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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RBS Zero Hora Editora Jornalistica SA v. Link Comercial Corp.

Case No. D2007-0733

 

1. The Parties

The Complainant is RBS Zero Hora Editora Jornalistica SA, of Brazil, represented by Silveiro Advogados, Brazil.

The Respondent is Link Comercial Corp., of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <zerohora.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2007. On May 22, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 22, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative and technical contact details. The Center verified that the Complainant 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 May 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2007.

The Center appointed Debrett G. Lyons, Manoel J. Pereira dos Santos and Gustavo Patricio Giay as panelists in this matter on July 16, 2007. The Panel finds that it was properly constituted. Each member of 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

According to the documentary evidence and contentions submitted, the Complainant is the publisher of a daily Brazilian newspaper named ZERO HORA (the ‘trademark’). The trademark is a Portuguese expression meaning ‘the first moment of the day’.

The newspaper was first published in 1964 and is now the fifth largest daily newspaper in Brazil with a daily average of 1.9 million readers. The Complainant has supplied evidence clearly demonstrating that the trademark is well known throughout Brazil.

The Complainant’s website at “www.clicrbs.com.br/jornais/zerohora” receives more than one million visits per month. The Complainant however wishes to launch a website at the address “www.zerohora.com” but has been unable to do so because of the existence of the disputed domain name.

The Respondent registered the disputed domain name on February 19, 1997.

The Respondent has been involved in numerous other disputes under the Policy.

The Complainant attempted to send letters of demand to the Respondent but they went unanswered and possibly undelivered.

The Complainant petitions the Panel for transfer of the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant submits that (i) the disputed domain name is identical to its trademark, in which the Complainant has rights through registration and use, (ii) the Respondent has no rights or legitimate interests in the disputed domain name, and (iii) the disputed domain name was registered and is being used in bad faith by the Respondent.

Domain Name is identical to Trademark

The Complainant states that it is the owner of Brazilian trademark registration number 6006531 for ZERO HORA which dates back to September 10, 1974 and was filed on October 29, 1964. The Complainant states that the disputed domain name is “identical to the Complainant’s well known and registered trademark in Brazil”.

Respondent has no Rights or Legitimate Interests

The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark and has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the trademark.

The Complainant observes that the domain name was registered in 1997 however in ten years the Respondent has not developed an active website at “www.zerohora.com” and so it submits that the domain name has not been used in connection with a bona fide offering of goods and services.

The Complainant asserts that the Respondent is not identified with and does not operate a business under the trademark and has no registration for the trademark which might otherwise indicate an intention to do so.

Accordingly, the Complainant reasons that the Respondent has no rights or legitimate interests in the domain name.

Domain Name was Registered and is being Used in Bad Faith

The Complainant alleges that ‘the Respondent is a professional cyber squatter’. In support of that claim the Complainant refers the Panel to the numerous cases under the Policy to which the Respondent has been party and where adverse findings of bad faith have been reached. Those cases include: DCI S.A v. Link Commercial Corporation, WIPO Case No. D2000-1232; Calзados Azalйia S/A v. Link Commercial Corp. WIPO Case No. D2000-1745; Bernardo Neustadt v. Link Commercial Corp., WIPO Case No. D2000–1256; NFL Properties LLC and New York Jets LLC v. Link Commercial Corp. WIPO Case No. D2004-1087; Mastellone HNOS. S.A. v. Link Comercial Corp. WIPO Case No. D2005-1047; San Telmo, Inc. v. Link Comercial Corp., NAF Case No. FA0110000100632.

The Complainant submits that in each of those decisions the Respondent’s bad faith use and registration of the concerned domain name was established and places further reliance on the panel’s decision in San Telmo, Inc. v. Link Comercial Corp., supra, where the panel found that:

“Respondent has registered hundreds of domain names including many that incorporate well-known names and trademarks of others. Among the domain names Respondent has registered are:

<newcoke.com> <mercedesdealers.com>

<newpepsi.com> <chryslerdealers.com>

<thekingofbeers.com> <ladydi.com>

<bigboyinternational.com> <evaperon.com>

<mrsteak.com> <zorba.com>

<njjets.com> <silviosantos.com>

<rotaryclub.com> <franciscomacri.com>

<chevroletdealers.com> <paulomaluf.com>

<buickdealers.com> <jehova.com>

<nissandealers.com> <catholicchurch.com>

<cadillacdealers.com>

<lotusdealers.com>

<suzukidealers.com>”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply: see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; and Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.

According to paragraph 4(a) of the 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 interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

Having considered the evidence and submissions, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel finds that the Brazilian trademark registration sufficiently establishes the Complainant’s rights in the ZERO HORA trademark for the purposes of the Policy paragraph 4(a)(i) (see Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum December 21, 2005); Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum September 25, 2003).

Were it necessary to do so, the Panel also finds that the evidence of reputation of the Complainant’s trademark is sufficient to show common law or unregistered trademark rights.

The Complainant’s asserts that its trademark is identical to the disputed domain name. It has been held by numerous panels examining this aspect of the Policy that for the purposes of testing similarity under Paragraph 4(a)(i), the generic top-level domain (“gTLD”), “.com”, is to be ignored (see, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003): “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”.

It has also been held that spaces and punctuation are omitted from domain names and so the expressions “zero hora” and “zerohora” should, for the purposes of the Policy, be regarded as identical. See Aurora Foods Inc. v. David Paul Jaros, WIPO Case No. D2000-0274 (“....the Panel concludes that use of the lower case letter format in “duncanhine.com”, and elimination of the space between the words “Duncan” and “Hine” to form that name, are differences without legal significance from the standpoint of comparing “duncanhine.com” to “Duncan Hines”.)

The Panel has no hesitation in finding that the disputed domain name is identical to the Complainant’s trademark. The Panel accordingly holds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has permission to use the Complainant’s trademark. The Respondent has no apparent commercial interest in the domain name and is not commonly known by the domain name. In these circumstances the burden of proof passes from the Complainant to the Respondent. The Respondent has provided no explanation for its actions and the only conclusion which can be drawn is that the Respondent has no rights or legitimate interests in the domain name: see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110.

The Panel finds that the Complainant has satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence, however, what is noteworthy about Paragraphs 4(b)(i) – (iv) is that they are all cases of both registration and use in bad faith. Other times, there will be evidence of use in bad faith or registration in bad faith and the Panel will need to find both since the requirements of Paragraph 4(a)(iii) of the Policy are conjunctive.

It is therefore logical to first test the facts against these given circumstances.

The evidence shows that the Respondent’s actions fall squarely within Paragraph 4(b)(ii) above. In fact, Respondent has shown a pattern of registering domain names incorporating the marks of third parties. That finding is supported by a decision of the Center as recently as July 18, 2007 in which the panel stated:

“In the present case, this conclusion is re-enforced by evidence, that has not been denied or rebutted, to the effect that the Respondent and its associates are serial offenders in the registration of domain names which infringe the trademark rights of others and have attempted to conceal their identities”. See Above All Advertising Inc. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-0775.

In the present case, there is evidence that the Respondent has given false registration details to prevent the Complainant from contacting it. Of itself, formative panels have held that practice to be evidence of bad faith.

There is a further element which should be considered. The Complainant quotes further passages from Calзados Azalйia S/A v. Link Commercial Corp., supra, a WIPO case involving the Respondent and a well known Brazilian trademark and where the panel made findings which are particularly relevant in the resolution of this dispute:

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.

“The administrative contact of the Respondent, Mr. Roberto Eimer, has recognized his knowledge of the Brazilian market by affirming that he was traveling 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.”

The Complainant also mentions the domain name <guia-mercosur.com> where the same administrative contact for the Respondent would publish the website Guia del Mercosur with a reference to Complainant’s Zero Hora newspaper. Through independent search on July 27, 2007 the Panel found that the domain name <guia-mercosur.com> no longer resolves to that website. This fact, however, does not affect the basic finding of the Panel.

All the foregoing evidence makes clear that Respondent certainly knew the widely known ZERO HORA trademark when the disputed domain name was registered.

Finally, the Panel conducted an independent search on July 27, 2007 and found that the domain name <zerohora.com> does not resolve to any website and, therefore, confirmed Complainant’s contention that Respondent has no active website under the disputed domain name. The question of determination of bad faith when the domain name is not actively used has been addressed before by panels applying the Policy and the consensus view in that respect is that:

“The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2).

In short, the conduct of Respondent demonstrates that the disputed domain name was registered and is used in bad faith. Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.