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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Porto Editora, Lda v. Paul Luis
Case No. D2001-0214
1. The Parties
Complainant: Porto Editora, Lda, Rua da Restauracao, 365 4099-023 Porto, Portugal .
Respondent: Paul Luis, 64 Fordwich Cres, Toronto, Ontario, Canada.
2. The Domain Name and Registrar
Domain Name: "portoeditora.com" .
Registrar: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The Complainant e-mailed a complaint to the WIPO Arbitration and Mediation Center (the Center) on February 9, 2001 about the Respondent's domain name. The Center acknowledged the complaint on February 14, 2001. The Center received the Complainant's submission in hard copy on February 19, 2001. It complied with the ICANN Rules and Supplementary Rules and included the appropriate fee payment.
The Center sought verification of the disputed domain name from NSI on February 16, 2001. NSI's verification was received on February 21, 2001, confirming the Respondent holds the disputed domain name registration. The Center communicated the complaint to the Respondent on February 22, 2001, and sent copies to the Complainant, ICANN and Network Solutions Inc. The Center’s communication informed the Respondent of the administrative procedure and that the last day for a response was March 13, 2001. The consequences of failing to respond by the due date were set out in the communication.
The Respondent did not reply by the due date and the Center sent a Notification of Respondent Default on March 16, 2001.
The Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence to the Center on March 30, 2001, and was formally appointed on April 2, 2001.
The Panel has not received any additional submissions. The proceedings were conducted in English and the Panel's decision is scheduled to issue on April 16, 2001.
4. Factual Background
Porto Editora is a Portuguese limited company established on May 2, 1944 and has its head office in Porto. The company name has been registered on the Portuguese National Company Register and at the Porto Commercial Registry Office since June 23, 1944. Porto Editora is in the business of publishing, sales and distribution of school textbooks, works of literature and technical books, multimedia products (both educational software and games) as well as the provision of educational material via the Internet.
The Complainant's business has 40% share of the Portuguese market in school textbooks and 70% share of the Portuguese market in dictionaries. Porto Editora is a pioneer and leader in educational multimedia products, one of which has sold 120,000 copies. Also, it is an award winner with its activities on the Internet.
Until relatively recently the Complainant has been content to rely on Portugal's national laws to protect its reputation. However, its broader global market strategies in the 1990's lead it to obtain registration of its insignia (incorporating the words Porto Editora) on August 2, 1994. Trademark registration including the words Porto Editora was sought on February 18, 1999, and subsequently granted on August 16, 1999.
The Respondent registered the domain name "portoeditora.com" on August 8, 1999.
On July 24, 2000, the Respondent contacted the Complainant stating that he was the owner of the domain name and was giving the company the opportunity to purchase the domain name. The Respondent stated "I was going to use this domain name for a business I had in mind but due to time constraints I'll have to abandon this project. A friend of mine informed me that your company might be interested. I am open to all offers but I state that I am not in a hurry nor am I desperate in any way to sell this domain name".
The Complainant responded on July 26, 2000, stating that it was not interested in buying the domain name. The Respondent renewed the domain name on August 8, 2000, precipitating the Complainant to e-mail the Respondent on September 21, 2000, expressing surprise at the renewal, requesting the domain name be transferred and offering to compensate him for all the costs incurred since the original registration of the domain name. On the same day the Respondent rejected the offer and stated "I have reconsidered using my domain name for my originally intended purpose, and therefore will not be transferring or selling my domain name to you". He requested not to be contacted further.
5. Parties’ Contentions
The Complainant contends that:
The disputed domain name is identical to its trademark of Porto Editora.
The Respondent's registration of the domain name was not guided by any legitimate purpose, such as, the development of any commercial activity.
The Respondent's offer to sell the domain name implies a registration in bad faith.
The Respondent has no right to the domain name.
The Respondent registered the domain name for the sole purpose of forcing the Complainant to negotiate to acquire the domain name that corresponds to its trademark.
The Respondent has adopted a passive attitude regarding the web site of the disputed domain name by it not being used.
By registering the domain name, the Respondent is impeding the use on the Internet of the Complainant's trademark.
The Respondent failed to provide any response.
6. Discussion and Findings
As the Respondent has not submitted a response and there are no exceptional circumstances the Panel will decide the dispute based on the complaint in accordance with ICANN Policy Rule 5 (e).
In accordance with the ICANN Policy, the Complainant must prove that:
(i) the Respondent's domain name is identical or confusingly similar to a trademark 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 Respondent's domain name has been registered and is being used in bad faith.
The disputed domain name is portoeditora .com and the Panel finds that the relevant part is identical to the words Porto Editora in the Complainant's registered trademark.
By not responding to the complaint, in making a decision as to whether or not the Respondent has any interests or legitimate rights the Panel is entitled to rely on the information provided by the Complainant. The Complainant has stated that the words Porto and Editora have no meaning in English (or French). The domain name does not resolve to any web site containing legitimate non-commercial use or commercial activity by offering goods and services. There is no evidence that the Respondent is commonly known by the domain name. The Panel therefore concludes that there is no evidence to indicate the Respondent has any rights or legitimate interest in the disputed domain name.
For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in 4(b) of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
On July 24, 2000, the Respondent approached the Complainant offering the domain name for sale. Originally the Complainant stated that it was not interested in buying the disputed domain name but subsequently offered to compensate the Respondent "for all costs incurred since the original registration of the domain name". The Respondent rejected this offer, denied being a cybersquatter and stated that "I have reconsidered using my domain name for my originally intended purpose, and therefore will not be transferring or selling my domain name to you".
In the Panel's view the factors in this case supporting registration and use in bad faith are:
Given the distinctiveness of the Complainant's trademark, the fact that the words have no English (or French) meaning and the improbability of the Respondent coming up with the name independently there appears to be no explanation other than the registration was made in bad faith with the intent to attract business to his site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain name (see Nintendo of America Inc v. Pokemon WIPO Case No. D2000-1230 and Neuberger Berman Inc v. Alfred Jacobson WIPO Case No. D2000-0323).
While the Respondent has not used the domain name for any commercial or non-commercial purpose, he did in fact initiate the offer to sell the domain name to the Complainant. That act of offer can be considered use of the domain name. Many URDP decisions have held that inaction or the lack of any legitimate good faith use suggests bad faith (see World Wrestling Federation Entertainment Inc v. Michael Bosman WIPO Case No. D99-0001, Robert Ellenbogen v. Mike Pearson WIPO Case No. D2000- 0001, Interep National Radio Sales, Inc v. Internet Domain Names, Inc WIPO Case No. D2000-0174 and Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003).
Also, the lack of a response to this complaint infers that the Respondent could not provide any good faith use of the domain name.
In accordance with the Uniform Dispute Resolution Policy [paragraph 4(b)], the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is identical to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and used in bad faith. Accordingly, the Panel requires the Respondent to transfer the domain name to the Complainant.
Dated: April 9, 2001