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Xuxa Promoções Produções Ltda. v. Ivo Conestabile Junior [2005] GENDND 1980 (1 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xuxa Promoções Produções Ltda. v. Ivo Conestabile Junior

Case No. D2005-0873

1. The Parties

XUXA PROMOÇÕES PRODUÇÕES LTDA, a company based in Rio de Janeiro, Brazil.

The Respondent is IVO CONESTABILE JUNIOR, an individual in São Paulo, Brazil.

2. The Domain name and Registrar

The domain name at issue is <xuxaonline.com>. The Registrar is ENOM, Inc. (“the Registrar”).

3. Procedural History

The WIPO Arbitration and Mediation Center (henceforth “The Center”) received the Complaint by e-mail on August 16, 2005 and on August 22, 2005, in hardcopy. The Complainant paid the required fee.

The Registrar’s verification Response was received by The Center on August 17, 2005, confirming EOM to be the registrar for the domain name in question, <xuxaonline.com>, and that it is currently registered in the Respondents’ name. The Registrar also informs that the domain in question has been placed under a locked status during the proceedings.

On August 25, 30 and 31, 2005, The Center sent the Notification of Complaint to the Respondent, under Paragraph 2(a) of the Rules. Although a couple of e-mails were exchanged, the Respondent did not answer to the Complaint within the established deadline. The Center hence sent to the parties the Notification of Respondent Default on September 19, 2005.

On October 11, 2005, the Center appointed the undersigned as the sole member of the Administrative Panel.

4. Factual Background

Complainant is a Brazilian company owned by the Brazilian TV hostess and model Ms Maria da Graça Xuxa Meneghel.

Complainant is the titleholder of several registrations for trademark XUXA and other marks composed by the name XUXA, granted by the Brazilian Patent and Trademark Office (“INPI”), the senior one having been granted in 1994. Complainant provided a list of the relevant trademark registrations before the Brazilian Office (“INPI”). Although not expressly mentioned in the Complaint, XUXA is also the artistic name under which Ms. Maria da Graça Xuxa Meneghel is widely known, in Brazil as well as in other neighboring countries.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name <xuxaonline.com> reproduces their registered trademark XUXA, registered in Brazil since 1994 and used in connection with the production and the commercialization of television presentations, toys, clothes, accessories, food.

Additionally, Complainant states that trademark XUXA was created by using part of the name of Ms. Maria da Graça Xuxa Meneghel, owner of Xuxa Promoções Produções Ltda.

Complainant also contends that the domain name in question may give cause to confusion, leading Internet users to a site which is not the official one of the legal owner of the trademark.

Besides, Complainant states that the Respondent has no rights or legitimate interests in respect to the domain name. As above outlined, XUXA is a trademark registered by Xuxa Promoções Produções Ltda. The mark itself, XUXA, is a part of the name of Ms. Maria da Graça Xuxa Meneghel, who is a very famous person and whose image is associated with all products and services sold or rendered by the Complainant.

Further, Complainant informs that the Respondent had previously created a site named Xuxa On Line and hosted it under a home page of a Brazilian host service “www.ig.com.br”. Being formally served with a cease and desist letter, stating that the rights of the Complainant as well as those of Ms Meneghel were being violated, the Respondent closed the homepage, leaving an online note stating the reasons why the site had been shut down. Complainant states that in spite of these facts, Respondent registered the referred domain name before the Registrar, in an attempt to overtake the obstacles posed by the Brazilian legislation.

Lastly the Complainant affirms that the existence of commercial links in the referred website proves the bad faith of the Respondent, since it establishes the commercial use of the domain name.

B. Respondent

Although duly notified of the Complaint, Respondent did not officially answer to it. In fact, the Respondent responded the e-mail sent by the Center, on August 31, 2005. In this message, the Respondent states that no answer would be given to the Complaint.

Later, on September 19, 2005, the Center sent a Notification of Respondent Default.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented 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.

A. Identity or confusing similarity between domain names and the Complainant’s trademark:

Regarding the first of the elements, the Panel understands that the Complainant presented competent proof of its right in the trademark XUXA, which is registered in Brazil as of 1994 and being used regularly in the country and abroad. Further, the Panel finds that the subject domain name, <xuxaonline.com> indeed violates the trademark rights of the Complainant, since the trademark is entirely reproduced in the domain name registered by the Respondent.

The addition of the words “on line” to the mark XUXA in the domain cannot be seen as attenuating the reproduction. There are several precedents on domain names where common or generic terms were added to a famous mark, but were not sufficient to give the domain a sufficiently distinctive aspect. WIPO Cases D2003-0944, D2001-0174 and D2000-0477 evidence this allegation.

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

B. Respondent’s rights or legitimate interests in the domain name:

The Panel understands that the expression XUXA is indeed linked to the Complainant. Not only is it registered as a trademark under its name, but it is also a part of the name of Ms. Maria da Graça Xuxa Meneghel, who is a very famous person and whose image is associated with all products and services sold or rendered by the Complainant.

On the other hand, although no Response was submitted and, therefore, no claims of legitimate interest made, a simple visit to the website shows that apparently it is a fan site. The fame of the Complainant's owner and mark confirms this fact. Previous decisions have shown that use of a domain name confusingly similar to a trademark to identify a “fan site” can only in exceptional cases be considered a “legitimate interest” under the Policy. This fact will be carefully considered in relation to the third and next element, the existence (or absence) of bad faith.

In any event, the domain in question, <xuxaonline.com> does not expressly states that the site is in fact a fan site, instead of an official one.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name, in the meaning of the second element of the Policy.

C. Existence of bad faith in Respondent’s registration and use of the domain name:

It is clear to the Panel that when the Respondent has registered the domain name <xuxaonline.com> he was aware of the previous rights owned by the Complainant and by Ms. Meneghel. Most important, the Respondent was aware that neither the Complainant nor Ms Meneghel agreed with the use of the mark and name XUXA by the Respondent to identify his website.

The referred domain name was registered in 2003, that is, after being notified by the attorneys for the Complainant, regarding the previous site named Xuxa On Line and hosted it under a home page of a Brazilian host service.

Whenever the question comes to a fan site and bad faith, one should look at previous decisions on domain names used to identify “fan sites”. These decisions are not uniform but they tend to follow a standard: having or not having a commercial use is paramount to determine the existence of bad faith. This pattern has oriented decisions rendered on WIPO Case D2000-0998, or on WIPO Case D2001-0784, D2002-0716, or even on D2003-0146. In all these cases, the question of bad faith was determined by the existence or the absence of a commercial use.

In this regard, the Complainant states the existence of commercial links on the Respondent’s website.

Nevertheless, the site infringes several rights, not only the Complainant’s or Ms. Meneghel’s, but also other people’s rights. It is possible to download web screens and screen savers with photos from Ms. Meneghel, for instance. The rights involved in these photos are being violated by the simple fact that the Respondent has no authorization from Ms. Meneghel or from the photographers, to offer these materials.

Hence, the Panel believes that, the fact that the Respondent was certainly aware that the Complainant did not agree with the use of the mark and name XUXA to identify his fan site shows that the Respondent obtained the registration of the domain name in question in bad faith. Although not completely clear, it is also likely that the Respondent has conducted some commercial activities from the webpage.

The Panel, thus, finds present the third element.

7. Decision

As outlined above, the Panel concludes that the domain name <xuxaonline.com> is confusingly similar to the Complainant’s registered trademark XUXA; that the Respondent has no rights or legitimate interest in the domain name and that the Respondent registered and has used the domain name in bad faith.

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

Alvaro Loureiro Oliveira
Sole Panelist

Dated: November 1, 2005