GLB Servicos Interativos S.A. v. Ultimate Search

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc)

Case No. D2002-0189

1. The Parties

The Complainant is GLB Serviços Interativos S.A., a Brazilian corporation with its principal place of business at Rio de Janiero, Brazil. The Complainant is represented by Matos & Associates, Attorneys of Rio de Janiero, Brazil.

The Respondent is Ultimate Search Inc. also known as Ult. Search Inc. of Hong Kong, China. The Respondent is represented by Dr. John B. Berryhill of Philadelphia, PA., United States of America. The Respondent is incorporated in the British Virgin Islands.

2. The Domain Name and Registrar

The domain name at issue is <paparazzo.com>. The domain name was registered with Registrar NameScout.com of Barbados (‘the Registrar’) on December 9, 2001. The name had been transferred to the Complainant by a previous registrant on August 12, 2001. At that time the Registrar was Network Solutions Inc (NSI). Registration to the Complainant had been cancelled by NSI by the date when the Respondent had acquired the name.

3. Procedural History

The Complaint submitted by the above Complainant was received on February 26, 2002,

(electronic version) and March 4, 2002, (hard copy) by the World

Intellectual Property Organization Arbitration and Mediation Center ("the

Center"). After correspondence with the Center, Complainant submitted

an Amended Complaint on March 25, 2002, (electronic) and April 2, 2002

(hard copy).

On March 6, 2002, a request for Registrar verification was transmitted

by the Center to the Registrar, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant

as required by WIPO Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with the Registrar.

Confirm that the person identified as the Respondent is the current registrant

of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es), available in the Registrar’s WHOIS

database for the registrant of the disputed domain name, the technical

contact, the administrative contact and the billing contact for the domain

name.

Confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy")

is in effect.

Indicate that, under the Registration Agreement, the registrant submitted

to the jurisdiction of the Courts as provided in the Policy.

Indicate the current status of the domain name.

Indicate the language of the Registration Agreement.

By emails dated March 19 and 20, 2002, the Registrar advised the Center

that: it had not received a copy of the Complaint from the Complainant;

the domain name was registered with it; DNS Support/Ultimate Search was

the registrant; the UDRP applied to the domain name, which was in ‘active’

status; the language of the agreement was English and an appropriate acknowledgement

of Court jurisdiction was found in the registration agreement; DNS Support/Ultimate

Search was the administrative, technical and billing contact. The registrant’s

contact details were a post-office box in Hong Kong plus a telephone

number and email address.

The Registrar has currently incorporated in its agreements with registrants

the Policy adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN").

The advice from the Registrar that the domain name in question is in ‘active’

status indicates that the Respondent has not requested that the domain name

at issue be deleted from the domain name database. It has not sought to

terminate the agreement with the Registrar.

Having verified that the Complaint satisfied the formal requirements of

the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy

("Rules"), the Center on March 28, 2002, transmitted

by post-courier and by email a notification of the Complaint, Amended Complaint

and Commencement of Administrative Proceedings to the Respondent. Copies

of the same documents were also emailed to the Registrar and to ICANN.

The Respondent was advised that a Response to the Complaint was required

within 20 calendar days in accordance with the Rules, by four sets

of hard copy and by email.

A Response was received by the Center on April 18, 2002 (electronic),

and April 22, 2002 (hard copy).

The Respondent requested a three-person Panel. Both parties have paid the

amounts due to the Center.

The Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to serve as Presiding Panelist in this case. It invited

Professor David Sorkin of Chicago, Il, United States of America and Mr José

Pio Tamassia Santos of Sâo Paulo, Brazil to be Panelists. It transmitted

to each of them a statement of acceptance and requested a declaration of

impartiality and independence.

All Panelists duly advised acceptance and forwarded to the WIPO Center

an executed declaration of impartiality and independence. The Panel finds

that the Administrative Panel was properly constituted in accordance with

the Rules and the Supplemental Rules.

On May 16, 2002, the Center forwarded to the Panel by courier the relevant

submissions and the record. In terms of Paragraph 5(b) of the Rules, in

the absence of exceptional circumstances, the Panel was required to forward

its decision by May 30, 2002.

The Panel has independently determined and agrees with the assessment of

the Center that the Complaint and the Amended Complaint meet the formal

requirements of the Rules and the Supplemental Rules.

On April 24, 2002, the Complainant, without seeking leave from the Panel,

purported to file a further document. On April 25, 2002, Respondent

did the same, presumably in response to the Complainant’s filing. The Panel

declined to accept these supplementary filings in the exercise of its discretion.

No reason for filing a supplementary document was advanced by the Complainant.

4. Factual Background

Complainant, on March 26, 2000, launched a major internet portal site named

<globo.com>. Users of the internet through drop-down menus and contextual

navigation have direct access to Globo media and publication sites. On this

portal site are many home pages some institutional, others hosted for leisure

purposes. They are often related to the products and services which <Globo.com>

offers to viewers. Amongst the home pages hosted and advertised by Globo.com

is <paparazzo.com.br>.

The Complainant applied for Brazilian trademark registrations for the name

"Paparazzo" in June 2001. Registration has not yet been granted.

Its <paparazzo.com.br> website shows "sensual pictures"

from well-known media stars particularly those from Brazilian soap operas.

The Complainant’s registration for <paparazzo.com> had been cancelled

allegedly for non-payment of registration fees. The name was then acquired

by the Respondent. The Complainant claims that it has tried to ascertain

the true existence and identity of the Respondent, said only to have been

identified by "DNS" with a Hong Kong post box number as its only

contact detail.

5. Parties’ Contentions

Complainant:

The disputed domain name is identical to the mark for which the Complainant

has sought trademark registration in Brazil and which it has been using

to provide internet services under the domain name <paparazzo.com.br>.

Complainant alleges (but has provided no supporting evidence) that the mark

is well-known in Brazil and to Brazilian communities in other countries.

Respondent was unable to verify the true existence of the Respondent which

is not using the disputed domain name for any legitimate purpose. In particular,

Respondent is not using the name in connection with a bona fide offering

of goods or services. It was given no legitimate rights by the Complainant.

It does not operate a business under the name "paparazzo" and

is therefore acting in bad faith. It registered the name in order to prevent

the Complainant from reflecting its mark in the corresponding domain name.

The Respondent is giving the impression that the Complainant has an affiliation

with it and that it is using the name to cause a substantial likelihood

of confusion and that selling or renting the domain name could disrupt the

Complainant’s business and/or tarnish its mark.

Respondent:

The Complainant is incorrect to say that ‘paparazzo’ is a fanciful made-up

word as alleged in its original complaint. It is a generic word, coming

initially from the Italian language. It was first found in the well-known

movie ‘La Dolce Vita’. The word has been incorporated into English – the

language of the registration agreement. It denotes an aggressive photographer

of celebrities who seeks candid photographs of them, usually salacious.

The word has been in English parlance for many years.

The Complainant originally alleged that ‘paparazzo’ was not a word. After

correspondence between the Respondent’s attorney and the Complainant’s attorney,

the Complainant’s attorney stated "based on your information we will

evaluate the convenience of amending the complaint". The Respondent’s

attorney had pointed to English dictionary references to the word. However,

in the Amended Complaint the allegation was still present and the Amended

Complaint was certified as correct by the Complainant’s attorney. The Respondent

claims that this certification constitutes fraud on the part of the Complainant.

The services which the Complainant claims to be attached to the mark are

described as "sensual pictures of well-known media stars". This

could mean pornographic or erotic material depending on the point of view

of the viewer.

The word "paparazzo" is not capable of acquiring a secondary

meaning sufficient to justify a trademark. Rights to a trademark are conferred

upon registration, not upon application. The Complainant bought the disputed

domain name from a speculator in August 2001, instead of bringing a

complaint under the Policy against that person.

The Respondent is, and was prior to the commencement of the dispute, actively

engaged in using the domain name <paparazzo.com> to provide advertising

referral links on a performance database of advertisers responsive to the

word ‘porn’ being referred to a search engine by an internet user. The search-ranking

along the Respondent’s webpage is determined by the value of competitive

bidding by advertisers to obtain traffic based on key words utilised by

the Respondent’s domain names.

The Respondent does not control the selection of advertisers on its search

page. It relates concepts within names having primary or generic phrases

to connect these concepts with search keywords in order to provide advertisers

with targeted customer traffic. This legitimate business of the Respondent

has been specifically documented in previous proceedings under the Policy.

Registering domain names is not an illegitimate activity nor is registering

presumptively abandoned domain names illegitimate.

For example, in Dial-a-Mattress Operating Corp v Ultimate Search, WIPO

Case No. D2000-0764, the Panel found that the use of a generic term in a

domain name as a search key to drive targeted relevant referral traffic to advertisers,

was a legitimate use of a domain name. As part of its business, the Respondent

examines lists of expiring domain names. It selects some of these for its portfolio.

This is a legitimate business.

Respondent has been the subject of 5 decisions under the Policy. It has lost

one which it was unable to challenge in the Courts of Kuwait within the relevant

time provided by the Policy. See Edmunds.com. Inc v DNS Support, WIPO

Case No. D2001-1319.

In the present case, there was a procedural delay when the WIPO Center

required an amendment of the party named as the Respondent. In correspondence

with the Center, the Complainant, according to the Respondent, ignored the

Respondent’s attorney’s requests to be provided with the Complaint and exhibits.

The Complainant also ignored the Center’s directions to provide these documents.

The Respondent is incorporated under the laws of the British Virgin Islands.

The WHOIS data for the domain name clearly identifies "DNS Support/Ultimate

Search" as the registrant and gives a postal address.

There is no evidence that the disputed domain name has been registered

by the Respondent in order to block the Complainant from using the term

‘paparazzo’. The domain names <paparazzo.info> and <paparazzo.biz>

are both registered to an individual in Germany. The domain names <paparazzo.net>

and <paparazzo.org> are registered to different parties.

There is no evidence that the Respondent knew or should have known of any

trademark application by the Respondent in Brazil. The Complainant presents

no evidence of bad faith.

The Panel is requested to find Reverse Domain Name Hijacking against the

Complainant on the grounds that the Complainant perpetuated a mistake of

fact in its Amended Complaint (ie the allegation that paparazzo was a made-up

word). Also, Complainant failed to serve the Complaint on the Respondent

despite requests from Respondent’s counsel and the Center.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents

submitted in accordance with the Policy, these Rules and any rules and

principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is

to show:

-That the domain name registered by the Respondent is identical

or confusingly similar to a trademark or service mark in which the

Complainant has rights;

-That the Respondent has no rights or legitimate interests in

respect of the domain name; and

-That the domain name has been registered and is being used in

bad faith.

In the view of the Panel, the disputed domain name is identical to the

name for which a registered trademark application is pending in Brazil.

A Complainant must show either common-law trademark rights (in a jurisdiction

that recognises such rights) or an actual trademark registration. Often

a trademark application follows a period over which a common-law mark has

been established. However, in the present case, there is insufficient evidence

of a common law trademark even if common law trademarks are possible in

a civil law country like Brazil. The Panel cannot find the first criterion

proved.

The Respondent is entitled to conduct a business of capturing generic trademark

names which become available in the marketplace – often through failure to renew

registration. In the <edmund.com> case (WIPO

Case No.D2001-1319) the Respondent was unsuccessful because the mark (Edmunds)

had been used extensively since 1966 in connection with guides to automobile

buyers. Its vehicle data was posted on the internet with 2.8 million visitors

per month. Complainant had a registered trademark dating back to 1966. Respondent,

as here, acquired the name after the Complainant had allowed registration to

lapse. The Panel was able to infer bad faith registration by reason of the large

reputation of the Complainant and the fact that a sophisticated dealer in domain

names like the Respondent should have searched the US trademark registry.

The word ‘paparazzo’ is generic of a particular word which has well-known

meaning in English, Italian and possibly other languages. There was no evidence

to justify an assumption that the Respondent should have known that the

disputed domain name was the subject of a trademark application in Brazil.

The Respondent operates in Hong Kong where the main language spoken

is Cantonese.

Accordingly in the opinion of the Panel, the Complaint must fail under

all three criteria under the Policy. There is no proof of bad faith at the

time of registration. The Respondent is using the name for what has been

held in other WIPO decisions to be a legitimate business. Accordingly in

the opinion of the Panel, the Complaint must fail.

7. Reverse Domain Name Hijacking

The Panel has demonstrated that this claim had little prospect of success

in that it failed in all three criteria of the Policy which is a fairly

unusual occurrence. There is also the strange behaviour of the Complainant

in repeating the error in the Amended Complaint when this obvious error

in the original complaint had been pointed out. The Panel is not prepared

to infer fraud as invited by the Respondent. There is also the Complainant’s

unwillingness to forward documentation to the Respondent’s lawyer even after

the WIPO Center had directed it to do so.

Rule 1 defines Reverse Domain Name Hijacking as "using the Policy in bad

faith to attempt to deprive a registered domain-name holder of a domain name."

(See also Rule 15(e).) To prevail on such a claim, Respondent must show

that Complainant knew of either the Respondent’s unassailable right or legitimate

interest in the disputed domain name or the clear lack of bad faith registration

and use, and nevertheless brought the Complaint in bad faith. See, e.g.,

Sydney Opera House Trust v Trilynx Pty. Ltd., WIPO

Case No. D2000-1224, (October 31, 2000). Further, when determining

whether the Complainant brought the Complaint in bad faith, the Panel should

consider both "malicious intent and recklessness or knowing disregard of

the likelihood that the respondent possessed legitimate interests." Goldline

International, Inc. v Gold Line, WIPO

Case No. D2000-1151 (January 4, 2000) citing, Loblaws, Inc.

v Presidentchoice.inc / Presidentchoice.com, Case Nos. Af-0170a to – 0170c

(eResolution, June 7, 2000).

The Panel knows of no case where conduct by a Complainant after the Complaint

had been filed, as described above, was held to have been a factor in a

finding of Reverse Domain Name Hijacking. It sees no reason why it should

not, since a Reverse Domain Name Hijacking declaration must take into account

equitable considerations. This conduct must however be makeweight. The primary

enquiry must be whether the Complainant instituted the proceeding without

having any real prospect of success.

The Panel considers that there could not have been any informed expectation

by the Complainant that the Complaint would succeed on the first criterion

under the Policy. The Complainant seemed to think that the possession of

the domain name <paparazzo.com.br> was enough to entitle it to <paparazzo.com>.

Evidence of widespread use and public acceptance of the name was sparse.

Moreover, the Complainant could not realistically have expected that an

entity in either the British Virgin Islands or in Hong Kong would necessarily

have heard of a mark for a generic name used by a firm in Brazil. Accordingly,

the Panel is prepared to make a finding of reverse domain name hijacking.

8. Decision

(a) The Complaint is denied.

(b) The Complainant is guilty of Reverse Domain Name Hijacking.

Hon. Sir Ian Barker QC

Presiding Panelist

Professor David Sorkin

Panelist

Mr José Pio Tamassia Santos

Panelist

Dated: May 29, 2002