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Marcos Arbaitman, Maringá Passagens e Turismo Ltda v. Tutimundi Enterprise [2005] GENDND 1909 (28 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marcos Arbaitman, Maringá Passagens e Turismo Ltda v. Tutimundi Enterprise

Case No. D2005-0916

1. The Parties

The two Complainants in this administrative proceeding are:

(i) Mr. Marcos Arbaitman, of São Paulo Brazil, and
(ii) Maringá Passagens e Turismo Ltda., São Paulo, Brazil.

Both Complainants are represented by the lawyer, Ms. Patricia Peck, Brazil.

The Respondent is Tutimundi Enterprise, Florida, United States of America, represented by Tamaru Naomy, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <arbaitman.com>, <maringaturismo.com> and <maringawtt.com>, all registered with eNom, Inc., Bellevue, Washington, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. On August 26, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the three domain names at issue. On September 13, 2005, eNom, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 14, 2005. The Center verified that the Complaint together with the amendment to 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 September 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2005. The Response was filed with the Center on September 23, 2005.

The Center appointed António L. De Sampaio as the Sole Panelist in this matter on October 11, 2005. 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.

The Panel notes that the Complaint was filed jointly by two different entities. Although these two entities do not expressly argue on this issue, it is commonly accepted that entities having a common interest may successfully submit a joint complaint. In the present case one of the Complainants, the Brazilian citizen Marcos Arbaitman, is a partner, and CEO, of the other Complainant, the Brazilian company Maringá Passagens e Turismo Ltda. These facts were duly substantiated and the Panel decides to accept a common Complaint from the two Complainants.

A procedural order was issued requesting the Complainants submit further arguments and evidence on the following points:

(a) a complete and official information about the status of the Brazilian Trademark No. 819609374 “MARINGÁ TURISMO and device”;

(b) documented proof of the use of the name Arbaitman as a trademark;

The procedural order was duly and timely answered by the Complainants.

The Panel has not received further submissions, waivers or extensions of deadlines from the Parties and the Panel has not found it necessary to request any further information.

The proceedings have been conducted in English as this is the language of the registration agreement.

4. Factual Background

Mr. Marcos Arbaitman is a partner and CEO of the Brazilian company Maringá Passagens e Turismo Ltda. Maringá Passagens e Turismo Ltda. is the registered owner of the Brazilian Trademark Registration No. 821592807 “MARINGÁ TURISMO WOODSIDE TRAVEL TRUST” (word mark) filed on August 25, 1999, and granted by decision of February 3, 2004.

This Brazilian company has submitted the Brazilian Mark Application No. 819609374 “MARINGÁ TURISMO” (words and device) on September 2, 1997. This trademark application is apparently still pending or, due to administrative backlog at the Brazilian Patent and Trademark Office, awaiting for the final registration certificate which is not expected to be issued before 2007.

The Complainant is also the owner of the following Brazilian domain names: <maringaturismo.com.br> and <maringawtt.com.br>, both registered on October 9, 1998.

The Respondent is a “United States Internet Domain Name Provider” as he identified himself in the Response.

5. Parties’ Contentions

A. Complainants

1. Complainant: Maringá Passagens e Turismo Ltda.

This Complainant claims that it is one of the largest travel agencies in Brazil. As a company it attaches to the Complaint the factual / documented evidence that it holds the following domain names in Brazil: <maringaturismo.com.br> and also <maringawtt.com.br>, both dated October 9, 1998.

Besides the above the company claims and files documented evidence that it is the trademark owner of the Brazilian Trademark “MARINGÁ TURISMO WOODSIDE TRAVEL TRUST” which is also known, in commerce, as “Maringá WTT”.

The company has also submitted on January 12, 1997, a Trademark application for “MARINGÁ TURISMO and device” and provided the Panel with proof of such application.

This Complainant claims that both marks are being improperly used in the two disputed domain names <maringaturismo.com> and <maringawtt.com>.

The company invokes the fact that it is a victim of fraudulent e-mails sent to its clients using the two disputed domain names.

This Complainant argues that it is constantly harmed by the fraudulent hosting of the domain names by the Respondent.

Upon request from the Panel this Complainant has furnished a copy of its “articles of association” as a company. The Complainant alleges that the Respondent has no rights or or legitimate interests, in the disputed domain names.

Furthermore, in connection with the bad faith element the Complainant states that it is the Respondent’s intention to commercially benefit from the registration of the two domain names by taking advantage of the Complainant’s trademarks while creating a likelihood of confusion, or selling them to a third party.

Finally the Complainant requests that the Panel orders the registrar to transfer the disputed domain names <maringaturismo.com> and <maringawtt.com> to the Complainant.

2. Complainant: Mr. Marcos Arbaitman

The Complainant states that he is a Brazilian entrepreneur and CEO of the Brazilian company Maringá Passagens e Turismo Ltda. A copy of the “articles of association” of the company were attached to the file, proving the alleged facts.

This Complainant argues that he is a victim of several attacks to his and his family honour and image made at the website hosted at “www.arbaitman.com”. The use in the domain name of the Complainant’s surname – family name – has created undesirable inconvenient damage and exposure.

Since the Complainant is the main owner of the company Maringá Passagens e Turismo Ltda. the domain name <arbaitman.com> has been registered in bad faith and with the aim to obtain profit.

The Complainant argues that the Respondent has no rights or legitimate interests in the domain name <arbaitman.com> and further that the Respondent is acting in bad faith and trying to obtain a commercial benefit from the registration of this domain name.

The Complainant requests that the Panel orders the registrar to transfer the disputed domain name <arbaitman.com> to the Complainant.

B. Respondent

The Respondent Tutimundi Enterprise defines itself as “an Internet Domain Name Provider” stating that it owns the three domain names and that they are for sale publicly.

The Respondent stresses that it has never received a single contact by the Complainants interested in the disputed domain names.

Furthermore, the Respondent states that the domain names are being sold world wide as a service to the public.

The Respondent, and a full transcription is made below,argues that:

“the business world is offer and demand. As long as we have a willing and able customer to pay the price, or enter into an agreement we have a deal. This has nothing to do with bad faith, illegal profit, no legal rights, no legitimate interest, use of the trademarks, reputation and so forth. It is a business matter” .

Furthermore, the Respondent stresses that the disputed names are simply for sale and this fact is the “world of domain names”.

The Respondent strongly denies any fraudulent acts and also denies that the domain names are used to harm anyone.

6. Discussion and Findings

A. Identical or Confusingly Similar

As regards the two domain names <maringaturismo.com> and <maringawtt.com> the Panel finds that:

The Complainant, Maringá Passagens e Turismo Ltda. is the registered owner - and has proved its ownership - of the Brazilian Trademark Registration No. 821592807 “MARINGÁ TURISMO WOODSIDE TRAVEL TRUST” (word mark) filed on August 25, 1999, and granted by decision of February 3, 2004.

The Complainant, Maringá Passagens e Turismo Ltda. is also the applicant of Brazilian Mark Application No. 819609374 “MARINGÁ TURISMO” (words and device), still pending.

The characteristic and main part of both these trademarks is the element MARINGÁ a fanciful expression.

The domain name <maringaturismo.com> reproduces and is identical to the Brazilian Trademark Application No. 819609374. The domain name <maringaturismo.com> is confusingly similar to the Complainant’s Brazilian Trademark Registration No. 8215922807 since it reproduces the element “MARINGA” and the less characteristic word “TURISMO”.

The domain name <maringawtt.com> is also confusingly similar to the Complainant’s Brazilian trademark invoked since it reproduces the fanciful element “MARINGA”. Moreover, the domain name <maringawtt.com> also contain the letters WTT which are no more than the initials of the second part of Brazilian Trademark Registration No. 8215922807 “MARINGÁ TURISMO WOODSIDE TRAVEL TRUST”.

The Panel thus concludes that the disputed domain names are confusingly similar to the Complainant Maringá Passagens e Turismo Ltda.’s trademarks.

As regards the domain name <arbaitman.com> the Panel notes as follows:

There are several UDRP decisions where panels have recognized the right of a complainant to claim common law rights to a name where there is no registered trademark to such a name. In some cases a complainant has registered his/her name as a trademark, and in those cases such a name will be protected as a trademark through registration.

There are several UDRP decisions where the common law right was not acknowledged since merely having a famous name (such as a name of a businessman) is not necessarily sufficient to show unregistered trademark rights. The name in question should be actually used in trade or commerce to establish unregistered trademark rights.

In the Second WIPO Domain Name Process “It is recommended that no modification be made to the UDRP to accommodate broader protection for personal names than that which currently exists in the UDRP” (Paragraph 202).

In the case involving Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402, the panel mentioned that: “It is perhaps important to point out, however, that protection at common law is determined on a case by case basis and depends greatly on the factual basis of each individual case. At common law, as the primary task is to determine if there is confusion in the mind of the consumer, the notoriety of a particular mark is gauged relative to a number of factors, including the territory within which the mark is used, the products for which it is being used, etc..”

Moreover, it is also the case that the complainant in these types of cases will be successful if the personal name in question was used as a marketable commodity, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services. That is if the personal name is being used for trade or commerce.

This is not the case involving Mr. Marcos Arbaitman. Mr. Arbaitman is a businessman working in Maringá Passagens e Turismo Ltda., the other Complainant. However his name – based in what was invoked and referred in the Complaint and in the specific answer of the Complainants to the Panels’ procedural order No. 1 - is not used as part of company’s activity for trade or commerce and is not recognized by the public as immediately linked with the company. In other words, the personal name has not acquired any secondary meaning that would justify a protection as a common law right.

In this case, the Complainant has not invoked or shown that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services, or that he intended to do so.

For instance in the case Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, WIPO Case No. D2000-0858 the panel found that trade names or marks that have, through usage, become distinctive of the users’ goods or services in commerce may be protected as they have acquired a “secondary meaning”. In the former case, it said: “A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization.” The Panel does not find this to be the case with the personal name of the Complainant since no such secondary meaning has been proved in the name “Arbaitman”.

Nevertheless, the Panel considers that the Complainant has a right to his personal name and this may provide him with a remedy in a national court for an alleged improper use of his name. In fact, the Complainant Mr. Marcos Arbaitman has already obtained a favorable decision by a Brazilian Court (Decision of a preliminary action, dated May 6, 2005 at the Court of São Paulo, File No. 000.05.045635-0) related to the former content of the website “www.arbaitman.com”, although this judicial decision does not directly apply to the case under dispute in the terms of the UDRP.

The Complainant has not proven unregistered trademark rights in the name under the UDRP Policy.

B. Rights or Legitimate Interests

Taking into consideration the finding under 6A above with regard to the domain name <arbaitman.com>, the Panel does not need to make a finding concerning this domain name under 6B and 6C. The Complainants have asserted that the Respondent has no rights or legitimate interests in the domain names in <maringaturismo.com> and <maringawtt.com>. The Panel finds that the Complainant has made a prima facie showing the Respondent lacks rights and legitimate interests to these domain names.

The Respondent has failed to invoke or to file any evidence rebutting these assertions. The comments of the Respondent on these questions, based on his assertions that the “business world is offer and demand” and that this reality has “nothing to do with bad faith, illegal profit, no legal rights, no legitimate interest, use of trademarks....” does not rebut the Complainant’s prima facie showing.

C. Registered and Used in Bad Faith

In this case, the Respondent, and a full transcription is made below, argues that:

“... the business world is offer and demand. As long as we have a willing and able customer to pay the price, or enter into an agreement we have a deal. This has nothing to do with bad faith, illegal profit, no legal rights, no legitimate interest, use of the trademarks, reputation and so forth. It is a business matter”.

Furthermore, the Respondent stresses that the disputed domain names are for sale and this fact is the “world of domain names”.

As to the registration in bad faith, the Panel notes that considering that the domain names include either the dominant part of the Complainant company’s trademark (<maringaturismo.com>) or an abbreviation of it <maringawtt.com>.), and given the use of these domain names at the related websites to directly offer them for sale, it is most likely that the Respondent knew about the Complainant company and its trademark when the Respondent registered the disputed domain names. This is further corroborated by the fact that the three domain names in dispute are related.

These facts, duly proved, show that the creation of the disputed domain names and their subsequent use for the purpose of selling them may be considered an act of bad faith.

The Panel finds that the circumstances described in paragraph 4(b)(i) of the Policy are present in this dispute.

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 names <maringaturismo.com> and <maringawtt.com> be transferred to the Complainant, the Brazilian company Maringá Passagens e Turismo Ltda. The request for transfer of the domain name <arbaitman.com>, is denied.

António L. De Sampaio
Sole Panelist

Dated: November 28, 2005