Churrascaria Porcão Ltda. v. Prime Products International, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Churrascaria

Porcão Ltda. v. Prime Products International, Inc.

Case No.

D2001-0535

1. The Parties

The Complainant is Churrascaria

Porcão Ltda., a Brazilian company with an address at Praia Belo Jardim,

285, Rio de Janeiro, Brazil, represented in this proceeding by Ms. Claudia

Maria Zeraik, Esq. and by Mr. Edson Diogo de Oliveira, Esq., of Rio de Janeiro,

RJ 20241-080 Brazil.

The Respondent is Prime

Products International, Inc., with an address at 7206 N.W., 31st

Street, Miami, Florida, 33122, U.S.A., represented in this proceeding by Mr. Ury Fischer,

Esq., of Lott & Friedland, P.A., Coral Gables, Florida 33134-1098, U.S.A.

2. The Domain Name and

Registrar

The disputed domain name

is <porcao.com>, registered with NSI, of Herndon, Virginia, U.S.A.

3. Procedural History

On April 11, 2001, a complaint

for decision in accordance with the Uniform Domain Name Dispute Resolution Policy

("Policy") of the Internet Corporation for Assigned Names and Numbers

("ICANN"), ICANN’s Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules"), and the World Intellectual Property Organization

("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules") was electronically submitted before

the WIPO Arbitration and Mediation Center ("Center"). On April 17,

2001, the Center acknowledged receipt of the complaint. On April 18, 2001, the

complaint was submitted in hardcopy.

On April 18, 2001, the

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

On April 19, 2001, Network Solutions Inc. replied to this request by informing

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

Prime Products International, Inc., that the administrative and billing contact

is Lim, Kooi and that the technical contact is KCL, Domain Accounts. The registrant

and all contacts have the same address at 7208NW 31st Street, Miami.

The service agreement in effect is version 5. The domain name registration is

in active status.

On April 21, 2001, the

Center verified the complaint’s compliance with formal requirements. On the

same day the Center obtained a printout of the Web page corresponding to the

web page under the domain name at issue. On April 23, 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 12, 2001. On May 12, 2001, the Respondent sent its

Response to the Center. On May 21, 2001, the Center sent its acknowledgement

of receipt.

On May 21, 2001, the Complainant

submitted a supplementary filing with some comments on the Response, and requested

the Panel to admit the filing.

On June 7, 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. D2001-0535. The deadline for the Panel to render a decision was June

20, 2001.

On June 18, 2001, by Procedural

Order No. 1 the Panel admitted the Complainant’s request regarding its supplemental

filing of May 21, 2001. In line with the principle of equal treatment, the panelist

allowed the Respondent to submit to the Center, on or before June 23, 2001,

a reply by e-mail to Complainant’s additional comments, with copy to the Complainant

as set out in the Rules. Pursuant to Rule 10(c), the Panel thereby reset the

deadline for issuing a decision in this matter to July 6, 2001.

On June 23, 2001, (within

the established deadline) Respondent sent by e-mail to the Panel its Reply to

Complainant’s submission of May 21, 2001, with copies to the Complainant and

the WIPO Center. The Panel acknowledged receipt of Respondent’s Reply.

There were no other orders

issued. There were no further extensions.

Both the complaint and

the response have been submitted in English. The registration agreement is in

English. This proceeding shall therefore continue in English (Rules, Paragraph

11).

4. Factual Background

The following facts have

not been contested:

Complainant is Churrascaria

Porcão Ltda., known as PORCÃO by the public in general, a Brazilian

steakhouse based in Rio de Janeiro, Brazil, since May 1975. PORCÃO has

presence in Brazil with nine restaurants and abroad with restaurants in Miami,

Lisbon and Milan. Churrascaria PORCÃO renders barbecue restaurant services.

Since 1996 a PORCãO CHURRASCARIA restaurant is based in Miami, Florida,

U.S.A.

Complainant owns a trademark

registration in Brazil for the PORCÃO mark, Registration No. 007058438,

in Class 38.60, filed in the Brazilian Patent and Trademark Office on October

05, 1978, and in force since January 25, 2000, (renewal) for bar, restaurant,

buffet services and the like. The PORCÃO CHURRASCARIA (and design) mark

is registered in United States under registration No. 2287591, filed on July

02, 1998 and granted on October 19, 1999, in international class 42. In Italy

the PORCÃO CHURRASCARIA (and design) mark is registered under No.601254,

filed on September 07, 1990 and granted on July 13, 1993 in int’l class 42.

In Portugal the PORCÃO CHURRASCARIA (and design) mark is registered under

No. 286.929, filed on October 26, 1992 and granted on July 12, 1994 in int’l

class 42. Complainant also registered the PORCÃO (and design) mark as

a European Community Trademark, under No. 46.309 filed on May 26, 1997 and granted

on December 15, 1998, in int’l class 42. Complainant also filed the PORCÃO

CHURRASCARIA (and design) mark in Argentina, under No. 2.248.875 on October

27, 1999 in int’l class 42. Complainant also filed the PORCÃO CHURRASCARIA

(and design) mark in Uruguay, under nº 318.127 on November 04, 1999 in int’l

class 42. In Paraguay the PORCÃO CHURRASCARIA (and design) mark is registered

under nº 227.412, filed on October 29, 1999 and granted on August 2, 2000, in

int’l class 42. Complainant also filed the PORCÃO (and design) mark in

Spain, under nº 1747169 on February 23, 1993 in int’l class 42.

Respondent registered the

<porcao.com> domain name on July 9, 1996 with NSI.

On June 17, 2001, the Panel

tried to connect its computer to the <porcao.com> web site by using Internet

Explorer. The attempt resulted in a DNS error consisting of a text that "the

page cannot be displayed" and that "cannot find server".

According with the NSI

reply to the Center’s request for data confirmation, the applicable service

agreement is version 5, which incorporates by reference the ICANN UDRP in effect.

This Panel has thus jurisdiction in this case.

5. Parties’ Contentions

A) Complainant contends,

inter alia, the following:

- The <porcao.com>

domain name is identical or confusingly similar to Complainant’s PORCÃO

mark.

- Respondent has no

rights or legitimate interests because Respondent’s use of the domain name is

not in connection with a bona fide offering of goods or services. A person who

visits <porcao.com> on the Internet sees only a page titled "The

page cannot be found." Respondent, as an entity, is not commonly known

or identified by the name "PORCÃO", it is identified by its

name Prime Products International, Inc. Respondent does not operate a business

or other organization commonly known as "PORCÃO", or offer

any goods or services under the PORCÃO mark. Respondent has not acquired

trademark or service mark rights for the PORCÃO mark in Brazil nor in

the USA where it is established. Respondent is not making a legitimate non-commercial

or fair use of the domain name. Respondent is simply not using the <porcao.com>

domain name for any legitimate purposes, other than to sell the domain name

to Complainant. Respondent is not using the domain name <porcao.com> for

an active web site since its registration, until the date of this complaint,

April 9, 2001, i.e., it is not using for more than 4 (four) years, what characterizes

that Respondent is a passive holder of such domain name. Respondent is not a

licensee of Complainant, nor is Respondent otherwise authorized to use Complainant’s

PORCÃO mark or apply for or use any domain name incorporating the PORCÃO

mark. The word "PORCÃO" is a distinctive and characteristic

word, taken from the Brazilian vocabulary, and is being used extensively to

identify, advertise, market and promote its typical Brazilian Steakhouse restaurant

services in Brazil and abroad, and as such is not one that individuals or entities

would legitimately choose unless seeking to create an impression of an association

with Complainant or for purposes of selling the domain name to Complainant.

- Respondent has registered

and is using the <porcao.com> domain name in bad faith. Respondent does

not conduct any legitimate commercial or non-commercial business under the PORCÃO

mark. Respondent is established in Miami and has registered the <porcao.com>

domain name on July 09, 1996, i.e., 6 months after the opening of PORCÃO’s

Steakhouse in Miami, which demonstrates the Respondent’s bad faith intent of

registering the domain name <porcao.com>, to then sell it to Complainant.

Respondent has registered the <porcao.com> domain name for the purpose

of selling or otherwise transferring the domain name registration to Complainant

for valuable consideration in excess of Respondent’s documented out-of-pocket

costs directly related to the domain name. Respondent has registered the <porcao.com>

domain name in order to prevent Complainant, as the owner of the PORCÃO

mark, from reflecting its mark in a corresponding <porcao.com> domain

name. The message in Respondent’s <porcao.com> domain name that the

page cannot be found for more than 4 years, demonstrates Respondent’s intent

to prevent Complainant from reflecting its PORCÃO mark in a corresponding

<porcao.com> domain name unless Complainant pays to purchase the domain

name from Respondent. By registering the <porcao.com> domain name, Respondent

is diverting consumers away from the official site of Complainant, because the

<porcao.com> site gives to consumers, especially those that are abroad,

the impression that Complainant does not have a web site, and making it difficult

for Complainant’s customers and the general public to locate Complainant’s official

web site. By its registration of the <porcao.com> domain name, Respondent

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

and Complainant’s PORCÃO mark. For example, if a person views the <porcao.com>

web site and sees that the "page cannot be found," that person may

then search a Whois database for the registrant of <porcao.com> and assume

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

- If Respondent sells

the <porcao.com> domain name to a competitor of Complainant, that competitor

of Complainant could use the <porcao.com> domain name to disrupt the business

of Complainant and cause a substantial likelihood of confusion and substantial

actual confusion. In fact, sale or use of this domain name by any other company

could disrupt Complainant’s business and cause substantial confusion among persons

trying to reach Complainant’s business and addresses over the Internet. Respondent,

since the registration of the domain name <porcao.com>, up today, has

not taken any positive action in connection to such domain name. Even a passive

holding of the domain name amounts to "acting in bad faith." See

Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003,

Administrative Panel Decision, WIPO Arbitration and Mediation Center, 7.9-7.12.

Respondent’s bad faith intent is strongly supported by the fact that Complainant

and its mark have a strong reputation and are widely known, especially in light

of the famous clientele that uses to go in Porcão’ restaurants, chiefly

in Miami, and that Respondent has not shown up today, a web site under the domain

name <porcao.com>.

- The Whois database

shows that Respondent currently owns other domain names and there are no existing

websites in relation to many of them. Respondent has actually not taken any

positive action related to many domain names it owns, including <porcao.com>,

what suggests that Respondent intends to obtain profit from the commercialization

of those domain names.

- Respondent’s use of

the domain name <porcao.com> is diluting and weakening the unique and

distinctive significance of the PORCÃO mark. Respondent’s use of the

domain name <porcao.com> could tarnish the PORCÃO mark by giving

the impression that Complainant, or an affiliate of Complainant, despite its

Latin, North American and worldwide presence and reputation somehow could not

get a web site to work.

B) Respondent contends,

inter alia, the following:

- The present dispute

arises out of Complainant's misguided notion that it has exclusive worldwide

trademark rights to the use of, and to exclude others from using, the word "porcão",

the Portuguese translation of the English word "pig", not only in the Internet

context but also in general parlance. Complainant does not enjoy such exclusive

rights and therefore cannot meet its initial burden of establishing that the

complaint is based on Complainant having acquired senior trademark rights over

the domain name in question.

- Moreover, to the extent

Complainant can establish it is the owner of a trademark, the domain name in

question is neither identical nor confusingly similar to that mark. In addition,

because the domain name in question is composed of only the word "porcão",

a generic noun over which nobody enjoys exclusive rights, the Respondent has

a legitimate interest in respect to the use of the word in its domain name.

- Complainant has altogether

failed to present any evidence that Respondent registered or used the domain

name in bad faith. In fact, it is Complainant who has demonstrated bad faith

in bringing the present Complaint nearly five (5) years after registration of

the subject domain name by the Respondent without ever voicing any concern over

use of the domain name. Further evidence of the Complainant’s bad faith is demonstrated

in the libelous statements in the Complaint, which portray the Respondent as

an unscrupulous cybersquatter without presenting the Panel with even a shred

of evidence to back up its claims. Complainant’s libelous and unsubstantiated

statements are made in violation of the Federal laws of the United States and

those of the State of Florida and may form the basis of separate legal action

by the Respondent against the Complainant.

- In brief, Complainant

has failed to meet its burden with regard to all three elements it is required

to prove under Paragraph 4(a) of the Policy and therefore the Complaint should

be denied and the Panel should not grant the relief sought.

6. Discussion and Findings

Identity or Confusing Similarity

Complainant has evidenced

trademark rights in the PORCãO service mark, at least since its registration

of January 25, 1980 in Brazil, as well as by its registrations in Italy (granted

in July 1993) and Portugal (granted in July 1994), prior to the domain name

registration. The Portuguese word PORCãO means "big pig" in

English (see U.S. TESS printout as complaint’s Exhibit F). In Portuguese the

suffix ãO (nasal sound) adds the idea of "big" to a noun, as

would the Spanish ON and the Italian ONE suffixes.

The Brazilian trademark

registration certificate is for PORCAO (denominative trademark) instead of PORCãO

simply because that computerized registration system does not provide for characters

such as "ã". A similar situation exists with regard to the

registration of domain names. Anybody wishing to register <porcão.com>

would have to register <porcao.com>.

The Panel finds that the

<porcao.com> domain name is confusingly similar to the PORCãO and

PORCãO CHURRASCARIA service marks of the Complainant, and that therefore

the first prong of the Policy is present (Policy, Paragraph 4(a)(i)).

Rights and Legitimate Interests

in the Domain Name

Complainant has contended

that Respondent lacks any rights or legitimate interests in the domain name,

and has specifically denied that any of the circumstances of Policy, Paragraph

4(c) be present in Respondent’s favor. Respondent contends that PORCãO

is a common use or generic word, and that Respondent’s rights in registering

such term derive from the "first come, first served" principle.

Respondent alleged that

PORCãO means "pig". The Panel considers that

such interpretation seems

supported by evidence furnished by Complainant itself. See article by

Jen Karetnick, Exhibit "O" of the complaint, stating: "Then I

visited the churrascaria Porcão (Portuguese for "pig")

in the Four Ambassadors Hotel on South Bayshore Drive (…)".

This means that at least

that for some English-speaking persons the word PORCãO may translate

as "pig". In any case both PORCO and PORCãO are common words

in the Brazilian-Portuguese language, referring to "pig" or "big

pig". See Dicionário Brasileiro Espanhol-Português

Português-Espanhol, Oficina de Textos, São Paulo, 1996, page 807,

where entries exist for both PORCO and PORCãO (masculine gender nouns).

This fact affords support to Respondent’s allegation that at the moment of registration

of <porcao.com> it had in mind to develop a web portal dedicated to the

agricultural sector in Brazil or other Portuguese-speaking countries.

The Panel cannot accept

Complainant’s argument that the most appropriate word for Respondent’s alleged

purpose of developing an agricultural web portal should be PORCO or PIG (instead

of PORCãO). In this respect the Panel does not believe that a registrant

must have any specific nationality or native language, the lack of which would

have the effect of preventing it from registering a particular domain name.

Nor must a registrant be fluent in any particular language as a requisite for

a domain name registration.

It is true that no use

of the web site for the alleged purpose of developing a web portal has been

evidenced by Respondent, either in the intended agricultural field or in any

other respect. It is also true that Complainant waited almost five years to

show some interest in the domain name by initiating the present proceeding.

Even if Complainant’s inaction does not necessarily amount to "acquiescence"

(as contended by Respondent) the Panel notes that PORCãO is a common

use word, and that during a considerably long period following registration

the domain name <porcao.com> remained unchallenged by Complainant.

Therefore the Panel is

inclined to accept that in this particular case the principle "first come,

first served" was a sufficient basis for acquiring rights or legitimate

interests in the (common use) domain name at issue. Even if Respondent has not

proved that any of the circumstances of Policy, Paragraph 4(c) are present in

its favor, the Panel finds that Complainant has not evidenced that Respondent

lacks rights or legitimate interests in a domain name basically consisting of

a common use word (Policy, Paragraph 4(a)(ii)).

The Panel’s conclusion

about the common use nature of the word PORCãO should not be construed

as a finding that any of the Complainant’s trademark applications or registrations

are not in compliance with the respective trademark laws and regulations, as

they may be applicable. An administrative proceeding under the Policy is not

the proper forum to decide about such questions.

Bad Faith Registration

and Bad Faith Use

Complainant has not proved

its contention that Respondent’s primary purpose at the moment of the domain

name registration was to transfer it to Complainant for a profit. Nor has Complainant

submitted any other evidence of bad faith registration or bad faith use.

The list of domain names

held by Respondent (<acuarela.com>, <cuento.com>, <kepong.com>,

<lumut.com>, <mahal.com>, <papoula.com> <perdana.com>,

<products.net>, <showz.com>, <silvina.com>, <strawberrypark.com>,

<sungaiwang.com> or <traducelo.com>) does not allow the Panel to

conclude that "a pattern of such conduct" as described in Policy,

Paragraph 4(b)(ii) is present in this case, because Complainant failed to prove

that such domain names are not generic or common use words, or that such domain

names would reflect or correspond to third parties’ trademarks. This in turn

prevents the Panel to find that the purpose of the domain name registration

was to create an obstacle for Complainant to reflect its mark in a domain name.

The Response accurately

shows this lack of evidence of the complaint. Respondent is also right that

the reasoning of Telstra should not be applied in the present case, because

the relevant circumstances required for concluding that inactivity amounts to

a positive bad faith action are not present in this case.

In many cases where this

Panel (like many other panels) has followed the doctrine established in Telstra

the Panel considered a set of circumstances which, considered together,

indicated that inactivity could amount to positive bad faith action. One cannot

forget that the much-cited Telstra case refers inter alia

to the particular situation where the respondent (in default and unavailable

for notification at the address furnished for registration purposes) was most

likely a resident in Australia, and that "Telstra" is the famous trademark

of the Australian telecommunications company. "Telstra" is in no way

a generic or common use word.

In the present case the

registrant has its domicile in the U.S. and the Complainant derives its trademark

rights on PORCãO or PORCAO mainly from a Brazilian registration. Complainant´s

registrations in Italy and Portugal, which also pre-date the domain name registration,

are for the PORCãO CHURRASCARIA (and design) mark. The U.S. service mark

was applied for and granted after the domain name had been registered, and in

any case it reads "PORCãO CHURRASCARIA" (a disclaimer on CHURRASCARIA

exists).

The Panel considers that

the <azaleia.com> case – WIPO Case D2000-1745 referred to by Complainant

in its "additional comments" of March 20, 2001,– differs from the

present case. In Azaleia the learned panelist found inter alia that

respondent had registered many other domain names corresponding to third parties’

marks or celebrities names, which does not resemble the situation in the present

case.

Complainant has failed

to prove that the third leg of the Policy is present (Policy, Paragraph 4(a)(iii)).

7. Decision

The Panel has found that

the domain name registration of <porcao.com> is confusingly similar to

Complainant’s mark. However Complainant has not succeeded in evidencing that

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

Respondent has registered and is using the domain name in bad faith.

For the reasons above the

complaint is denied. Pursuant to Policy, Paragraph 4(i) and Rules, Paragraph

15, the Administrative Panel orders that the domain name registration of <porcao.com>

should not be transferred to the Complainant.

Additionally, and contrary

to Respondent’s contention, the Panel does not find that Complainant has brought

its complaint in bad faith.

Roberto

A. Bianchi

Sole Panelist

Dated: July

6, 2001