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Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda. [2004] GENDND 1114 (23 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda.

Case No. D2004-0399

1. The Parties

The Complainant is Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. of Lisbon, Portugal, represented by J.E. Dias Costa, Lda. of Lisbon, Portugal.

The Respondent is Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda. of Lisbon, Portugal.

2. The Domain Name and Registrar

The disputed domain name <naofumomais.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 31, 2004. On June 1, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June 3, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the 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 June 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2004. The Response was filed with the Center on July 7, 2004.

The Center appointed Dennis A Foster, Miguel B. O’Farrell and Jette Robsahm as panelists in this matter on August 9, 2004. 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.

The Complainant has sought to name three Respondents instead of the one provided for in Rule 1, i.e., “the holder of a domain name registration” for the disputed domain name <naofumomais.com>: Re-Surgir-Consultores em Desenvolvimento Individual e Organizacional, Lda. of Lisbon, Portugal. The Panel is aware that some panels have allowed more than one respondent in a Policy proceeding, but this usually involved settling for the alter ego of a respondent who sought to avoid being recognized. Here, the registrant of the disputed domain name has not sought to avoid this proceeding, and the Panel sees no reason to derogate from the Rules to bring in two further respondents, one of whom seems closely connected with the Respondent (Soltar, Psicologia e Desenvolvimento Pessoal, Lda. located in Lisbon, Portugal), but the second of which, NoFumoMas, S.L., is a Spanish company that is a franchisor of the Respondent. (See Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511, March 23, 2001, where there was “some confusion as to….correct address..”; also see Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, November 5, 2001, where the panel stated: “However, in this situation, it appears that the separate Respondents listed above may actually be controlled by Mr. Beijen or by entities controlled or established by him.”

4. Factual Background

Both the Complainant and the Respondent are Portuguese business entities that are in the business of helping smokers quit smoking. Toward this end, beginning in early 2003, both companies sought foreign business partners, Spanish and Italian, to assist them in Portugal. Also, both the Complainant and the Respondent have registered domain names that say in Portuguese “I no longer smoke” (“Nao Fumo Mais”), and the Complainant, furthermore, owns a Portuguese trademark using this phrase--registered on February 27, 2004, with a priority date of June 12, 2003. The Respondent registered the disputed domain name, <naofumomais.com>, on May 22, 2003.

5. Parties’ Contentions

A. Complainant

- The domain name <naofumomais.com> was registered in the name of Re-Surgir, but the address given was the address of Soltar, and both these companies are owned by the same two partners.

- The web site hosted at the domain name <naofumomais.com>, owned by Re-Surgir, is automatically redirected to another web site under the domain name, <deixdefumar.com>, and is the partner in Portugal of the Spanish company NoFumoMas, S.L., the third respondent in this Complaint.

- The Complainant is the owner of Portuguese trademark registration No. 373,057 NAOFUMOMAIS, applied for on June 12, 2003, and granted on February 27, 2004. A certified copy of the certificate of registration is enclosed as Annex 19. The Portuguese trademark registration covers “alternative medicine services” in class 44.

- The domain name <naofumomais.com> is identical to the Portuguese trademark registration No. 373,057 NAOFUMOMAIS from the graphic, phonetic and conceptual viewpoint.

- Furthermore, the Complainant is also the owner of the domain name <naofumomais.pt> registered on July 4, 2003 (Annex 20). The Complainant’s web site, through which part of its business is conducted, is an active web site hosted at <naofumomais.pt> (Annex 21).

- All three Respondents have no rights in the domain name <naofumomais.com> or in the name NAOFUMOMAIS that can be invoked in this procedure. None of the three Respondents use the name NAOFUMOMAIS in connection with a bona fide offering of goods or services.

- The Respondents are entities that are in the same business as the Complainant, i.e., running centers to cure tobacco dependency. However, the Respondents, and particularly the Spanish company NoFumoMas, S.L. have been conducting business under different names.

- In fact, NoFumoMas, S.L. is the applicant for a community mark, application No. 3,230,232, NOFUMOMAS, as well as applicant for a Portuguese mark application No. 375,968, DEIXEDEFUMAR (Annexes 22 and 23). And it is under these names--NOFUMOMAS and DEIXEDEFUMAR--that the Respondents have been conducting their business and are known in the marketplace, through their centers open to the public and their advertising.

- The Respondents have not made any legitimate non-commercial use or fair use of the domain name <naofumomais.com>.

- In fact, it is clear that the use of the domain name <naofumomais.com> is conducted by the Respondents with the specific intention of diverting the Complainant’s customers to the Respondent’s own business.

- The fact that this domain name, when typed in a computer, will redirect the user to the web site “www.deixeidefumar.com,” a site that provides similar services to the services provided by the Complainant, is irrefutable proof that the Respondents are misleading Internet users and diverting the Complainant’s business.

- The Complainant’s corporate name, Naofumomais, Clinica de Homeopatia Antitabagica, Lda., and its Portuguese trademark registration are both intended to protect the name “naofumomais,” which is the name exclusively used in the Complainant’s commercial activity.

- The Respondent has registered the domain name specifically for the purpose of disrupting the business of the Complainant because the Respondents do not have any commercial use for the name “naofumomais.”

- At the time the disputed domain name was registered (May 22, 2003), the Respondents were aware of the negotiations between the Complainant and the Italian company Antismoking S.p.A.

- The fact that a direct competitor of the Complainant uses in its commercial activity different names and is maintaining an active domain name redirected to its active web site is sufficient proof that the domain name is being used in bad faith.

- The Respondents are using the domain name <naofumomais.com> only to attract Internet users to their web site by creating a likelihood of confusion with the Complainant’s mark as well as the Complainant’s web site “www.naofumomais.pt.”

- Internet users would be confused as to the source, sponsorship, or affiliation of the Respondent’s web site if they were looking for the Complainant’s business while typing the domain name <naofumomais.com>, identical to Complainant’s corporate name, registered mark and web site.

- The disputed domain name should be transferred to the Complainant.

B. Respondent

- The Respondent’s franchisor (Spanish company NoFumoMas, S.L.) owns and operates a method which helps consumers stop smoking and cures tobacco dependency. It also currently holds the European trademark NOFUMOMAS, applied for on June 17, 2003, and granted on March 19, 2004 (Complaint Annex 22).

- Exchanges of interest and negotiations between the Respondent and NoFumoMas, S.L. (Spanish company), began on April 28, 2003, with the objective of awarding Respondent Re-Surgir, Lda. the position of master franchise for Portugal of the method and trademark, NOFUMOMAS. For the Portuguese market, it was suggested and agreed between the two parties that the direct translation of the Spanish name--NOFUMOMAS--would be used in Portugal--NAOFUMOMAIS--(Annex 1). As negotiations progressed favorably, Respondent registered the domain name <naofumomais.com> on May 22, 2003, (Annex 1--Complaint). Negotiations were later finalized and concluded by Respondent’s parent company, Soltar Lda.

- The Complainant was also in negotiations with NoFumoMas, S.L. in an effort to become the master franchise for Portugal. Those negotiations were never concluded. However, it was through those negotiations that the Complainant became aware that the proposed brand name NoFumoMas, S.L. had planned for Portugal was NAOFUMOMAIS.

- The Complainant, by concluding a contract with the Italian company AntiSmokingCenter SpA, and then registering the trademark NAOFUMOMAIS in Portugal, a direct translation of the trademark NOFUMOMAS, clearly shows that its intent was to wrongly exploit and abuse the trademark NOFUMOMAS established in neighboring Spain for which the Complainant had no rights, and to prevent the Spanish company NoFumoMas, S.L., and their master franchise for Portugal, Soltar Lda, from expanding into the Portuguese market.

- The Complainant also falsely claims the right to the trademark NAOFUMOMAIS in Portugal.

- Only after August 6, 2003, did the Complainant acquire legal standing, and only after this date could the Complainant perform and enter into any sort of legally binding negotiations and/or contracts. Accordingly, the Complainant could never have registered under its name the trademark NAOFUMOMAIS on June 12, 2003, as stated in the Complaint at Annex 19.

- Without question, the Respondent’s registration of the domain name <naofumomais.com> on May 22, 2003, occurred prior to the Complainant’s registration of its Portuguese trademark on June 12, 2003, or its company on August 6, 2003.

- The Respondent’s Spanish franchisor NoFumoMas, S.L. owns the European trademark NOFUMOMAS applied for on June 17, 2003, and granted on March 19, 2004 (Complaint Annex 22).

- The trademark NAOFUMOMAIS is similar to, and a direct translation into Portuguese of, the European trademark NOFUMOMAS attributed to the Respondent’s franchisor NoFumoMas, S.L.

- According to Portuguese legislation, the Complainant could not register the trademark NAOFUMOMAIS on June 12, 2003, as stated by the Complainant in Annex 19.

- The Respondent has rights to the domain name <naofumomais.com>. Negotiations between the Respondent and the Spanish company NoFumoMas, S.L., began on April 28, 2003. The intent was for the Respondent to be the master franchise for Portugal using the Spanish and European trademark NOFUMOMAS.

- As negotiations progressed favorably, the Respondent registered the domain name <naofumomais.com> on May 22, 2003 (Complaint Annex 1). Negotiations were later finalized and concluded by Respondent’s parent company, Soltar Lda.

- The forwarding of the disputed domain name <naofumomais.com> to the domain name <deixeidefumar.com> is logical, as Portuguese customers seeking the same service provided by NoFumoMas, S.L. in Spain would type in the literal translation in Portuguese.

- Absolute proof that there was no bad faith on the part of the Respondent is the fact that the domain name <naofumomais.com> was registered by the Respondent prior to the existence of the Complainant and its trademark. As such, whatever business dealings the Complainant company engaged in since its creation were performed with full knowledge that the domain name <naofumomais.com> belonged to the Respondent.

- The fact that ‘naofumomais’ is a direct translation into Portuguese of the trademark NOFUMOMAS, and that the Respondent, through its parent company, Soltar, Lda., is the sole representative of the trademark NOFUMOMAS for Portugal, is further proof that the Respondent was not in bad faith upon the registration and use of the domain name in question.

6. Discussion and Findings

In order to gain transfer of the disputed domain name under paragraphs 3(a)(i-iii) of the Policy, the Complainant must prove:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the Respondent registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has exhibited a copy of its Portuguese trademark registration for the name NAOFUMOMAIS, registration No. 373,057 registered on February 27, 2004, with a priority date of June 12, 2003 (Complaint Annex 19). As the Complainant contends, the disputed domain name, <naofumomais.com>, is identical to the Complainant’s registered Portuguese trademark.

The Respondent has countered that the Complainant did not have legal standing to apply for the Portuguese trademark because the Complainant was not organized as a company at the time of application. The Panel cannot agree with the Respondent. The Panel can only assume that the Portuguese trademark office knew its business when it allowed the Complainant to register the name NAOFUMOMAIS as a Portuguese trademark. The Panel notes that previous panels almost never question that a nationally registered trademark is sufficient evidence that the Complainant has trademark rights in the disputed domain name (See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503, July 18, 2000, where the panel stated “a registered trademark carries a presumption of validity”; see also Imperial College of Science and Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association-ICMSAA), WIPO Case No. D2000-1079, November 16, 2000, where the Panel found: “Where the relevant mark is a registered trademark, …… [it] plainly provide[s] sufficient evidence of the existence of applicable rights.”).

The Panel notes that there is no requirement in the text of the Policy that the trademark arise before the domain name is registered. There have been many cases where the Complainant has been found to have had trademark rights in a registered or common law trademark even though those rights arose after the domain name was registered. These include Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, September 23, 2001; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L Inc), WIPO Case No. D2003-0320, July 4, 2003; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, October 2, 2003; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544, September 7, 2003; and Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, October 8, 2003. Therefore, the Panel finds that the Complainant has trademark rights in the mark NAOFUMOMAIS, based upon its trademark registration.

However, the Panel notices that the disputed domain name was registered before the Complainant applied for its trademark registration. This will be relevant when the panel analyses the second and third elements required in the Policy, paragraph 4(a)(ii) and paragraph 4(a)(iii), but is not relevant in determining whether the Complainant has trademark rights in a mark identical or confusingly similar to the disputed domain name.

As the Complainant contends, the disputed domain name, <naofumomais.com>, is identical to the Complainant’s registered Portuguese trademark and, therefore, the Complainant has satisfied the requirement under the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel notes that both the Complainant and the Respondent are in the business of assisting smokers who need help to give up smoking. The Complainant concluded an agreement with an Italian company during 2003 to use its treatment methods in Portugal. However, during roughly the same time period, the Respondent negotiated and concluded an agreement with the Spanish company NoFumoMas, S.L. to be the franchisee for that company’s treatment methods in Portugal. Not only does it appear the Complainant and the Respondent were contemporaneously pursuing the goal of offering services to help smokers to give up smoking in Portugal, but it also appears that the Respondent actually was ahead of the Complainant in some respects.

In particular, it appears the Respondent registered the disputed domain name, <naofumomais.com> on May 22, 2003, i.e., before the Complainant’s NAOFUMOMAIS Portuguese trademark priority date of June 12, 2003, and before the Complainant formed its Portuguese company of the same name on August 6, 2003.

Moreover, as the Respondent contends, the Respondent’s Spanish franchisor, NoFumoMas, S.L., established in Spain in the year 2001, has the same name in Spanish that the Respondent chose in Portuguese. And since this phrase means in English “I no longer smoke,” the Panel believes the Respondent could have easily derived this name from the Spanish phrase or ex novo without reference to the Complainant, whose efforts later culminated in the Portuguese trademark registration of the same name.

The Panel finds that, per paragraph 4(c)(i) of the Policy, the Respondent has shown that, before learning of this dispute, the Respondent was preparing to make a bona fide offering of services to help smokers to give up smoking. This constitutes rights and legitimate interests in the disputed domain name. Therefore, the Panel finds the Complainant has failed to carry its burden of proof to show that, per paragraph 4(a)(ii) of the Policy, the Respondent has no rights or legitimate interests in the disputed domain name. Since the Policy requires the Complainant to prove Policy paragraphs 4(a)(i-iii) inclusively, the Panel does not need to proceed to a discussion of whether the Respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Presiding Panelist

Miguel B. O’Farrell
Panelist

Jette Robsahm
Panelist

Dated: August 23, 2004