Editora Abril S/A v. Artmidia Comunicação Visual Criação e Arte Ltda.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Editora

Abril S/A v. Artimidia Comunicação Visula Criação

e Arte Ltda.

Case No.

D2001-0314

1. The Parties

Complainant is Editora

Abril S/A, a company existing and ruled under the laws of Brazil, based

in the city of São Paulo, State of São Paulo, Brazil, with

its principal place of business at Avenida das Nações Unidas,

7221, São Paulo, SP, Brazil.

The Respondent is Artimidia

Comunicação Visual Criação e Arte Ltda., a company

existing and ruled under the laws of Brazil, based in the city of Belo Horizonte,

Minas Gerais, Brazil, having its principal place of business at Avenida

Prudente de Moraes n. 287, 1401, Cidade Jardim, Belo Horizonte, Minas

Gerais, Brazil.

2. The Domain Name

and Registrar

The domain name at

issue is "veja.com". The Registrar is Network Solutions, Inc.

("the Registrar"), 505 Huntmar Park Dr., Herndon, Virginia

20170, USA.

3. Procedural History

The WIPO Arbitration

and Mediation Center (henceforth "the Center") received the Complaint

by e-mail and in hardcopy on March 9, 2001. The Complainant paid the required

fee.

NSI’s Verification

Response was received by the Center on March 27, 2001, confirming to be

the registrar for the domain name in question "veja.com", which

is registered in the Respondent’s name.

On March 30, 2001,

The Center sent the Notification of Complaint to the Respondent, under Paragraph

2(a) of the Rules. The Respondent answered the Complaint by fax on April

18, 2001. On April 20, 2001, the Respondent answered the Complaint by e-mail.

On April 24, 2001, the Center received the Response in hardcopy.

On May, 2001, the Center

appointed the undersigned as the sole member of the Administrative Panel.

4. Factual Background

Complainant is Brazil’s

largest diversified media organization and is known within the country,

as well as abroad. Complainant started business back in 1950 and constitute

Latin America’s largest publishing and printing enterprise.

This company publishes

an average of 200 magazines, 25 of which are major ones. Complainant publishes

around 191 million magazines a year, which turns it into the largest magazine

publishing group in Latin America.

Besides the publishing

area, Complainant operates an UHF television station and a pay-tv station,

which currently attends an average of 500,000 subscribers.

Within this universe,

Complainant publishes a weekly magazine identified by the mark VEJA, being

this publication Complainant`s "crown jewel", as indicated in

the text of the Complaint. Documents attached to the Complaint show that

the magazine VEJA is the largest publication in the country and fourth largest

selling magazine in the world, right after TIME, NEWSWEEK and US NEWS, selling

more copies than the German DER SPIEGEL and FOCUS, as well as the French

L’EXPRESS and LE NOUVEL OBSERVATEUR (Exhibits D, E and F).

Complainant states

that VEJA magazine has a paid circulation of 1,200,000 copies in Brazil

and around 3,000 subscribers abroad. VEJA magazine was first published in

1968, which states that the mark is known in the Brazilian market for more

than 32 years.

Complainant provided

copies (exhibits J to L of its complaint) of certificates for three registrations

issued by the Brazilian Patent and Trademark Office concerning the trademark

"VEJA", the oldest one resulting from an application filed in

August 31, 1965. Besides, the Complainant presented

copies of registrations obtained for trademark "VEJA" before the

US Trademark Office, as well as in Argentina, Uruguay and Paraguay (exhibits

M to Q of the Complaint) Also Complainant shows that the mark "VEJA"

is registered as a Community Trade Mark before the OHIM – Office for the

Harmonization in the Internal Market, exhibit R of the complaint.

Respondent applied

for and obtained registration for the domain name "veja.com" in

1997. Respondent is an advertising company founded in June 1989, according

to exhibit H of the Response. Respondent has a website department, which

is active since 1995, when the Iinternet became popular in Brazil.

5. Parties’ Contentions

A. Complainant

Complainant contends

that the domain name "veja.com" is identical to and confusingly

similar with their registered trademark "VEJA, registered in Brazil

since 1974 in connection with "publications in general". With

this mark Complainant publishes and commercializes the country’s most prestigious

weekly magazine, with a paying circulation above 1,200,000 copies. VEJA

magazine is the fourth largest selling magazine in the world, the first

among the magazines not published in the USA.

Complainant showed

ownership of registrations for VEJA as a trademark in Brazil, resulting

the oldest one from an application filed in 1965, as well as registrations

obtained in other countries in America, as well as a registration as a community

trade mark (exhibits J to R of the Complaint).

Also, Complainant showed

ownership of the domain name veja.com.br, registered by the Brazilian official

register and under which the Complainant has the online website for the

weekly magazine VEJA. Further, Complainant also created VEJA Radio, which

consists on a section on the website where the journalists interview main

sources on principle reports published on the week’s edition of VEJA. This

Veja Radio implied an 83% growth concerning the regular viewers of the website.

Additionally Complainant

states that VEJA magazine has had an important role in the country’s history

for the last 32 years. Created in 1968, while the country was experimenting

a military regime, VEJA magazine published several articles against the

system. Later in the 90’s, an interview with the President Collor’s brother

was the start for the process that ended with the impeachment of the President.

VEJA has acquired several different awards for the articles published, this

list consisting on exhibit C of the Complaint.

Complainant underlines

the fact that for more than three decades the eyes of the country were weekly

attentive to the articles published under the well-known trademark VEJA.

In sum, Complainant shows evidence of substantial goodwill and name recognition

in the expression VEJA, based on its intensive use in a long-term basis.

Aware of the registration

of the subject domain name, the Complainant addressed the Registrant a warning

letter, advising of its rights on the mark VEJA and requesting the transfer

of the domain "veja.com" to Complainant’s name. This letter was

sent on March 3, 2000, and no response was ever received. This letter is

shown as Exhibit I of the Complaint.

Complainant contends

that since the Respondent is a Brazilian seated, based and owned company,

doing business in the same field, it cannot deny the knowledge of VEJA magazine

or of VEJA trademark.

Complainant also states

that the absence of a response shows the Respondent’s bad faith in obtaining

the registration, aggravated by the fact that almost four years have passed

from the registration and until now Respondent has not started any use for

the domain name, either commercial, either non-commercial.

B. Respondent

Respondent alleges

that VEJA is a generic word in the Portuguese language, meaning "look",

"see". As evidence of this allegation, Respondent attaches a copy of a Portuguese/English

dictionary as Exhibit M of the Response. In addition, Respondent states

that VEJA cannot be seen as an intellectual creation.

In order to sustain

the theory, Respondent informs that no less than 144 different companies

are using the word VEJA as a trademark in Brazil at the same time, all authorized

by the Brazilian Patent and Trademark Office. Respondent uses a print out

of this Office’s data bank as evidence of the allegation (Exhibits B and

C).

Following this path,

Respondent shows, as Exhibit D, 15 abstracts from the Registry of Commerce

from the State of Minas Gerais, Brazil, which show the registration of several

different companies, all operating in that state under the trade name VEJA.

Further, Respondent

claims that the domain name in dispute "veja.com" cannot be seen

as a reference to a unique trademark, but to a generic word belonging to

the Brazilian vocabulary and used by several companies at the same time.

In this line, Respondent

brings out a list of several domain names composed by generic words, that

are currently for sale on an internet website. Crowning the allegations,

Respondent emphatically declares that there are no difference between these

domain names and the domain name in question, as all are composed of generic

words.

Also under this eloquent

line of argumentation, Respondent questions the fairness of the ICANN rules

and claims that monopoly is against democracy.

Respondent than alleges

that the Complainant failed to inform the truth in its allegations, by informing

to own exclusive rights to use VEJA mark in connection with products and

services. According to the Respondent, these allegations are false, since

VEJA is a generic word and, for such reason, cannot be considered as creative

enough to identify only one product and service.

Respondent also states

that since the Complainant’s publication is issued in Portuguese language,

only, and so is its website under the domain name veja.com.br, Complainant

does not need the domain in dispute. Respondent also alleges that almost

all companies that do business in Brazil operate under a country code domain

name, in this specific case, ".br" domain names.

Respondent informs

that the option for this specific domain name resulted from the idea of

construing a website where its clients would be able to advertise their

products. According to this company, the best name for such a site would

be exactly "veja.com", or "look", given the generic

signification of such word.

In sequence, Respondent

informs that the domain is not currently in use because, according to their

marketing scales, it is not yet time to have such website in the air. Also,

several other adverse conditions led to a delay on the opening of their

site.

Respondent comments

that no response was sent to the Complainant’s warning letter simply because

Respondent had no intention in selling the domain name and one year without

a response is a tacit way to show so.

Concluding the Response,

Respondent resumes all previous allegations and insinuates that Complainant

is acting in bad faith and intends to steal the domain name "veja.com".

6. Discussion and

Findings

The Policy, in its

paragraph 4(a), determines that three elements must be present 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 to have rights on the mark "VEJA", which is registered in

Brazil as of 1974 resulting from an application filed in 1965 and being

used regularly in that country and abroad as early as 1968. Further, the

Panel finds that the subject domain name "veja.com" is indeed

identical to the trademark belonging to the Complainant, since this mark

is entirely reproduced in the domain name registered by the Respondent.

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 names

The Panel understands

that the expression "VEJA" is indeed linked to the Complainant,

since it is not only registered as a mark in its name, but also is used

for more than 30 years to identify one of the most prestigious weekly

magazines of the world.

Further, the Complainant

provided enough evidence of the renown of the mark VEJA in the country and

abroad. Hence, the Panel understands that the Respondent, as a Brazilian

company acting in the advertising field could not be unaware of the Complainant,

Editora Abril S/A, as well as of its weekly magazine VEJA.

As for the Respondent’s

allegation, that VEJA is a generic word and shared as a trademark by more

than 140 companies, the Panel has the following comments.

The fact that a word

is dictionarized does not mean it cannot be registered as a trademark. In

fact, being the Respondent an advertising company, the Respondent must know

that the market responds quicker to an evocative mark than to a mark consisting

of a created word. Evocative marks are a reality and can be seen all over

the world.

"VEJA" is

the first person of the present imperative mode of the verb VER , or "to

look", in English. This verb has no direct relation to magazines or

to any other publishing material. For such reason, a registration was granted

to this mark by the Brazilian Patent and Trademark Office. In fact, this

is an evocative mark, as is trademark LOOK, which identifies an American

magazine, or trademark "VOICI" (French for "look here), which

identifies a French magazine. This does not mean that the mark is "generic",

as alleged by the Respondent, but that it attracts the attention of the

customers – and this is the main object of a trademark.

Besides that, one must

contend that the trademark VEJA has acquired a secondary meaning in the

Brazilian marketing, distancing from the signification appearing in the

dictionary. VEJA is currently linked to the magazine, independent of any

other registration granted by the Brazilian Office in the Past. In fact,

going through the list attached to the Response as Exhibits B and C, one

can note that several of the insertions listed refer to refused or cancelled

applications, S/A – that is, by the Complainant.

Lastly, there is no

evidence that the Respondent trades or offers any services or goods under

the VEJA mark, or that the Respondent is the owner of one of the registrations

granted by the Brazilian Office. In fact, as show Exhibit S of the Complaint,

Respondent is not directly using the domain names in question, but holding

them in an inactive manner.

Thus, the Panel concludes

that the Respondent has no rights or legitimate interests in the domain

names, for this reason being present in the dispute the second element.

C. Existence of

bad faith in Respondents’ registration and use of the domain names

It is not clear to

the Panel that the Respondent has registered the domain name "veja.com"

with the purpose of selling it to the rightful service mark owner.

Once summoned by the

letter sent by the Complainant, the Respondent simply refused to respond,

remaining silent for more than a year. However, no move was done by the

Respondent to make use of the domain name, remaining it inactive.

In fact, the Complainant

and its mark are proved to be well-known in their country of origin and

abroad. On the other hand, the Respondent does have an activity in the country

which forbids it to deny knowledge of this renown.

According to the Respondent’s

website, among their activities figures that of elaborating websites. In

view of that, it would not be difficult for the Respondent to start a site

under the domain name "veja.com" under the standards indicated

in the Response, if this was really the reason for obtaining such registration.

Further, a search at

the Registrar’s data bank show that the Respondent owns several different

domain names which are composed by famous Brazilian marks that belong to

other companies, such as "meridional.com" and "bancoalfa.com",

which are known Brazilian banks; or "datafolha.com", being "datafolha"

a prestigious pool agency; or "braspetro.com", "redeshop.com",

"globorural.com", "americanas.net".

The Panel understands

that the inactivity of the Respondent, by not using the domain registered

and consequently holding passively such domain, can be understand as an

act of bad faith. Indeed, the concept of bad faith is not limited to positive

action; total lack of action, when considered together with all the particular

circumstances of the specific case, can also be admitted within the concept,

according to the hypotheses contemplated by paragraph 4(b) of the Policy

(please see case D2000-0003 - Telstra Corporation Limited x Nuclear Marshmallows).

Hence, the renown of

the expression VEJA, the lack of activity of the Respondent in the communications

area and the absence of use of the domain names, allied to the ownership

of other domain names composed by famous Brazilian trademarks, can be considered

as enough evidence of bad faith by the Registrant.

The Panel understands

that all evidence as above shows that the Registrant obtained the registration

of the domain names in question in bad faith.

The Panel, hence, finds

present the third element.

7. Decision

As outlined above,

the Panel concludes that the domain name "veja.com" is identical

to the Complainant’s registered trademark VEJA; that the Respondent has

no rights or legitimate interest in the domain names and that the Respondent

registered the domain names in bad faith.

Therefore, pursuant

to paragraph 4(i) of the Policy, the Panel orders that the domain name "veja.com"

be transferred to the Complainant.

Alvaro Loureiro

Oliveira

Dated: May

28, 2001