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Xuxa Promoções e Produções Artísticas Ltda v. LaPorte Holdings [2005] GENDND 1968 (3 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xuxa Promoções e Produções Artísticas Ltda v. LaPorte Holdings

Case No. D2005-0899

1. The Parties

The Complainant is Xuxa Promoções e Produções Artísticas Ltda, Rio de Janeiro, Brazil, represented by an external legal counsel, Brazil.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <worldxuxa.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2005. On August 23, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On August 23, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 1, 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 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2005.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on October 24, 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.

4. Factual Background

The Complainant is the owner of the trademark XUXA, which has been registered in Brazil for many years. The Complainant also owns other trademark registrations in Brazil containing the word “xuxa” such as PLANET XUXA, XUXA PARK, XUXA MAGIC CLUB, XUXA WATER PARK, CLUBE DA XUXA, REVISTA DA XUXA, etc.

The Respondent registered the domain name <worldxuxa.com> in November 2004, after the Complainant applied for and registered its trademarks.

5. Parties’ Contentions

A. Complainant

The domain name <worldxuxa.com> reproduces the Complainant’s registered trademark XUXA. The word “world” is generally used together with any kind of trademark, thus it may lead to confusion. The Respondent’s intention to register the Domain Name is to make people think that it was created by the Complainant.

The trademark XUXA was created by using a part of the name of the owner of the Complainant, Maria da Graça Xuxa Meneghel. She is well known for her TV productions and commercial goods. XUXA is a brand that is known worldwide and the Domain Name may cause the consumer confusion by making Internet users think that it is the official website of the trademark owner.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent has no rights in the well-known trademark XUXA.

Before the Respondent registered the Domain Name, the Complainant had already registered a number of trademarks related to the mark XUXA with the Brazilian P.T.O. (INPI), such as BEIJINHO BEIJINHO DA XUXA, registered on April 11, 1999; CLUBE DA XUXA, registered on September 26, 2002; FANCLUB DA XUXA, registered on April 20, 1995; PARQUE DA XUXA, registered on November 16, 1999; PLANET XUXA, registered on November 11, 2003; REVISTA DA XUXA, registered on October 02, 2000; TV XUXA, registered on April 11, 2005; XUXA, registered on November 13, 1994, October 17, 1995, August 03, 1999, October 05, 2003, October 02, 2000 and January 11, 2004; XUXA DISCOS, registered on September 11, 2000; XUXA MAGIC CLUB, registered on November 16, 1999; XUXA MENEGHEL, registered on October 29, 1996; XUXA PARK, registered on January 25, 2004; XUXA PARK, registered on October 31, 1995; XUXA SÓ PARA BAIXINHOS, registered on March 27, 2002; XUXA WATER PARK, registered on November 16, 1999; XUXINHA, registered on August 24, 2002.

The Domain Name has been registered and is being used in bad faith.

The Domain Name was registered on December 11, 2004 with the intention of selling. Upon accessing the website “www.worldxuxa.com,” the user is redirected to the website “www.domaincargo.com,” which has a number of domain names listed for sale.

The domain names <worldxuxa.com> and <domaincargo.com> are registered by the same Registrant with the same Registrar, and therefore it is evident that both domain names are related. The prices listed for the domain names on the website are evidence of the Respondent’s intention to sell the domain names to whoever shows any interest.

These facts show that the Respondent’s bad faith exists as stated in the Policy, paragraph 4(b)(i).

The trademark XUXA is very popular among Brazilian nationals and is associated with the long time work of Ms. Maria da Graça Xuxa Meneghel and her production staff, and the high quality level of her television productions and her commercial goods.

The Respondent intended to gain benefit from the popularity of the trademark XUXA by deliberately using it in its Domain Name without the permission of the original owner, and, as a consequence, negatively effecting the Complainant’s efforts to preserve the high level of its work.

Ms. Maria da Graça Xuxa Meneghel’s shows appeared in the middle of the 1980’s and are still being aired today. There is no other person or trademark as well known worldwide as the Complainant. The use of <worldxuxa.com> could bring damage to the value of the trademark XUXA.

The Respondent has no rights in the trademark XUXA.

The Respondent has no trademark registrations for XUXA or WORLDXUXA.

The Respondent created a website at “www.domaincargo.com” in which many domain names are listed for sale, including the disputed domain name <worldxuxa.com>.

When the Domain Name is typed into the web browser, the Internet user is redirected to “www.domaincargo.com” where the Domain Name is listed for sale.

Therefore, the Complainant requests that the domain name <worldxuxa.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint and in accordance with paragraph 14(b), if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous UDRP decisions in which a respondent failed to file a response, the panels have based their decisions upon the complainant’s assertions, evidence and inferences drawn from the respondent’s failure to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064) since the respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true. Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Notwithstanding the above, the Panel must not decide in the complainant’s favor solely given the respondent’s default. Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The Panel must decide whether the complainant has introduced elements of proof which allow the Panel to presume that its allegations are true.

A. Identical or Confusingly Similar

The Complainant has proved that it is the owner of the trademark registration XUXA, which has been registered in Brazil for many years. The Complainant also owns other trademark registrations in Brazil containing the word “xuxa” such as PLANET XUXA, XUXA PARK, XUXA MAGIC CLUB, XUXA WATER PARK, CLUBE DA XUXA, REVISTA DA XUXA, etc.

The Panel finds that adding the word “world” is not sufficient to distinguish the domain name <worldxuxa.com> from the well-known trademark registration XUXA. See SAP AG v. Andrew Sparrow, WIPO Case No. D2001–0733 and American Online Inc. v. Daniel Mullen dba MSN and MSN Networks, WIPO Case No. D2000–1605.

Therefore, the Panel finds that the Complainant’s trademark registration XUXA is confusingly similar to the Respondent’s Domain Name.

Furthermore, “worldxuxa” and the Complainant’s trademark registration PLANET XUXA are also confusingly similar, particularly from a conceptual point of view given the similarity between the meaning of the words.

Therefore, and since it is not necessary to further analyse the likelihood of confusion between the Domain Name and the rest of the Complainant’s trademark registrations, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.” The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

The Complainant argued that the Respondent has no rights or legitimate interests in the conflicting Domain Name since the Respondent neither has any trademark registration for XUXA or WORLDXUXA nor any authorization from the Complainant to use the trademarks.

On the other hand, the Respondent failed to file a Response and therefore it did not bring to these proceedings any element to show that the Respondent has rights or legitimate interests in the disputed Domain Name.

In view of the above, and in accordance with the paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is the owner of the trademark XUXA, registered in Brazil for many years.

XUXA is the name of a well-known star in Brazil, Maria da Graça Meneghel, who has developed a remarkable career in the field of entertainment and television. Among many other activities, during her career, she has conducted many children TV shows in Brazil, Argentina, United States of America and Spain.

The Complainant alleges, but does not prove, that the website “www.worldxuxa.com” redirects Internet users to the Respondent’s website “www.domaincargo.com” where many domain names are listed for sale.

The Complainant also alleges, but does not prove, that the domain name <worldxuxa.com> is offered for sale on the Respondent’s website “www.domaincargo.com.”

However, the Complainant did prove that the Respondent is the owner of the domain name <domaincargo.com> which directs Internet users to a website on which many domain names are listed for sale, and therefore, the Panel infers that the Respondent registers domain names to sell them for profit.

Since the Respondent failed to file a Response, it did not bring to these proceedings any evidence which could justify why the Respondent chose “worldxuxa” for its domain name.

In this regard, the Panel finds that the Respondent’s choice of the Domain Name was not a mere coincidence. The Complainant’s fame makes the Panel infer that, before registering the Domain Name, the Respondent, who is domiciled in the United States of America, knew the Complainant’s trademark XUXA, which has no particular meaning other than being the name of a well-known Brazilian star.

Therefore, the fact that the Domain Name contains a well-known trademark clearly suggests opportunistic bad faith (see Veuve Clicquot Ponsardin Maison Fondeé en 1772 v. The Polygenix Group Co, WIPO Case No. D2000–0163 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0223) which appears evident given the fact that the Respondent owns a website for selling domain names and does not have rights or legitimate interests in the disputed Domain Name.

In view of the foregoing and in accordance with similar precedents and paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that the Respondent has registered and used the Domain Name in bad faith.

Consequently, the Complainant has proved the third element required in paragraph 4(a) of the Policy.

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 name <worldxuxa.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist

Date: November 3, 2005