Valor Economico S/A v. Daniel Allende

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Valor Econômico

S.A. v. Daniel Allende

Case No.

D2001-0523

1. The Parties

The Complainant is VALOR

ECONÔMICO S.A., a Brazilian company based in Av. Jaguaré, 1485

– São Paulo 05346-000, Brazil, represented in this administrative proceeding

by Ms. Joana Ulhôa Cintra de Mattos, Esq. and Mr. Luiz Edgard Montaury

Pimenta, Esq., of MONTAURY PIMENTA, MACHADO & LIOCE, Rio de Janeiro, Brazil.

The Respondent is Mr. Daniel

Allende, with an address at 815 D Street, Petaluma CA 94952, U.S.A.

2. The Domain Name and

Registrar

This dispute concerns the

<valoreconomico.net> domain name, registered with Tucows, Inc., at 96

Mowat Ave., Toronto, Ontario, Canada M6K 3MI.

3. Procedural History

On April 10, 2001, a complaint

concerning the domain name registration was electronically submitted to the

WIPO Center. On April 20, 2001, the complaint was submitted in hardcopy. On

April 11, 2001, the Center acknowledged receipt of the complaint’s electronic

version.

On April 13, 2001, the

Center requested verification of the registration data to the concerned registrar.

On April 17, 2001, Tucows, Inc. replied to this request by informing that the

domain name at issue was registered with it, that the registrant, administrative,

technical and billing contact is Daniel Allende, with an address at 815 D Street,

Petaluma, CA 94952, U.S.A., that the ICANN UDRP is in effect per section 7 of

the registration agreement, and that the domain name is currently "on hold"

within the Tucows system for the duration of the dispute.

On April 30, 2001, the

Center reviewed the Complaint to verify whether it satisfied the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the Policy), the

Rules and Supplemental Rules. On May 1, 2001, the Center sent its Notification

of Complaint and Commencement of the Administrative Proceeding to the Respondent.

The last day for sending the Response to the Complainant and to the Center was

May 20, 2001. In this communication the Center fully informed the Respondent

about the consequences of a default. On the same day, the Center connected its

computer to the <valoreconomico.net> web site, and obtained a printout

of the corresponding page. According to the tracking results of the FedEx couriercompany,

the package containing the Center’s communication could not be delivered to

Respondent because of "incorrect address". Nor could the Center reach

the telefax number 1 707 769 8754 apparently belonging to Mr. Allende. However

the notification of complaint and commencement of the administrative proceeding

was successfully transmitted to dallende@yupimail.com on May 1, 2001. The Center,

having noticed that by the expiration of the deadline, Respondent had not sent

a response, on May 28, 2001, the Center sent by e-mail its Notification of Respondent

Default to the Respondent at dallende@yupimail.com. The Panel finds that the

Center has discharged its responsibilities pursuant to Rules, Paragraph 2(a),

in that it made all reasonable efforts to notify the complaint to the Respondent.

On June 15, 2001, after

having received Roberto A. Bianchi’s Statement of Acceptance and Declaration

of Impartiality and Independence, the Center appointed him a sole panelist in

Case No. D2001-0523. The deadline for the Panel to render a decision was June

29, 2001. The Panel independently finds that it has been properly constituted,

that the complaint complied with all formal requirements, and that the fees

have been paid.

There were no orders issued.

There were no extensions.

The complaint has been

submitted in English. The registration agreement is in English. The Respondent

in its registration submission indicated an address in California, U.S.A., an

English-speaking country. This proceeding shall therefore continue in English

(Rules, Paragraph 11).

4. Factual Background

The following uncontested

facts are found by the Panel to be established as true:

Complainant, based in São

Paulo, Brazil, is a major business journalism company in Brazil, which publishes

the business newspaper "VALOR ECONÔMICO", specialized in Finance,

Business and Economics and is published from Monday to Friday with nationwide

distribution. It is one of the Brazil’s leading newspaper in its category.

Since the foundation of

the company VALOR ECONÔMICO S.A, in February 2000, the trademark "VALOR

ECONÔMICO" has been used by the Complainant to distinguish the said

newspaper which is extensively advertised throughout the Brazilian territory.

Even being a relatively new company in the market, the mark and the newspaper

"VALOR ECONÔMICO" have already established their presence in

the journalism area, and the mark "VALOR ECONÔMICO" is being

used since its foundation in connection with journalism products and services

related to Finance, Business and Economy.

Complainant has 400 employees.

Complainant has obtained a great result in its revenues since it has effectively

initiated its operation in the market, what turns to May 2000, as demonstrated:

(May 2000 - R$ 9.812.066,25 million (approximately US$ 2.753 million); June

2000 – R$ 7.624.570,13 million (approximately US$ 2.200 million); July 2000

– R$ 5.013.897,12 million (approximately US$ 1.525 million); August 2000 - R$

7.230.400,17 million (approximately US$ 2.161 million); September 2000

- R$ 4.925.504,06 million (approximately US$ 1.507 million); October 2000 -

R$ 5.431.730,50 million (approximately US$ 1.611 million); November 2000 - R$

6.571.277,49 million (approximately US$ 1.838 million); December 2000 - R$ 8.386.697,57

million (approximately US$ 2.402 million).

The Complainant is the

title holder of a Brazilian application for the mark "VALOR ECONÔMICO"

filed before BPTO on October 19, 1999, in class 11 (10) – corresponding to International

class 16 - to distinguish newspaper, magazines and periodicals in general.

The application for trademark

"VALOR ECONÔMICO" was filed in the name of EMPRESA FOLHA DA

MANHÃ S/A on October 19, 1999, and on March 6, 2001, the Official

Gazette published its assignment to VALOR ECONÔMICO S.A, so the Complainant

is the present title holder of the trademark "VALOR ECONÔMICO".

Complainant has also been

the title holder of the domain name <valoreconomico.com.br> under the

ccTLD ".br" since October 26, 1999.

The reputation of the newspaper

"VALOR ECONÔMICO" is recognized in Brazil. The newspaper has

received several awards, such as: Award Icatu of Economics Journalism; Award

XVI of Brazilian Congress of Accountancy in Mass Communication Press; Award

Bovespa in Journalism 2000; Award Esso in category: Economics Information; Award

Esso in Best Contribution in Journalism, and Award XIV Vehicles of Communication.

Respondent registered the

domain name <valoreconomico.net> with TUCOWS, INC on May 3, 2000.

5. Parties’ Contentions

A. Complainant

Complainant contends,

inter alia, the following:

· The

domain name <valoreconomico.net> is identical and confusingly similar

to the "VALOR ECONÔMICO" mark, owned by the Complainant. The

domain name reproduces exactly and integrally the trademark "VALOR ECONÔMICO".

The relevant part of the domain name in issue is "VALOR ECONÔMICO",

and this is clearly identical to the trademark for the expression "VALOR

ECONÔMICO" which has been previously filed and is owned by the Complainant.

The only difference between the <valoreconomico.net> domain name and the

"VALOR ECONÔMICO" mark is the domain name’s addition of ".net"

to the "VALOR ECONÔMICO" mark. Furthermore, the addition of

".net" to the arbitrary chosen domain name does not serve to distinguish

the domain name from the "VALOR ECONÔMICO" mark.

· The

Respondent has no rights or legitimate interests in respect of the <valoreconomico.net>

domain name. Complainant has not licensed or otherwise permitted the Respondent

to apply for or use any domain name incorporating the mark "VALOR ECONÔMICO".

Respondent, as an individual, is not commonly known or identified by the name

"VALOR ECONÔMICO". Respondent does not offer any goods or services

under the "VALOR ECONÔMICO" mark. Respondent has not acquired

trademark or service mark rights for the "VALOR ECONÔMICO" mark

in Brazil or, as far as it is known, in any other country. Respondent has just

registered the domain name <valoreconomico.net> in a foreign jurisdiction

(other than Brazil) and what is strange is that the expression "VALORECONÔMICO"

contained in such domain name is in the Portuguese language, so it is clearly

not a "coincidence" since this word does not exist in the English

language.

· Evidence

of bad faith in the registration and use is that Respondent has registered the

domain name under its own name and the link takes the users to a list of pornographic

web sites such as <amateurgirls.com>; <truecelebs.com>; <sexstories.com>;

"GREAT AMATEURS" and, specially to <youngwives.com> (which represents

the main page) that obviously tarnish the image of Complainant’s mark "VALOR

ECONÔMICO", a serious and well respected Brazilian newspaper.

· Another

important newspaper directed to Business, Economics and Finance in Brazil is

GAZETA MERCANTIL, Complainant may even say that GAZETA MERCANTIL is its number

one competitor in Brazil. The mark "GAZETA MERCANTIL" has also been

registered as a domain name <gazetamercantil.net> by Mr. Flavio Lopez

(Annex 35 to the complaint). The connection made by both web sites (<valoreconomico.net>

and <gazetamercantil.net>) takes the users to the same links, all of which

containing sexually explicit materials.

· Complainant

has no doubt that Respondent and his "friend" Mr. Lopez’s choices

for the domain names, <valoreconomico.net> and <gazetamercantil.net>

to designate the very same pornographic web sites were intentional.

· The

information stated above has already been published by the Brazilian Press.

In March 2001, the informative web site "MM ONLINE" published an article

entitled "Piracy in USA attacks the newspapers "GAZETA MERCANTIL"

and "VALOR ECONÔMICO". As mentioned by MMOnline, the reporters

tried to contact Mr. Lopez and Mr. Allende but they could not be reached. The

reporters even mentioned the idea of the names and the information disposed

in the OpenSRS Whois Database as being false.

· On

February 20, 2001, Complainant, through its attorneys, notified Respondent of

Complainant’s claim to the domain name in issue and about the Complainant’s

rights. No reply was received within the stipulated time frame, which expired

on March 2, 2001. Nor to this day.

· The

lack of response by the Respondent concerning the above-mentioned notification,

just increases Complainant’s understanding that the information about the Respondent

in the Whois database is not correct. False information would be a trick used

by Respondent in order to create barriers to possible actions taken by Complainant.

· Complainant

may even believe that Respondent may be a Brazilian citizen, hypothesis that

would, among all others evidences, increase the idea that Respondent is acting

in bad faith, since it is impossible for a Brazilian to allege that he/she does

not know one of the leading newspapers in the country.

· Respondent

has registered the domain name <valoreconomico.net> in order to prevent

Complainant, as the owner of the "VALOR ECONÔMICO" mark and

trade name, from reflecting its mark and trade name in a corresponding <valoreconomico.net>

domain name. Such conduct constitutes evidence of bad faith under Paragraph

4(b)(ii) of the Policy.

· As

mentioned above, the domain name <valoreconomico.net> contains links to

sexually explicit web sites; in view of that, Complainant understands that the

Respondent intends to offer sexually explicit links from the <valoreconomico.net>

web site. So, it is clear that Respondent registered the domain name <valoreconomico.net>

with the intent of attracting Internet users to the site by causing confusion

as to their source so that it could profit when those Internet users click through

to its links to sexually explicit web sites. In other words, by using the domain

name, Respondent has intentionally attempted to attract, for commercial gain,

Internet users to his web site, by creating a confusion with the Complainant’s

mark as to their sources. Such conduct constitutes evidence of bad faith under

Paragraph 4(b)(iv) of the Policy.

· Respondent

offers users to become members of the porn site <youngwives.com> under

payment (US $ 2.99 for the trial period and US $ 29.99 for the full membership

after that).

· By

its registration of the <valoreconomico.net> domain name, Respondent has

created a likelihood of confusion as to his affiliation with Complainant and

with Complainant’s "VALOR ECONÔMICO" mark. For example, if a

person views the <valoreconomico.net> web site, that person may then search

a WHOIS DATABASE for the registrant of <valoreconomico.net> and assume

that Respondent, whose name will appear, is affiliated with Complainant.

· By

virtue of the widespread use and reputation of the trademark "VALOR ECONÔMICO",

members of the public in Brazil would believe that the entity owning the domain

name <valoreconomico.net> was the Complainant or in same way associated

with the Complainant and its goodwill, resulting in passing off, breaches of

Brazilian consumer protection legislation and trademark infringements and mark

dilution.

· The

mark "VALORECONÔMICO" is a very well known mark in Brazil, and

it is inconceivable that the person behind the Respondent would not be aware

of this fact. Respondent’s use of the identical and confusingly similar domain

name has caused, and if not altered by the Panel, will continue to cause serious

and irreparable injury and damage to Complainant and to the goodwill associated

with the Complainant and its "VALOR ECONÔMICO" mark.

B. Respondent

Respondent is in default.

6. Discussion and Findings

Identity or Confusing Similarity

Complainant is a company

recently organized and established in Brazil. It is doing business under the

VALOR ECONÔMICO trade name. It is the title holder of a Brazilian application

for the mark "VALOR ECONÔMICO" filed before the Brazilian PTO

on October 19, 1999, in class 11 (10) – corresponding to international class

16 - to distinguish newspaper, magazines and periodicals in general. The application

pre-dates the registration of the domain name at issue (May 3, 2000). The application

was filed in the name of EMPRESA FOLHA DA MANHÃ S/A on October 19, 1999,

and on March 6, 2001, the Official Gazette has published its assignment

to VALOR ECONÔMICO S.A., so the Complainant is the present title holder

of the trademark "VALOR ECONÔMICO". Complainant has also been

the title holder of the domain name <valoreconomico.com.br> under the

ccTLD ".br" since October 26, 1999. Although the trademark registration

has not yet been granted by the Brazilian PTO, Complainant, is found by the

Panel, to be the most likely holder of rights on the VALOR ECONÔMICO trademark.

By its default, Respondent has not contended that any person or company would

have better rights to the trademark in Brazil or elsewhere other than Complainant

itself. The Panel concludes, therefore, that the requirement, in that a complaint

in these proceedings must be based on rights in a trademark, as set out in Paragraph

4(a)(i) of the Policy, is met.

A comparison of the domain

name at issue with the trademark clearly results in this Panel’s finding that

the domain name is practically identical or at least confusingly similar to

the Complainant’s mark. The only -and immaterial- differences are the lack of

the space between VALOR and ECONÔMICO and the technically necessary addition

of the gTLD ".net" in the domain name registration. The first leg

of Policy paragraph 4(a) is thus met.

Lack of Rights and Legitimate

Interests

Complainant has denied

that Respondent has any rights or legitimate interests in the domain name. Respondent

is in default and has not alleged or evidenced any circumstances for a finding

in its favor under Policy, Paragraph 4(c).

On June 21, 2001, the Panel

independently tried to establish an Internet connection with the web page under

the corresponding <valoreconomico.net> domain name, which resulted in

a DNS error with a text reading "The Page cannot be displayed" and

"cannot find server". The web site is not being used in any respect,

which means Respondent is presently not making any bona fide use, or

any fair and noncommercial use of the domain name.

A former use of the domain

name has been evidenced by Complainant in that it sufficiently has showed in

this proceeding that the <valoreconomico.net> web address was once linked

to some web site with pornographic and/or adult contents. No rights or any legitimate

interests whatsoever could be derived from such use. On the contrary, as it

will be seen next, this was a typical bad faith use of the domain name.

The second prong of the

Policy, Paragraph 4(a) is thus present.

Bad faith Registration

and Use

Complainant has proved

that Respondent linked the <valoreconomico.net> web page to adult content

or pornographic sites, to which also a web page corresponding to the domain

name <gazetamercantil.net> had been linked. This a typical bad faith use

of the domain name. As stated in WIPO Case No. D2000-1679 Playboy Enterprises

International, Inc. v. Victoriano Moreno Martín (pages 8/9) the present

interruption of a former bad faith use of a web site does not mean that there

is no bad faith use under Paragraph 4(a)(iii) of the Policy.

The Policy should not be

construed in such a manner that bad faith use should continue after the dispute

has begun or that these proceedings have been commenced. To do that would amount

to grant to any Respondent a protection against the Policy’s consequences by

simply allowing him to cease or cancel any posting of contents on the web site,

and leaving the site without any use for all practical effects. Such would be

an absurd interpretation of the Policy. On the contrary, this Panel accepts

the reasoning of the learned panelist who decided the WIPO Case No. D2000-0021

Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren on March 9, 2000,

when he stated:

"The Panel is cognizant

of the fact that ¶ 4,a(iii) uses the present tense when referring to use.

The Panel believes that the term "is being used" does not refer to a particular

point in time (such as when the Complaint is filed or when the Panel begins

deliberations), but refers to the period of time following registration of the

domain name at issue. See, Telstra Corporation Limited v. Nuclear Marshmallows,

ICANN Case No. D2000-0003, ¶ 7.6, at 9. If at any time following the registration

the name is used in bad faith, the fact of bad faith use is established. Thus,

the fact that upon remonstrance by Complainant's counsel, Respondent ceased

using the domain names at issue as links to pornographic sites, cannot alter

the fact that the bad faith act had occurred during the period following registration."

As no other use of the

web site has been showed in this proceeding, the Panel concludes that linking

the web site to pornographic or adult-oriented sites clearly shows in the instant

case the bad faith purpose for the domain name registration, consisting of attracting

Internet users to the site by causing confusion as to the source so that Respondent

could profit when Internet users looking for the web site corresponding to Complainant’s

mark would instead connect to sexually explicit web sites. This constitutes

tarnishing of and confusion with the Complainant’s mark as to the source, an

evidence of bad faith under Paragraph 4(b)(iv) of the Policy.

7. Decision

The Panel finds that the

domain name is identical or at least confusingly similar to Complainant’s mark,

that Respondent lacks rights and legitimate interests in the domain name, and

that the domain name was registered and is being used in bad faith.

Accordingly and pursuant

to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, the Administrative

Panel requires that the domain name registration of <valoreconomico.net>

be transferred to the Complainant, VALOR ECONÔMICO S.A.

Roberto

A. Bianchi

Sole Panelist

Dated: June

28, 2001