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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Radio Globo SA v. Vanilla Limited

Case No. D2006-1557

 

1. The Parties

The Complainant is Radio Globo SA, of Rio de Janeiro, Brazil, represented by Montaury Pimenta, Machado & Lioce, Brazil.

The Respondent is Vanilla Limited, of Roy, Utah, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <globoradio.com> is registered with BulkRegister.com, registrar associated with eNom, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 8, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 11, 2006, eNom, Inc. registrar associated to BulkRegister.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2007. Even though someone from Respondent’s email address on December 8, 2006, sent an email claiming Respondent’s lack of intent to compete with Complainant, the Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on January 8, 2007.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on January 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Respondent registered the domain name <globoradio.com> on November 15, 1999.

Complainant is the owner of the following Brazilian trademark registrations and applications whose protection relates to radio broadcasting activities:

- RADIO GLOBO – LIGADA EM VOCК: (i) serial number 811.682.277 (filed on August 28, 1984), granted on April 8, 1986, in Brazilian Class 38.10.

- GLOBO FM: (i) serial number 200017764 (filed on October 9, 1998), granted on December 18, 2001, in International Class 38; (ii) serial number 200017772 (filed on October 9, 1998), granted on December 18, 2001, in International Class 41; and (iii) serial number 821124013 (filed on October 9, 1998), granted on December 18, 2001, in International Class 35.

- GLOBO NO AR: (i) serial number 200044761 (filed on June 17, 1999), granted on March 23, 2004, in International Class 35; (ii) serial number 200046322 (filed on June 17, 1999), granted on May 18, 2004, in International Class 35; (iii) serial number 821726838 (filed on June 17, 1999), granted on May 18, 2004, in International Class 41; and (iv) serial number 821726846 (filed on June 17, 1999), granted on March 23, 2004, in International Class 38.

- GLOBO BRASIL: (i) serial number 824233565 (filed on December 10, 2001), in International Class 35; (ii) serial number 824233573 (filed on December 10, 2001), in International Class 38; and (iii) serial number 824233581 (filed on December 10, 2001), in International Class 41.

- RADIO GLOBO: (i) serial number 828580154 (filed on July 24, 2006) in Brazilian Class 38; (ii) serial number 828580170 (filed on July 24, 2006) in Brazilian Class 41; (iii) serial number 828580260 (filed on July 24, 2006) in Brazilian Class 35; (iv) serial number 828580545 (filed on July 25, 2006) in Brazilian Class 38; (v) serial number 828580553 (filed on July 25, 2006) in Brazilian Class 35; and (vi) serial number 828580537 (filed on July 25, 2006) in Brazilian Class 41.

Moreover, the Brazilian company Radioclick Serviзos Interativos Ltda, an affiliate company of Rбdio Globo S.A., holds two Brazilian trademark applications:

- GLOBORADIO: (i) serial number 828674663 (filed on August 25, 2006) in international Class 38; and (ii) serial number 828674671 (filed on August 25, 2006) in Brazilian Class 35.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

- Rбdio Globo S.A. is one of the major companies engaged in the radio and entertainment business in Brazil. It was founded in 1944. Since then, it has been using the marks GLOBO FM, RБDIO GLOBO and GLOBO RБDIO to identify its radio services.

- Rбdio Globo S.A sent an email dated August 23, 2006 to Respondent claiming that Respondent’s registration and use of the domain name in dispute impinge on Complainant’s rights and calling upon Respondent to immediately cease all use of <globoradio.com> and to transfer all interest in the domain name to Complainant. Respondent did not answer this email.

- The domain name is identical or confusingly similar to Complainant’s trademarks.

- Complainant is the title holder of the trade name RADIO GLOBO S.A., since the company’s creation, on 1944.

- The disputed domain name is confusingly similar to Complainant’s trademarks as it incorporates both words, “Radio” and “Globo” of Complainant’s trademarks.

- The Respondent has no rights or legitimate interests in the domain name because:

(i) Respondent has no registration and/or application for GLOBO RADIO trademark in the United States of America, country of Respondent’s domicile.

(ii) Respondent has no registration and/or application for GLOBO RADIO trademark in Brazil, country where Complainant is domiciled.

(iii) Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the domain name <globoradio.com>.

(iv) Complainant’s trade and service marks are known in Brazil and have been used in commerce for more than 30 years.

(v) Respondent is not commonly known or identified by the name “Globo Radio”, and it does not offer any goods or services under such trademark.

(vi) Respondent does not make a legitimate use of the domain name, since the website under the disputed domain name clearly used Google’s AdSense pay-per-click system. Respondent’s use of the disputed domain name appears to be merely intended to earn money with the pay-per-click of user. Thus, it cannot be considered a bona fide offering of goods and services.

- The domain name was registered and is being used in bad faith. Respondent has a pattern of abusive domain name registration. Respondent has a history of purchasing domain name registrations that are misspellings of others’ websites or trademarks and redirecting the domain names to other commercial websites. The Respondent is in fact a well-known cyber squatter who has been brought before the National Arbitration Forum and WIPO Panels on at least 7 prior occasions.

- The contact information provided by Respondent to the Registrar is false and the attempts by Complainant’s counsel to contact Respondent using both the address and telephone number identified by the Registrar’s WHOIS information were fruitless.

- By way of an affiliate agreement with Google’s AdSense Domain Program, Respondent earns a portion of the revenue generated by “clicks” to the links provided by Google’s AdSense Domain Program. Respondent displays, at the web page located at “globoradio.com”, several links containing Complainant’s trademarks, including “Radio Globo Fm Rio”, “Rбdio Globo FM RJ”, “CBN SP”, “Globo Cidade” (which in English means “Globo City”), “Globo”, “Pensao Globo” (which in English means “Globo Motel”), “Globo Digital”, “Globo Online”, “Globo Estrada” (which in English means “Globo Road”), “Bom Dia Globo” (which in English means “Good Morning Globo” and is the name of a radio program broadcasted by Complainant). Once Internet users click on such links, they are redirected to a list of sponsored advertisements.

B. Respondent

Before commencement of this proceeding, on December 8, 2006, Respondent sent an email to Complainant stating that it was not interested in competing with Complainant’s services. No further communication was received from Respondent in this proceeding. Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements listed in Paragraph 4(a) of the the Policy have been met:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;

(ii) Respondent has no rights or legitimate interests in the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The Panel will analyze only the parties’ contentions that it considers material to decide this case.

A. Identical or Confusingly Similar

Complainant has proved that it is the owner of the trademark RADIO GLOBO – LIGADA EM VOCК (which in English means “Radio Globo – connected to you”) registered in Brazil in 1986 and that it has been intensively using the trademark RADIO GLOBO for many years.

This Panel considers that RADIO and GLOBO are the main and distinguishing elements in the registered trademark RADIO GLOBO – LIGADA EM VOCЙ. Therefore, the Panel finds that RADIO GLOBO – LIGADA EM VOCE is confusingly similar to the domain name <radioglobo.com>.

As it is not necessary to further analyze whether the domain name is confusingly similar with the rest of Complainant’s trademarks, the Panel finds that Complainant has met the first element of the Policy.

B. Rights or Legitimate Interests

As found in similar cases, Complainant is required to make out an initial prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

Complainant has showed that Respondent has no registrations or application for GLOBO RADIO trademarks neither in the United States of America nor in Brazil, and that Complainant has no relationship whatsoever with Respondent and has never authorized the Respondent to use the domain name <globoradio.com>

The Panel notes that the website at the disputed domain name appears to contain a number of news articles in a variety of languages under the prominent heading “World News.” Other than a reference on the site to “GLOBO RADIO - Globo Radio News Coverage from hundreds of sources,” there appears to be nothing to indicate that Respondent is commonly known as “Globo Radio.” The Panel also notes the presence of a search engine, and a number of sponsored links to other media sources, which appear to be posted under a Google AdSense arrangement.

The Panel is aware of a divergence of views among some WIPO panels on the issue of whether the display of advertisements of competitors on a Google AdSense arrangement affect the legitimacy of what may otherwise be a legitimate use of a domain name. Some WIPO panels have found that, in the absence of knowledge of a complainant’s mark at the time of registration of a disputed domain name, the display of advertisements of competitors of a complainant on a Google AdSense arrangement does not change the legitimacy of respondent’s arrangements. Such panels have also noted that Google’s terms did not permit respondent to control the advertisements. See for example: Admiral Insurance Services Ltd v. Adam Dicker, WIPO Case No. D2005-0241. Other panels have found that a website owner cannot shirk responsibility as to what is placed by another on its website. See for example: FabJob Inc. v. Compana LLC, WIPO Case No. D2006-0610; Sanofi-Aventis Aventis Pharma SA, Aventis Pharma Deutchland GmbH .v. IN4 Web Services, WIPO Case No. D2005-0938; and Herbalife International Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765.

The Panel, however, does not need to decide here whether the continued use of Google AdSense by Respondent is legitimate. Nor does the Panel make any judgement about the right of Respondent to post news articles on the Internet. But that is not the same thing as making unauthorized use of another’s trademark to attract attention to a website on which news articles happen to be published, and from which commercial gain is presumably derived. On the available evidence (as discussed further below) the Panel believes that Respondent was in all likelihood aware of Complainant’s mark at the time of registration of the disputed domain name, and intended to use the drawing power of that mark to promote interest in its own website. Furthermore, Respondent has provided no compelling evidence of rights or legitimate interests in the domain name. Accordingly, the Panel finds that Complainant has met the second element of the Policy.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b)(iv) of the Policy the use of the domain name with the intent to attract for commercial gain Internet users to the website by creating a likelihood of confusion with Complainant’s mark shall constitute evidence of registration and use in bad faith.

Complainant proved that the web page “www.globoradio.com” contains different commercial pay-per-click links to third-party websites. The Panel also notes that the web page also contains advertising material.

Complainant also proved that at least in seven prior cases brought before the National Arbitration Forum and the Center, the Panels repeatedly found that Respondent registered and used numerous domain names in bad faith. These decisions show Respondent’s pattern of abusive conduct.

The available evidence suggests that Respondent registered the disputed domain name having Complainant in mind and uses it with the intent of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with Complainant’s trademarks.

The fact that Respondent did not file an elaborate reply to the Complaint reinforces the conclusion that Respondent has acted in bad faith.

In view of the above-given reasons, the Panel finds that the Complainant has met the third element of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <globoradio.com> be transferred to the Complainant.

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Miguel B. O’Farrell
Sole Panelist

Dated: February 1, 2007