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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prodome Química e Farmacêutica Ltda. v. José Roberto Valente Wagner
Case No. D2002-0298
1. The Parties
Complainant, Prodome Química e Farmacêutica Ltda., is a Brazilian corporation located in São Paulo, SP, Brazil. Its principal place of business is at Rua 13 de Maio, 1661, CEP 13100, Campinas, SP, Brazil. Paulo Rocha of Demarest e Almeida Advogados, São Paulo, SP, Brazil represents the Complainant.
Respondent, José Roberto Valente Wagner, Brazilian citizen, lawyer, with an address at Rua Canuri, 72, CEP 04061-030, São Paulo, SP, Brazil.
2. The Domain Name and Registrar
The domain name at issue is <prodome.com> ("the Domain Name").
The registrar is DomainDiscover dba TierraNet Inc. ("the Registrar"), with head offices at 9573 Chesapeake Drive 1st Floor, San Diego, CA 92123, United States of America.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on March 27, 2002, by e-mail and the hardcopy was received on April 4, 2002.
An Acknowledgement of Receipt of Complaint was sent to Complainant and Respondent by e-mail by the Center on April 3, 2002.
On April 4, 2002, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the Center transmitted to the Registrar a Request for Registrar Verification. The Registrar responded by email dated April 10, 2002, stating to that date, it had not received a copy of the Complaint. The Registrar confirmed that the domain name <prodome.com> was registered through its company, that its records indicated that the Domain Name was active, and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") was currently applicable to the Domain Name. The Registrar also disclosed that the current registrant of the Domain Name was the Respondent.
Initial compliance review of the Complaint disclosed deficiencies that were drawn to the attention of the Complainant on April 11, 2002.
A revised Complaint submitted by Complainant was received by e-mail on April 16, 2002 and in hardcopy on April 19, 2002.
The Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on April 22, 2002, setting the response due date as May 12, 2002. Notification of Respondent Default was sent on May 16, 2002. Respondent has submitted no Response.
On May 30, 2002 this panelist was appointed by the Center, having filed an executed Statement of Acceptance and Declaration of Impartiality. On the same date, the parties were notified, by e-mail, of the appointment. A decision was to be delivered to the Center on or before June 13, 2002. The panelist has independently determined, and agrees with the assessment of the Center, that the Complaint meets the formal requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
Complainant was incorporated in 1982 in the field of manufacture and import of pharmaceutical products.
The Complainant extensively uses the expression PRODOME to identify, advertise, market and promote its products. The Complainant has registered the first trademark PRODOME with the Brazilian Patent and Trademark Office – INPI on June 19, 1990, under National Classification in Class 01.90. The products covered by this registered mark are defined as "substances and chemical products for industrial and scientific use".
The Complainant used the expression PRODOME as domain name <prodome.com.br> registered with the Brazilian Domain Name Registrar on June 6, 1998.
Respondent registered the Domain Name on October 26, 2001. Respondent is a partner of Graça Wagner Ltda., previously known as Graça Wagner Advogados, a law firm located in São Paulo, Brazil, and former legal counsel of Complainant.
The Domain Name is directed to a single web page, which contains the information that the "domain is already reserved" referring the user to Buydomains.com’s homepage.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to a mark in which Complainant has rights; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name was registered and is used in bad faith.
The Respondent is in default since it has not submitted a Response nor any other arguments. As provided by paragraph 14 of the Rules, this Panel may draw such inferences from Respondent’s default, as it considers appropriate.
As a domain name registrant, Respondent has a contractual obligation to submit to these proceedings. Paragraph 4 of the Policy, which is incorporated into the Registration Agreement, specifically states that the Registrant is "required to submit to a mandatory administrative proceeding" in the event of an applicable dispute under the Policy. Under these circumstances, it is appropriate to presume the facts taken from the Complaint as true for these proceedings.
6. Discussion and Findings
The Complainant was able to shown the requirements specified under paragraph 4(a) of the Policy:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
Based on the facts presented by Complainant, I find that the Domain Name is identical to a mark in which Complainant has rights. Complainant has shown rights in the mark PRODOME through use and registration with the Brazilian Patent and Trademark Office - INPI.
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Respondent is not conducting and has not shown any intention to conduct any legitimate commercial or non-commercial business under the Domain Name.
The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name. The Respondent is not actually using the Domain Name and is exceeding the scope of permissible fair use.
Respondent was former legal counsel of Complainant and was aware of Complainant’s trademark and interest in the expression PRODOME. The registration of the Domain Name by Respondent was to impede Complainant’s registration of the domain name. Respondent’s registration of the Domain Name is preventing the bona fide interest of Complainant of reflecting its mark in a corresponding domain name in the gTLD ".com".
For the reasons stated above and pursuant to paragraph 4(i) of the Policy, the Complainant’s request for transfer of the domain name <prodome.com> is granted.
Dated: June 12, 2002