a common complaint. Rule 3 (c) of the Rules provides that the complaint may relate to more than one domain name provided the domains names are registered by the same domain name holder.
Considering that Mr. Jose Gerstl (a) is the person responsible for and beneficiary entitled to the registration of the "gradiente.com" domain name, registered in the name of Acaramba, Inc.; (b) registered the "gradiente-tech.com", "gradiente.net", "gradiente.org" and "gradiente.ws" domain names on its own behalf, and having regard to the underlying objective of the Policy to provide a speedy and efficient dispute resolution process, the Panel considers it appropriate to look beyond the corporate veil of the Respondent Acaramba, Inc., and determine on the basis that the domain names are registered by the same domain name holder.
6. The Parties’ Contentions
A. The Complaint
(1) The domain names are identical and confusingly similar to the Complainant’s marks.
(2) The Respondents have no legitimate interest in the domains names as there is no relationship between the Respondents and Complainant that would give rise to any license, permission or other rights by which the Respondents could use any domain name incorporating the "GRADIENTE" trademark.
(3) The Respondents are using the domain names in bad faith as they have registered the domain names primarily for the purpose of selling the domain names or to misappropriate the goodwill associated with the Complainant’s trademark.
B. The Response
The Respondents were in default.
7. Discussion and findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, The Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Panel finds that
(i) The domain names "gradiente.com", "gradiente.net", "gradiente.org" and "gradiente.ws" are identical to Complainant’s trademarks "GRADIENTE";
(ii) The domain name "gradiente-tech.com" is confusingly similar to "GRADIENTE", considering that the term "tech" evokes the idea of technology, which is closely related to Complainant’s core business.
B. Rights or legitimate interest of the Respondent
The Respondents have not filed a Response and does not appear to have any rights or legitimate interest in the domain names. Moreover, the domain names subject to this Complaint are not being used in connection with a bona fide offering goods and services nor with fair use purposes. Despite the fact that the registration of the domain name "gradiente.com" was issued on November 02, 1998 , Respondents have not made any use of it, proving the lack of any commercial or fair use purposes other than a bad faith passive holding intention.
C. Bad faith
In correspondence dated April 4, 2000 Respondent alleged that an amount of USD 62.680 (sixty-two thousand, six hundred eighty dollars) would be due in order to refrain from using the domain name "gradiente.com".
The bad faith of Respondents was also verified in the course of discussions and correspondence exchanged with Complainant. The registrations of "gradiente.net", "gradiente.org", "gradiente.ws" and "gradiente-tech.com" occurred well after Complainant had given notice to Respondents of its prior rights, i.e, after the beginning of discussions regarding the transfer of "gradiente.com" back in March 15, 2000.
The unrebutted evidence supports a determination that the respondents registered the domain names for the purpose of transferring the domain names to Complainant for valuable consideration in excess "out-of-pocket" costs directly related to the domain names.
In the absence of a Response from the Respondents, there appears to be no explanation of the facts other than that the Respondents registered the Complainant’s trademark as a domain name with an intent to use the domain names to demand unwarrented profit in bad faith and that the Respondents has so used the domain names in question. The registration of five domain names containing the Complainant’s trademark also suggested a pattern of such conduct.
Finally, another indication of bad faith on the part of the Respondents is the fact that they have proceeded with other registrations for domain names corresponding to registered trademarks in the name of third parties. This situation has already been subject of a decision given in a previous dispute (Case nє D2000-0457 American Home Products Corporation v. Acaramba, Inc.) which ordered the transfer of the domain names "ativan.com", "lo-ovral.com" and "ovral-com" to the legitimate owner of these trademarks.
In the light of the foregoing, the panelist decides that the domain names are identical or confusingly similar to the Complainant’s trademark and that the Respondents have no rights or legitimate interest relating to the domain names which were registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(I) of the Policy, the domain names "gradiente.com", "gradiente.net", "gradiente.org", "gradiente.ws" and "gradiente-tech.com" shall be transferred to the Complainant.
Dated: November 21, 2000