Aracruz Celulose S/A v. CM Banco De Serviços SC Ltda

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aracruz Celulose S/A v. CM Banco de Servicos SC Ltda

Case No. D2003-1178

1. The Parties

Complainant: ARACRUZ CELULOSE S/A, State of Rio de Janeiro, Brazil.

Respondent: CM Banco de Servicos SC Ltd.a, Sao Paulo, Brazil.

2. The DomainDomain NameName and Registrar

DomainDomain NameName: <aracruz.com>

Registrar: Tucows, Inc. Toronto, Canada

3. Procedural History

The Complaint was filed on September 26, 2001, and in October 5, 2001

(in hard copies and by e-mail, respectively), in accordance with the requirements

of the Rules and Supplemental Rules, with proper payment being made. All formal

requirements have been observed in the Complaint, as verified by the WIPO Arbitration

and Mediation Center (the "Provider") and also by the Panel. The Complaint

was properly notified by the Provider to Respondent on October 15, 2001,

in accordance with Rules, paragraph 2(a), and a Response was timely filed

by Respondent on November 5,4, 2001. The single Panelistmember of

the Administrative Panel has been properly constituted and this e single Panelist

submitted a Statement of Impartiality and Independence. There were no further

submissions and the date scheduled for the issuance of the Panel's decision

is December 7, 2001. Language of the proceeding is English.

4. Factual Background

Complainant is a large Brazilian company, the world's leading producer of bleached

eucalyptus market pulp, founded in 1972, and owner of at least 80 (eighty) registrations

for the mark "ARACRUZ" in several countries and jurisdictions ofin

all the 7 (seven) continents. Respondent is a Brazilian company engaged in selling

real estate in rural areas. The domainDomain nameName was created by Respondent

on June 17, 2000. W, whilst Complainant's trademark registrations

are of various dates, but the vast majority of them were issued before 2000.

and, Nnotably, the U.S. certificate for reg. no. 2,384,438 states as "date

of first of use" in that country was inthe year of 1979. Aracruz is the

name of a city in the Brazilian State of Espirito Santo where Complainant has

operations (although Complainant currently has operations in many other Brazilian

cities as well). On the initiative of Complainant, there hasve been communications

between the Parties in which they tried to reach an agreement whereaccording

to which Respondent would sell the disputeddomain domain name to Complainant,

but the transaction was not concluded as because an agreement was never reached

about the price (the Complainant offered R$ 20.000,00 and the Respondent asked

for R$ 40.000,00).

5. Parties’ Contentions

A. Complainant

Complainant argues that (i) the domainDomain nameName is identical to a service

mark in which the Complainant has rights; (ii) the Respondent has no rights

or legitimate interests in respect of the domainDomain nameName; and (iii) the

domainDomain nameName was registered and is being used in bad faith. Complainant

also argues that Respondent is in the business of registering domain domain

namenames for sale (Exhibit 26 of the Complaint is a print-out of the Respondent's

web page, the authenticity of which has not been contested by Respondent, in

which it was said that "[The] company has 100 domainDomains duly registered

in the United States, with names of the 100 largest Brazilian cities, ending

<nomedacidade.com> or <nomedacidade.com>. Ideal domainDomains for

building a publicity net or to increase visitors. Negotiation of joint domainDomains

is proposed." - free translation made by the Panel; "nomedacidade"

was not translated but it could be roughly translated into "nameofthecity").

Complainant argues that Respondent registered the domainDomain Name in order

to profit from Complainant's "substantial goodwill" developed on the

"ARACRUZ" mark, falling withinin paragraph 4(b)(iv) of the Uniform

DomainDomain NameName Dispute Resolution Policy (the "Policy"). In

accordance with Complainant, tThe Respondent's willingness to sell the domainDomain

Name (the transaction was not completed due to disagreement about the price)

after being contacted for the first time by the Complainant is an evidence of

the Respondent's purpose of registering the domainDomain Name with the exclusive

purpose of selling it; accordingly, Complainant also contends that paragraph

4(b)(iv) of the Policy is applicable.

B. Respondent

Respondent argues: that the domainDomain Name is not identical to Complainant's

trademark, but rather to the name of the city of Aracruz; that it is a rural

real estate broker with an interest to "attract potential clients interested

in Aracruz municipality and its surrounding region"; and that it registered

and always used the domainDomain Name in good faith.

Respondent contends that Complainant's mark is neither "notorious"

nor it is it a trademark "of high renown" and that apart from "Wall-Street-like

world" the name Aracruz would not remind people of the Complainant but

rather it would remind people from the City of Aracruz. Respondent argues that

Complainant has failed to show evidence that its trademark is notorious and,

thus, such trademark should not enjoy protection in all classes of goods of

services.

Respondent also argues that it has rights and/or legitimate interests in the

domainDomain Name because Aracruz is a municipality, not a corporation. In addition

he argues that; and thatit is not important that onin its web site there were

no properties for sale in Aracruz because the Respondent could [presumably under

request of a potential client] perform services of approximating seller and

purchaser of a rural real estate in the city of Aracruz.

Respondent also contends that "there is not the smallest possibility of

a user's confusion of the Complainant's mark" with the Respondent's web

site; that there was no intention of profiting with the sale of the domaindomain

name to the Complainant, and that the Complainant acted in bad faith, "with

the intent to induce the Respondent to assume an attitude that could be depicted

as a bad faith, a squattering behaviour (...) in order to get freely the domaindomain

namename". Finally, Respondent also argues that the Complainant's request

is immoral, and that "it would to exploit a whole community from its

identification", meaning an "injust enrichment" of

the Complainant at the expenses of the Respondent.

6. Discussion and Findings

The Policy requires in paragraph 4(a) that 3 (three) conditions must be met

in order for a Complaint to be successful.accepted. The Panel shall herein below

examine whether each of such conditions is present or not in this case:

(i) the domainDomain nameName must be identical or confusingly similar to a

trademark or a service mark in which the Complainant has rights

Even though the Respondent skillfully contends that the domainDomain Name is

identical to the name of a city, and not to the mark owned by the Complainant,

it is clear that <aracruz .com> (the domainDomain nameName) is identical

to "ARACRUZ" (the Complainant's service mark). The fact that it is

also identical to the name of a city or, possibly to the name of a person does

not make the domainDomain Name less identical to the Complainant's trademark.

The Respondent also insists that the Complainant's trademark is neither notorious

nor of "high renown", but this is not required in the Policy for a

Complaint to be granted. The Policy only requires that the Complainant shows

evidence of ownership of his trademark, and the Complainant has done thisit

in an exhaustive manner, mentioning all its registration numbers worldwide,

as well as attaching to his Complaint copies of the several certificates of

trademark registration issued in different countries and jurisdictions. The

issue of whether or not the Complainant's trademark enjoys protection outside

the fields of activities for which it was registered is not relevant for this

condition of paragraph 4(a)(i) to be fulfilled, but it must be said that the

Complainant is such a large and famous company in Brazil that the average business

person in Brazil is certainly aware of the existence of the trademark "ARACRUZ"

and that it is owned by the Complainant. In that regard, it is worth noting

that the Respondent has not denied in his Response his prior knowledge of the

Complainant's trademark.

This condition is fulfilled.

(ii) the domainDomain Name’s owner has no rights or legitimate interests in

respect of the domainDomain nameName

The Respondent failed to show any right or legitimate interest ion the Domain

Name.domain The often repeated (by the Respondent) fact that it is the name

of a city would certainly mean that the Municipality of Aracruz would have rights

or legitimate interests on the domainDomain Name (e.g. to create a tourist information

web site for the city), but the Respondent is not such Municipality. Probably

a company located in the City of Aracruz could have sound arguments that it

would have rights or legitimate interests in the domainDomain Name, but the

Respondent is not located there (by the way, the Complainant, by the way, does

have operations in the city of Aracruz, as well as in many other cities). Simply

having the potential of making future sales of real estate in the city of Aracruz

and surrounding areas is not enough to create any right nor any legitimate interest

for the Respondent; finally, the Respondent has not shown evidence that it has

accrued any good-will at all to the "aracruz" name in relation to

the real estate business.

Thus, this condition is also fulfilled.

(iii) the domainDomain nameName has been registered and is being used in bad

faith

The Policy has non-exhaustive examples of bad faith (paragraph 4(b)) and the

Complainant argues that the situations described in paragraph 4(b)(i) and (iv)

are present in this case. The Panel agrees that the situation described in paragraph 4(b)(i)

is present herein, not because of the exchange of offers and counter-proposals

between the parties, but because of the explicit advertisement in Respondent's

web site (shown in the above-mentioned Exhibit 26 of the Complaint, a print-out

of the Respondent's web page, the authenticity of which has not been contested

by Respondent).

TheIn fact, that the Respondent answered the Complainant's initiative for an

to an agreement, discussing the possible price for sale of the domainDomain

Name, cannot be considered per se an indication that the domainDomain Name was

registered solely for sale purposes. Any sensible person would answer to any

proposition for a purchase by another person in a way that an agreement is always

possible, depending on the price. However, as in the Respondent's web site containedthere

was a notice that 100 (one hundred) domaindomain namenames with the names of

Brazilian cities were available for sale, this is, in the Panel's understanding,

a clear indication that all such domains were registered for sale, the disputed

domainDomain Name included.

Another clear sign that the Respondent's intention of registering the domainDomain

Name was mainly for sale purposes was the lack of investment on such domainDomain

nameName, as the Respondent failed to accrue any good-will at all to such domainDomain.

In fact, the domainDomain nameName simply redirected the Internet user automatically

to the Respondent's web site ("Terras do Brasil"). This circumstance

alone, in the Panel's understanding, would be also enough to also show that

the Respondent registered the domainDomain Name primarily for the purpose of

selling it.

It is clear that the most likely potential purchaser would be the Complainant,

a company so large and important in Brazil that the Respondent certainly knew

about its existence before registering the domainDomain Name. Other potential

interested parties could be the Complainant's competitors. In addition, , and

the amount asked by the Respondent (R$ 40.000,00) is certainly much higher than

his "out-of-pocket costs directly related to the domainDomain nameName".

Thus, the example of paragraph 4(b)(i) fits perfectly in this case.

The situation described in paragraph 4(b)(iv), however, does not seem to be

present herein, because it has not been sufficiently shown that the Respondent

had the intention to attract Internet users for commercial gain by creating

a likelihood of confusion with the Complainant's mark, or by creating a likelihood

of Complainant's endorsement of the Respondent's web site or location or of

a product or service in the Respondent's web site. The Respondent offered for

sale 100 (one hundred) domain names and was obviously trying to sell them to

potential buyers such as the Complainant, but as it is in a totally different

activity to those of the Complainant, it cannot be presumed - lacking further

evidence - that the Respondent had the intention to approximate his activities

to those of the Complainant.

In view of the above, based on of paragraph 4(b)(i) of the Policy, this condition

is also fulfilled.

7. Decision

Based on paragraph 4(i) of the Policy and on paragraph 15 of the Rules for

Uniform DomainDomain NameName Dispute Resolution Policy, the Panel concludes

that the conditions set forth in paragraph 4(a) of the Policy are all fulfilled

in this case and decides that the domainDomain nameName <aracruz.com>

must be transferred to the Complainant.

Gabriel F. Leonardos

Sole Panelist

Dated: December 4, 2001

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