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Valor Econômico S.A. v. Daniel Allende [2001] GENDND 1245 (28 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is VALOR ECONÔMICO S.A., a Brazilian company based in Av. Jaguaré, 1485 – São Paulo 05346-000, Brazil, represented in this administrative proceeding by Ms. Joana Ulhôa Cintra de Mattos, Esq. and Mr. Luiz Edgard Montaury Pimenta, Esq., of MONTAURY PIMENTA, MACHADO & LIOCE, Rio de Janeiro, Brazil.

The Respondent is Mr. Daniel Allende, with an address at 815 D Street, Petaluma CA 94952, U.S.A.

This dispute concerns the <valoreconomico.net> domain name, registered with Tucows, Inc., at 96 Mowat Ave., Toronto, Ontario, Canada M6K 3MI.

On April 10, 2001, a complaint concerning the domain name registration was electronically submitted to the WIPO Center. On April 20, 2001, the complaint was submitted in hardcopy. On April 11, 2001, the Center acknowledged receipt of the complaint’s electronic version.

On April 13, 2001, the Center requested verification of the registration data to the concerned registrar. On April 17, 2001, Tucows, Inc. replied to this request by informing that the domain name at issue was registered with it, that the registrant, administrative, technical and billing contact is Daniel Allende, with an address at 815 D Street, Petaluma, CA 94952, U.S.A., that the ICANN UDRP is in effect per section 7 of the registration agreement, and that the domain name is currently "on hold" within the Tucows system for the duration of the dispute.

On April 30, 2001, the Center reviewed the Complaint to verify whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules. On May 1, 2001, the Center sent its Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent. The last day for sending the Response to the Complainant and to the Center was May 20, 2001. In this communication the Center fully informed the Respondent about the consequences of a default. On the same day, the Center connected its computer to the <valoreconomico.net> web site, and obtained a printout of the corresponding page. According to the tracking results of the FedEx couriercompany, the package containing the Center’s communication could not be delivered to Respondent because of "incorrect address". Nor could the Center reach the telefax number 1 707 769 8754 apparently belonging to Mr. Allende. However the notification of complaint and commencement of the administrative proceeding was successfully transmitted to dallende@yupimail.com on May 1, 2001. The Center, having noticed that by the expiration of the deadline, Respondent had not sent a response, on May 28, 2001, the Center sent by e-mail its Notification of Respondent Default to the Respondent at dallende@yupimail.com. The Panel finds that the Center has discharged its responsibilities pursuant to Rules, Paragraph 2(a), in that it made all reasonable efforts to notify the complaint to the Respondent.

On June 15, 2001, after having received Roberto A. Bianchi’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him a sole panelist in Case No. D2001-0523. The deadline for the Panel to render a decision was June 29, 2001. The Panel independently finds that it has been properly constituted, that the complaint complied with all formal requirements, and that the fees have been paid.

There were no orders issued. There were no extensions.

The complaint has been submitted in English. The registration agreement is in English. The Respondent in its registration submission indicated an address in California, U.S.A., an English-speaking country. This proceeding shall therefore continue in English (Rules, Paragraph 11).

The following uncontested facts are found by the Panel to be established as true:

Complainant, based in São Paulo, Brazil, is a major business journalism company in Brazil, which publishes the business newspaper "VALOR ECONÔMICO", specialized in Finance, Business and Economics and is published from Monday to Friday with nationwide distribution. It is one of the Brazil’s leading newspaper in its category.

Since the foundation of the company VALOR ECONÔMICO S.A, in February 2000, the trademark "VALOR ECONÔMICO" has been used by the Complainant to distinguish the said newspaper which is extensively advertised throughout the Brazilian territory. Even being a relatively new company in the market, the mark and the newspaper "VALOR ECONÔMICO" have already established their presence in the journalism area, and the mark "VALOR ECONÔMICO" is being used since its foundation in connection with journalism products and services related to Finance, Business and Economy.

Complainant has 400 employees. Complainant has obtained a great result in its revenues since it has effectively initiated its operation in the market, what turns to May 2000, as demonstrated: (May 2000 - R$ 9.812.066,25 million (approximately US$ 2.753 million); June 2000 – R$ 7.624.570,13 million (approximately US$ 2.200 million); July 2000 – R$ 5.013.897,12 million (approximately US$ 1.525 million); August 2000 - R$ 7.230.400,17 million (approximately US$ 2.161 million); September 2000 - R$ 4.925.504,06 million (approximately US$ 1.507 million); October 2000 - R$ 5.431.730,50 million (approximately US$ 1.611 million); November 2000 - R$ 6.571.277,49 million (approximately US$ 1.838 million); December 2000 - R$ 8.386.697,57 million (approximately US$ 2.402 million).

The Complainant is the title holder of a Brazilian application for the mark "VALOR ECONÔMICO" filed before BPTO on October 19, 1999, in class 11 (10) – corresponding to International class 16 - to distinguish newspaper, magazines and periodicals in general.

The application for trademark "VALOR ECONÔMICO" was filed in the name of EMPRESA FOLHA DA MANHÃ S/A on October 19, 1999, and on March 6, 2001, the Official Gazette published its assignment to VALOR ECONÔMICO S.A, so the Complainant is the present title holder of the trademark "VALOR ECONÔMICO".

Complainant has also been the title holder of the domain name <valoreconomico.com.br> under the ccTLD ".br" since October 26, 1999.

The reputation of the newspaper "VALOR ECONÔMICO" is recognized in Brazil. The newspaper has received several awards, such as: Award Icatu of Economics Journalism; Award XVI of Brazilian Congress of Accountancy in Mass Communication Press; Award Bovespa in Journalism 2000; Award Esso in category: Economics Information; Award Esso in Best Contribution in Journalism, and Award XIV Vehicles of Communication.

Respondent registered the domain name <valoreconomico.net> with TUCOWS, INC on May 3, 2000.

Complainant contends, inter alia, the following:

· The domain name <valoreconomico.net> is identical and confusingly similar to the "VALOR ECONÔMICO" mark, owned by the Complainant. The domain name reproduces exactly and integrally the trademark "VALOR ECONÔMICO". The relevant part of the domain name in issue is "VALOR ECONÔMICO", and this is clearly identical to the trademark for the expression "VALOR ECONÔMICO" which has been previously filed and is owned by the Complainant. The only difference between the <valoreconomico.net> domain name and the "VALOR ECONÔMICO" mark is the domain name’s addition of ".net" to the "VALOR ECONÔMICO" mark. Furthermore, the addition of ".net" to the arbitrary chosen domain name does not serve to distinguish the domain name from the "VALOR ECONÔMICO" mark.

· The Respondent has no rights or legitimate interests in respect of the <valoreconomico.net> domain name. Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the mark "VALOR ECONÔMICO". Respondent, as an individual, is not commonly known or identified by the name "VALOR ECONÔMICO". Respondent does not offer any goods or services under the "VALOR ECONÔMICO" mark. Respondent has not acquired trademark or service mark rights for the "VALOR ECONÔMICO" mark in Brazil or, as far as it is known, in any other country. Respondent has just registered the domain name <valoreconomico.net> in a foreign jurisdiction (other than Brazil) and what is strange is that the expression "VALORECONÔMICO" contained in such domain name is in the Portuguese language, so it is clearly not a "coincidence" since this word does not exist in the English language.

· Evidence of bad faith in the registration and use is that Respondent has registered the domain name under its own name and the link takes the users to a list of pornographic web sites such as <amateurgirls.com>; <truecelebs.com>; <sexstories.com>; "GREAT AMATEURS" and, specially to <youngwives.com> (which represents the main page) that obviously tarnish the image of Complainant’s mark "VALOR ECONÔMICO", a serious and well respected Brazilian newspaper.

· Another important newspaper directed to Business, Economics and Finance in Brazil is GAZETA MERCANTIL, Complainant may even say that GAZETA MERCANTIL is its number one competitor in Brazil. The mark "GAZETA MERCANTIL" has also been registered as a domain name <gazetamercantil.net> by Mr. Flavio Lopez (Annex 35 to the complaint). The connection made by both web sites (<valoreconomico.net> and <gazetamercantil.net>) takes the users to the same links, all of which containing sexually explicit materials.

· Complainant has no doubt that Respondent and his "friend" Mr. Lopez’s choices for the domain names, <valoreconomico.net> and <gazetamercantil.net> to designate the very same pornographic web sites were intentional.

· The information stated above has already been published by the Brazilian Press. In March 2001, the informative web site "MM ONLINE" published an article entitled "Piracy in USA attacks the newspapers "GAZETA MERCANTIL" and "VALOR ECONÔMICO". As mentioned by MMOnline, the reporters tried to contact Mr. Lopez and Mr. Allende but they could not be reached. The reporters even mentioned the idea of the names and the information disposed in the OpenSRS Whois Database as being false.

· On February 20, 2001, Complainant, through its attorneys, notified Respondent of Complainant’s claim to the domain name in issue and about the Complainant’s rights. No reply was received within the stipulated time frame, which expired on March 2, 2001. Nor to this day.

· The lack of response by the Respondent concerning the above-mentioned notification, just increases Complainant’s understanding that the information about the Respondent in the Whois database is not correct. False information would be a trick used by Respondent in order to create barriers to possible actions taken by Complainant.

· Complainant may even believe that Respondent may be a Brazilian citizen, hypothesis that would, among all others evidences, increase the idea that Respondent is acting in bad faith, since it is impossible for a Brazilian to allege that he/she does not know one of the leading newspapers in the country.

· Respondent has registered the domain name <valoreconomico.net> in order to prevent Complainant, as the owner of the "VALOR ECONÔMICO" mark and trade name, from reflecting its mark and trade name in a corresponding <valoreconomico.net> domain name. Such conduct constitutes evidence of bad faith under Paragraph 4(b)(ii) of the Policy.

· As mentioned above, the domain name <valoreconomico.net> contains links to sexually explicit web sites; in view of that, Complainant understands that the Respondent intends to offer sexually explicit links from the <valoreconomico.net> web site. So, it is clear that Respondent registered the domain name <valoreconomico.net> with the intent of attracting Internet users to the site by causing confusion as to their source so that it could profit when those Internet users click through to its links to sexually explicit web sites. In other words, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a confusion with the Complainant’s mark as to their sources. Such conduct constitutes evidence of bad faith under Paragraph 4(b)(iv) of the Policy.

· Respondent offers users to become members of the porn site <youngwives.com> under payment (US $ 2.99 for the trial period and US $ 29.99 for the full membership after that).

· By its registration of the <valoreconomico.net> domain name, Respondent has created a likelihood of confusion as to his affiliation with Complainant and with Complainant’s "VALOR ECONÔMICO" mark. For example, if a person views the <valoreconomico.net> web site, that person may then search a WHOIS DATABASE for the registrant of <valoreconomico.net> and assume that Respondent, whose name will appear, is affiliated with Complainant.

· By virtue of the widespread use and reputation of the trademark "VALOR ECONÔMICO", members of the public in Brazil would believe that the entity owning the domain name <valoreconomico.net> was the Complainant or in same way associated with the Complainant and its goodwill, resulting in passing off, breaches of Brazilian consumer protection legislation and trademark infringements and mark dilution.

· The mark "VALORECONÔMICO" is a very well known mark in Brazil, and it is inconceivable that the person behind the Respondent would not be aware of this fact. Respondent’s use of the identical and confusingly similar domain name has caused, and if not altered by the Panel, will continue to cause serious and irreparable injury and damage to Complainant and to the goodwill associated with the Complainant and its "VALOR ECONÔMICO" mark.

Respondent is in default.

Complainant is a company recently organized and established in Brazil. It is doing business under the VALOR ECONÔMICO trade name. It is the title holder of a Brazilian application for the mark "VALOR ECONÔMICO" filed before the Brazilian PTO on October 19, 1999, in class 11 (10) – corresponding to international class 16 - to distinguish newspaper, magazines and periodicals in general. The application pre-dates the registration of the domain name at issue (May 3, 2000). The application was filed in the name of EMPRESA FOLHA DA MANHÃ S/A on October 19, 1999, and on March 6, 2001, the Official Gazette has published its assignment to VALOR ECONÔMICO S.A., so the Complainant is the present title holder of the trademark "VALOR ECONÔMICO". Complainant has also been the title holder of the domain name <valoreconomico.com.br> under the ccTLD ".br" since October 26, 1999. Although the trademark registration has not yet been granted by the Brazilian PTO, Complainant, is found by the Panel, to be the most likely holder of rights on the VALOR ECONÔMICO trademark. By its default, Respondent has not contended that any person or company would have better rights to the trademark in Brazil or elsewhere other than Complainant itself. The Panel concludes, therefore, that the requirement, in that a complaint in these proceedings must be based on rights in a trademark, as set out in Paragraph 4(a)(i) of the Policy, is met.

A comparison of the domain name at issue with the trademark clearly results in this Panel’s finding that the domain name is practically identical or at least confusingly similar to the Complainant’s mark. The only -and immaterial- differences are the lack of the space between VALOR and ECONÔMICO and the technically necessary addition of the gTLD ".net" in the domain name registration. The first leg of Policy paragraph 4(a) is thus met.

Complainant has denied that Respondent has any rights or legitimate interests in the domain name. Respondent is in default and has not alleged or evidenced any circumstances for a finding in its favor under Policy, Paragraph 4(c).

On June 21, 2001, the Panel independently tried to establish an Internet connection with the web page under the corresponding <valoreconomico.net> domain name, which resulted in a DNS error with a text reading "The Page cannot be displayed" and "cannot find server". The web site is not being used in any respect, which means Respondent is presently not making any bona fide use, or any fair and noncommercial use of the domain name.

A former use of the domain name has been evidenced by Complainant in that it sufficiently has showed in this proceeding that the <valoreconomico.net> web address was once linked to some web site with pornographic and/or adult contents. No rights or any legitimate interests whatsoever could be derived from such use. On the contrary, as it will be seen next, this was a typical bad faith use of the domain name.

The second prong of the Policy, Paragraph 4(a) is thus present.

Complainant has proved that Respondent linked the <valoreconomico.net> web page to adult content or pornographic sites, to which also a web page corresponding to the domain name <gazetamercantil.net> had been linked. This a typical bad faith use of the domain name. As stated in WIPO Case No. D2000-1679 Playboy Enterprises International, Inc. v. Victoriano Moreno Martín (pages 8/9) the present interruption of a former bad faith use of a web site does not mean that there is no bad faith use under Paragraph 4(a)(iii) of the Policy.

The Policy should not be construed in such a manner that bad faith use should continue after the dispute has begun or that these proceedings have been commenced. To do that would amount to grant to any Respondent a protection against the Policy’s consequences by simply allowing him to cease or cancel any posting of contents on the web site, and leaving the site without any use for all practical effects. Such would be an absurd interpretation of the Policy. On the contrary, this Panel accepts the reasoning of the learned panelist who decided the WIPO Case No. D2000-0021 Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren on March 9, 2000, when he stated:

"The Panel is cognizant of the fact that ¶ 4,a(iii) uses the present tense when referring to use. The Panel believes that the term "is being used" does not refer to a particular point in time (such as when the Complaint is filed or when the Panel begins deliberations), but refers to the period of time following registration of the domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003, ¶ 7.6, at 9. If at any time following the registration the name is used in bad faith, the fact of bad faith use is established. Thus, the fact that upon remonstrance by Complainant's counsel, Respondent ceased using the domain names at issue as links to pornographic sites, cannot alter the fact that the bad faith act had occurred during the period following registration."

As no other use of the web site has been showed in this proceeding, the Panel concludes that linking the web site to pornographic or adult-oriented sites clearly shows in the instant case the bad faith purpose for the domain name registration, consisting of attracting Internet users to the site by causing confusion as to the source so that Respondent could profit when Internet users looking for the web site corresponding to Complainant’s mark would instead connect to sexually explicit web sites. This constitutes tarnishing of and confusion with the Complainant’s mark as to the source, an evidence of bad faith under Paragraph 4(b)(iv) of the Policy.

The Panel finds that the domain name is identical or at least confusingly similar to Complainant’s mark, that Respondent lacks rights and legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.

Accordingly and pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Administrative Panel requires that the domain name registration of <valoreconomico.net> be transferred to the Complainant, VALOR ECONÔMICO S.A.

Roberto A. Bianchi
Sole Panelist

Dated: June 28, 2001