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Editora Abril S/A v. Artimidia Comunicação Visula Criação e Arte Ltda. [2001] GENDND 1028 (28 May 2001)

Complainant is Editora Abril S/A, a company existing and ruled under the laws of Brazil, based in the city of São Paulo, State of São Paulo, Brazil, with its principal place of business at Avenida das Nações Unidas, 7221, São Paulo, SP, Brazil.

The Respondent is Artimidia Comunicação Visual Criação e Arte Ltda., a company existing and ruled under the laws of Brazil, based in the city of Belo Horizonte, Minas Gerais, Brazil, having its principal place of business at Avenida Prudente de Moraes n. 287, 1401, Cidade Jardim, Belo Horizonte, Minas Gerais, Brazil.

The domain name at issue is "veja.com". The Registrar is Network Solutions, Inc. ("the Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170, USA.

The WIPO Arbitration and Mediation Center (henceforth "the Center") received the Complaint by e-mail and in hardcopy on March 9, 2001. The Complainant paid the required fee.

NSI’s Verification Response was received by the Center on March 27, 2001, confirming to be the registrar for the domain name in question "veja.com", which is registered in the Respondent’s name.

On March 30, 2001, The Center sent the Notification of Complaint to the Respondent, under Paragraph 2(a) of the Rules. The Respondent answered the Complaint by fax on April 18, 2001. On April 20, 2001, the Respondent answered the Complaint by e-mail. On April 24, 2001, the Center received the Response in hardcopy.

On May, 2001, the Center appointed the undersigned as the sole member of the Administrative Panel.

Complainant is Brazil’s largest diversified media organization and is known within the country, as well as abroad. Complainant started business back in 1950 and constitute Latin America’s largest publishing and printing enterprise.

This company publishes an average of 200 magazines, 25 of which are major ones. Complainant publishes around 191 million magazines a year, which turns it into the largest magazine publishing group in Latin America.

Besides the publishing area, Complainant operates an UHF television station and a pay-tv station, which currently attends an average of 500,000 subscribers.

Within this universe, Complainant publishes a weekly magazine identified by the mark VEJA, being this publication Complainant`s "crown jewel", as indicated in the text of the Complaint. Documents attached to the Complaint show that the magazine VEJA is the largest publication in the country and fourth largest selling magazine in the world, right after TIME, NEWSWEEK and US NEWS, selling more copies than the German DER SPIEGEL and FOCUS, as well as the French L’EXPRESS and LE NOUVEL OBSERVATEUR (Exhibits D, E and F).

Complainant states that VEJA magazine has a paid circulation of 1,200,000 copies in Brazil and around 3,000 subscribers abroad. VEJA magazine was first published in 1968, which states that the mark is known in the Brazilian market for more than 32 years.

Complainant provided copies (exhibits J to L of its complaint) of certificates for three registrations issued by the Brazilian Patent and Trademark Office concerning the trademark "VEJA", the oldest one resulting from an application filed in August 31, 1965. Besides, the Complainant presented copies of registrations obtained for trademark "VEJA" before the US Trademark Office, as well as in Argentina, Uruguay and Paraguay (exhibits M to Q of the Complaint) Also Complainant shows that the mark "VEJA" is registered as a Community Trade Mark before the OHIM – Office for the Harmonization in the Internal Market, exhibit R of the complaint.

Respondent applied for and obtained registration for the domain name "veja.com" in 1997. Respondent is an advertising company founded in June 1989, according to exhibit H of the Response. Respondent has a website department, which is active since 1995, when the Iinternet became popular in Brazil.

Complainant contends that the domain name "veja.com" is identical to and confusingly similar with their registered trademark "VEJA, registered in Brazil since 1974 in connection with "publications in general". With this mark Complainant publishes and commercializes the country’s most prestigious weekly magazine, with a paying circulation above 1,200,000 copies. VEJA magazine is the fourth largest selling magazine in the world, the first among the magazines not published in the USA.

Complainant showed ownership of registrations for VEJA as a trademark in Brazil, resulting the oldest one from an application filed in 1965, as well as registrations obtained in other countries in America, as well as a registration as a community trade mark (exhibits J to R of the Complaint).

Also, Complainant showed ownership of the domain name veja.com.br, registered by the Brazilian official register and under which the Complainant has the online website for the weekly magazine VEJA. Further, Complainant also created VEJA Radio, which consists on a section on the website where the journalists interview main sources on principle reports published on the week’s edition of VEJA. This Veja Radio implied an 83% growth concerning the regular viewers of the website.

Additionally Complainant states that VEJA magazine has had an important role in the country’s history for the last 32 years. Created in 1968, while the country was experimenting a military regime, VEJA magazine published several articles against the system. Later in the 90’s, an interview with the President Collor’s brother was the start for the process that ended with the impeachment of the President. VEJA has acquired several different awards for the articles published, this list consisting on exhibit C of the Complaint.

Complainant underlines the fact that for more than three decades the eyes of the country were weekly attentive to the articles published under the well-known trademark VEJA. In sum, Complainant shows evidence of substantial goodwill and name recognition in the expression VEJA, based on its intensive use in a long-term basis.

Aware of the registration of the subject domain name, the Complainant addressed the Registrant a warning letter, advising of its rights on the mark VEJA and requesting the transfer of the domain "veja.com" to Complainant’s name. This letter was sent on March 3, 2000, and no response was ever received. This letter is shown as Exhibit I of the Complaint.

Complainant contends that since the Respondent is a Brazilian seated, based and owned company, doing business in the same field, it cannot deny the knowledge of VEJA magazine or of VEJA trademark.

Complainant also states that the absence of a response shows the Respondent’s bad faith in obtaining the registration, aggravated by the fact that almost four years have passed from the registration and until now Respondent has not started any use for the domain name, either commercial, either non-commercial.

Respondent alleges that VEJA is a generic word in the Portuguese language, meaning "look", "see". As evidence of this allegation, Respondent attaches a copy of a Portuguese/English dictionary as Exhibit M of the Response. In addition, Respondent states that VEJA cannot be seen as an intellectual creation.

In order to sustain the theory, Respondent informs that no less than 144 different companies are using the word VEJA as a trademark in Brazil at the same time, all authorized by the Brazilian Patent and Trademark Office. Respondent uses a print out of this Office’s data bank as evidence of the allegation (Exhibits B and C).

Following this path, Respondent shows, as Exhibit D, 15 abstracts from the Registry of Commerce from the State of Minas Gerais, Brazil, which show the registration of several different companies, all operating in that state under the trade name VEJA.

Further, Respondent claims that the domain name in dispute "veja.com" cannot be seen as a reference to a unique trademark, but to a generic word belonging to the Brazilian vocabulary and used by several companies at the same time.

In this line, Respondent brings out a list of several domain names composed by generic words, that are currently for sale on an internet website. Crowning the allegations, Respondent emphatically declares that there are no difference between these domain names and the domain name in question, as all are composed of generic words.

Also under this eloquent line of argumentation, Respondent questions the fairness of the ICANN rules and claims that monopoly is against democracy.

Respondent than alleges that the Complainant failed to inform the truth in its allegations, by informing to own exclusive rights to use VEJA mark in connection with products and services. According to the Respondent, these allegations are false, since VEJA is a generic word and, for such reason, cannot be considered as creative enough to identify only one product and service.

Respondent also states that since the Complainant’s publication is issued in Portuguese language, only, and so is its website under the domain name veja.com.br, Complainant does not need the domain in dispute. Respondent also alleges that almost all companies that do business in Brazil operate under a country code domain name, in this specific case, ".br" domain names.

Respondent informs that the option for this specific domain name resulted from the idea of construing a website where its clients would be able to advertise their products. According to this company, the best name for such a site would be exactly "veja.com", or "look", given the generic signification of such word.

In sequence, Respondent informs that the domain is not currently in use because, according to their marketing scales, it is not yet time to have such website in the air. Also, several other adverse conditions led to a delay on the opening of their site.

Respondent comments that no response was sent to the Complainant’s warning letter simply because Respondent had no intention in selling the domain name and one year without a response is a tacit way to show so.

Concluding the Response, Respondent resumes all previous allegations and insinuates that Complainant is acting in bad faith and intends to steal the domain name "veja.com".

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i. the subject domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

ii. respondent has no rights or legitimate interests in respect to the domain name; and

iii. respondent’s domain name has been registered and is being used in bad faith.

Regarding the first of the elements, the Panel understands that the Complainant presented competent proof to have rights on the mark "VEJA", which is registered in Brazil as of 1974 resulting from an application filed in 1965 and being used regularly in that country and abroad as early as 1968. Further, the Panel finds that the subject domain name "veja.com" is indeed identical to the trademark belonging to the Complainant, since this mark is entirely reproduced in the domain name registered by the Respondent.

Hence, the Panel concludes that the first of the elements is present in this dispute.

The Panel understands that the expression "VEJA" is indeed linked to the Complainant, since it is not only registered as a mark in its name, but also is used for more than 30 years to identify one of the most prestigious weekly magazines of the world.

Further, the Complainant provided enough evidence of the renown of the mark VEJA in the country and abroad. Hence, the Panel understands that the Respondent, as a Brazilian company acting in the advertising field could not be unaware of the Complainant, Editora Abril S/A, as well as of its weekly magazine VEJA.

As for the Respondent’s allegation, that VEJA is a generic word and shared as a trademark by more than 140 companies, the Panel has the following comments.

The fact that a word is dictionarized does not mean it cannot be registered as a trademark. In fact, being the Respondent an advertising company, the Respondent must know that the market responds quicker to an evocative mark than to a mark consisting of a created word. Evocative marks are a reality and can be seen all over the world.

"VEJA" is the first person of the present imperative mode of the verb VER , or "to look", in English. This verb has no direct relation to magazines or to any other publishing material. For such reason, a registration was granted to this mark by the Brazilian Patent and Trademark Office. In fact, this is an evocative mark, as is trademark LOOK, which identifies an American magazine, or trademark "VOICI" (French for "look here), which identifies a French magazine. This does not mean that the mark is "generic", as alleged by the Respondent, but that it attracts the attention of the customers – and this is the main object of a trademark.

Besides that, one must contend that the trademark VEJA has acquired a secondary meaning in the Brazilian marketing, distancing from the signification appearing in the dictionary. VEJA is currently linked to the magazine, independent of any other registration granted by the Brazilian Office in the Past. In fact, going through the list attached to the Response as Exhibits B and C, one can note that several of the insertions listed refer to refused or cancelled applications, S/A – that is, by the Complainant.

Lastly, there is no evidence that the Respondent trades or offers any services or goods under the VEJA mark, or that the Respondent is the owner of one of the registrations granted by the Brazilian Office. In fact, as show Exhibit S of the Complaint, Respondent is not directly using the domain names in question, but holding them in an inactive manner.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names, for this reason being present in the dispute the second element.

It is not clear to the Panel that the Respondent has registered the domain name "veja.com" with the purpose of selling it to the rightful service mark owner.

Once summoned by the letter sent by the Complainant, the Respondent simply refused to respond, remaining silent for more than a year. However, no move was done by the Respondent to make use of the domain name, remaining it inactive.

In fact, the Complainant and its mark are proved to be well-known in their country of origin and abroad. On the other hand, the Respondent does have an activity in the country which forbids it to deny knowledge of this renown.

According to the Respondent’s website, among their activities figures that of elaborating websites. In view of that, it would not be difficult for the Respondent to start a site under the domain name "veja.com" under the standards indicated in the Response, if this was really the reason for obtaining such registration.

Further, a search at the Registrar’s data bank show that the Respondent owns several different domain names which are composed by famous Brazilian marks that belong to other companies, such as "meridional.com" and "bancoalfa.com", which are known Brazilian banks; or "datafolha.com", being "datafolha" a prestigious pool agency; or "braspetro.com", "redeshop.com", "globorural.com", "americanas.net".

The Panel understands that the inactivity of the Respondent, by not using the domain registered and consequently holding passively such domain, can be understand as an act of bad faith. Indeed, the concept of bad faith is not limited to positive action; total lack of action, when considered together with all the particular circumstances of the specific case, can also be admitted within the concept, according to the hypotheses contemplated by paragraph 4(b) of the Policy (please see case D2000-0003 - Telstra Corporation Limited x Nuclear Marshmallows).

Hence, the renown of the expression VEJA, the lack of activity of the Respondent in the communications area and the absence of use of the domain names, allied to the ownership of other domain names composed by famous Brazilian trademarks, can be considered as enough evidence of bad faith by the Registrant.

The Panel understands that all evidence as above shows that the Registrant obtained the registration of the domain names in question in bad faith.

The Panel, hence, finds present the third element.

As outlined above, the Panel concludes that the domain name "veja.com" is identical to the Complainant’s registered trademark VEJA; that the Respondent has no rights or legitimate interest in the domain names and that the Respondent registered the domain names in bad faith.

Therefore, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name "veja.com" be transferred to the Complainant.

Alvaro Loureiro Oliveira

Dated: May 28, 2001