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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Calçados Azalйia S/A v. Link Commercial Corp.

Case No. D2000-1745

 

1. The Parties

The Complainant is Calçados Azaleia S/A, Rua: Doutor Legendre, 34, Parobй – RS, 95630-000 Brazil.

The Respondent is Link Commercial Corp., Avenida Monrose no. 21, Apartado Postal 4852, Nassau, Bahamas.

 

2. The Domain Name and Registrar

The Domain Name at issue in this complaint is <azaleia.com> and the Registrar is Network Solutions, Inc.

 

3. Procedural History

Complaint was received by WIPO by e-mail on December 14, 2000 and on

January 3, 2001, in hardcopy.

On December 27, 2000, Network Solutions has confirmed that <azaleia.com> is registered in the Respondent’s name and that it is in "Active" status.

On January 5, 2001, the Center has verified that the Complaint met the formal requirements and sent the Respondent a notification under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") together with copies of the Complaint.

On January 21, 2001, a response was received by e-mail from Mr. Roberto Fernando Eimer Farkas as the administrative contact of the Respondent.

A single-member Panel (the "Panel") was properly appointed to examine and decide the dispute.

On February 6, 2001 the hardcopy of the whole process was received by the Panel.

 

4. Factual Background

Complainant, Calçados Azalйia S/A, is the largest Brazilian manufacturer in the shoes market and exports its shoes to many other countries.

Trademark "AZALEIA" is already registered in the name of Complainant at the Brazilian Patent and Trademark Office under the special condition of well-known mark and in many other countries such as: USA, Canada, Portugal, Paraguay, Venezuela, Yugoslavia, Austria, China, Costa Rica, Spain, Mexico, Nicaragua, Honduras and Colombia. The first registration was granted on January 25, 1976.

Disputed Domain Name <azaleia.com> was registered in the name of the Respondent on December 23, 1996 at Network Solutions - Registrar.

Respondent has no active web site under www.azaleia.com address.

 

5. Parties’ Contentions

A. Complainant

- Trademark "AZALEIA" is registered in its name in Brazil and in more than 13 countries.

- Trademark "AZALEIA" has been declared as a well-known mark by the Brazilian Patent and Trademark Office.

- Respondent has infringed Complainant’s exclusive rights over trademark "AZALEIA" in Brazil and abroad, including the U.S.A..

- Respondent has registered <azaleia.com> for the purpose of selling it.

- Domain Name <azaleia.com> is confusingly similar to the "AZALEIA" trademark owned by Complainant.

- The use of Domain Name <azaleia.com> may cause a likelihood of confusion for the consumer.

- Respondent has no legitimacy to use or register Domain Name <azaleia.com>.

- Respondent is not using Domain Name <azaleia.com> for an active web site.

- Respondent has registered Domain Name <azaleia.com> in bad faith.

- Complainant requested Panel to order the assignment of the Domain Name <azaleia.com>.

B. Respondent

Mr. Roberto Eimer, administrative contact of Domain Name <azaleia.com>, has sent a response assuming the defense of Respondent with the following contents:

- Domain Name <azaleia.com> was registered on behalf of a flower shop.

- AZALEIA is the name of a flower in Portuguese (azalea, in English).

- AZALEIA is a word of common use.

 

6. Discussion and Findings

In the administrative proceeding each of the following provisions of Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") must be proved by the Complainant:

(i) the Domain Name registered by the Respondent 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 interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and used in bad faith."

Identical or Confusingly Similar Domain Name:

The Domain Name at issue is <azaleia.com>. Complainant is the title holder of the registered trademark "AZALEIA", which is identical to the relevant part of the Domain Name.

Taking the above into consideration, it is clear that the requirement of Paragraph 4 (a) (i) of the Policy has been met.

Respondent’s Rights or Legitimate Interests in the Domain Name:

To determine whether or not the Respondent has rights or legitimate interests in respect of the Domain Name, the Panel must take in account some factual elements brought by both parties.

The Complainant basically argues that the Respondent has no rights or legitimate interests on the Domain Name because: i) the Domain Name has not been used in connection with a bona fide offering of goods and services. Respondent has actually not taken any positive action related to the domain; ii) Respondent is not identified and does not operate a business under "AZALEIA" trademark and iii) Respondent does not have a registration for trademark "AZALEIA".

In this connection, it is important to mention that the Policy, in section 4 (c), provides some circumstances from which the Respondent may demonstrate its rights or legitimate interests in the Domain Name . They are:

"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate non-commercial 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."

The Respondent therefore argued in its defense that the disputed Domain Name has been registered on behalf of a flower shop. Such argument could possibly produce effect if the Respondent had proven that it operates or is somehow related to a flower shop or any other business distinguished by such brand.

Nevertheless, considering that the Respondent has failed to prove that, the Panel sees no option other than concluding that the Respondent has neither rights nor legitimate interests in the disputed Domain Name . The requirement of Paragraph 4 (a) (ii) of the ‘Policy’ therefore is fully met.

Domain Name Registered and Used in Bad Faith:

To achieve the conclusion on whether or not the disputed Domain Name has been registered and is being used in bad faith, it is extremely important to deeply analyze the parties’ contentions as well as each detail of the captioned dispute.

The Complainant has successfully proven the renown of "AZALEIA" trademark as well as the substantial goodwill developed on such brand. The documents attached to the records prove that said mark has been declared well-known by the Brazilian Patent and Trademark Office (BPTO) and that "AZALEIA" trademark is inevitably associated with the Complainant and its products.

With regard to the present requirement itself, the Complainant has the burden to bring evidences to the Panel in order to show that the Respondent has not acted in good faith in registering the Domain Name. In this connection, it has been argued by the Complainant that the Respondent has registered the disputed Domain Name for the purpose of selling or otherwise transferring the domain registration to the Complainant for a valuable sum.

The Panel has taken knowledge, through independent search of the Whois data base, of other Domain Names currently owned by the Respondent with the Registrar. There are no less than 50 (fifty) registrations in the name of the Respondent. Some of them have considerably drawn the Panel’s attention, as per the following list:

- <guguliberato.com> - Gugu Liberato is one of the most famous television presenters in Brazil. His main program usually achieves the highest audience levels on Sundays, with millions of viewers. This Domain Name was registered on December 12, 1996;

- <ladydi.com> - needless to say that the significant part of this Domain Name corresponds to the nick name of Princess Diana, former United Kingdom princess dead in a car crash some years ago. This Domain Name was registered on December 12, 1996;

- <mercedesdealers.com> - such Domain Name actually corresponds to the agglutination of the word "MERCEDES", the famous German car manufacturer, with the word "DEALERS", which has a generic meaning in the English language. This Domain Name was registered on August 11, 1997;

- <caras.com> - "CARAS" is the name of a famous Brazilian magazine basically dedicated to the life of high society people. This Domain Name was registered on August 22, 1997;

- <santacatarina.com> - Santa Catarina is the name of a state located in the south of Brazil. This Domain Name was registered on December 12, 1996;

- <breadeaux.com>, <breadeauxpisa.com> - "BREADEAUX" is the name of a famous pizza restaurant network. These domains were registered on August 28, 1997;

- <mauriciomacri.com> - Mauricio Macri is the name of the president of Boca Juniors, one of the Argentinean most popular football teams. This Domain Name was registered on December 9, 1996.

The particulars of the above mentioned domain names readily suggest more than a coincidence in Respondent’s selection of them. In fact, the registration of several domain names which are absolutely identical to the name of famous people, companies’ trademarks and a Brazilian State constitutes a strong presumption that Respondent intends to obtain profit from the commercialization of those domain names.

Another fact which must be emphasized is the short period taken by the Respondent to register the above domain names. They have been registered in only eight months (from December to August). Some of them have been registered on the same day. It is extremely unlikely that someone in good faith would register, on its behalf, in only eight months, such a large number of domain names corresponding to third parties’ names and trademarks.

These circumstances lead the Panel to conclude that Respondent has registered those domain names for the purpose of selling them to their legitimate owners. Such behavior, pursuant to the provisions of section 4 (b) (i) of the Policy, constitutes an evidence of bad faith.

Notwithstanding the above, the captioned dispute should also be analyzed from the perspective of the Respondent’s contentions. As previously mentioned, its defense is basically grounded on the facts that "AZALEIA" is the name of a flower in Portuguese and therefore the Domain Name has been registered on behalf of a flower shop. The Respondent’s arguments are indeed based on a supposed fair use of the word "AZALEIA".

This thesis however is dismissed by some evidences. The Domain Name registration was effected four years ago and, up to the current date, no positive action has been taken in connection with the domain.

The administrative contact of the Respondent, Mr. Roberto Eimer, has recognized his knowledge of the Brazilian market by affirming that he was travelling in Brazil. It is therefore undeniable that the Respondent perfectly knows that "AZALEIA" is a well known trademark, used and registered by a Brazilian company.

"AZALEIA" is a Portuguese word which could be identified only by a native Portuguese speaker. Although there is no Brazilian party in the particulars of the <azaleia.com> registration, it is clear that the Domain Name has been registered to be used in the Brazilian market.

After all, there is no reason for a company located in Bahamas, whose language is English, having an administrative contact located in Uruguay, which native language is Spanish, register a domain name in Portuguese, specially considering that both in English and in Spanish the name of the flower is spelled "AZALEA" (without "i").

Thus, all the circumstances lead the Panel to conclude that the Respondent has a strong intimacy with Brazil and, consequently, with its market. As mentioned above, apart from <azaleia.com>, the Respondent has registered <guguliberato.com>, <santacatarina.com> and <caras.com>, Portuguese names that are well known in Brazil.

The argument that the Domain Name was registered on behalf of a flower shop should not be accepted since the Respondent has not proven any relationship with a flower shop nor with any other business possibly distinguished by trademark "AZALEIA".

The panel verified that Respondent submitted pictures and information about third parties’ use of the name "AZALEIA", such as a hotel and a residential building. Nevertheless, this information is absolutely irrelevant inasmuch as such parties have no relation with the Respondent and its activities.

Therefore, the Respondent has failed to show that it has registered the disputed Domain Name in good faith. On the contrary, for all the reasons set out herein, the Panel finds that Respondent has adopted the Domain Name <azaleia.com> to take advantage from the renown achieved by the Complainant, in a clear act of bad faith.

As a final remark, notwithstanding the fact that Respondent has not taken any positive action in connection with the Domain Name , the Panel emphasizes that several decisions previously rendered under the ‘Policy’ considered that even passive holding may be regarded as "use in bad faith".

In light of the foregoing , the Panel concludes that the requirement of Paragraph 4 (a) (iii) of the Policy has been fully met, thus meaning that the disputed Domain Name has been registered and is being used in bad faith.

 

7. Decision

For all the above reasons, the Panel decides that the Domain Name registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interests in respect of this Domain Name , and that the Domain Name at issue has been registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the Domain Name <azaleia.com> be transferred to Complainant.

 

 

Peter Dirk Siemsen
Sole Panelist

Dated: March 20, 2001