Pilkington Brasil Ltda. v. Bac do Brasil Ltda.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pilkington Brasil Ltda. v. Bac do Brasil Ltda.

Case No. D2002-0394

1. The Parties

The Complainant is Pilkington Brasil Ltda., Rodovia Presidente Dutra,

Km 131/133 – city of Caçapava, State of São Paulo, Brazil.

Represented by Wilson Pinheiro Jabur, Esq, José M. Horta,

Esq., Pinheiro, Nunes, Arnaud & Sacatamburlo S/C, Rua José Bonifácio

nº93, 7th and 8th floors, City of São

Paulo, State of São Paulo, Brazil.

The Respondent is Bac do Brasil Ltda., Alameda Canuri nº 72,

City of São Paulo, State of São Paulo, Brazil.

2. The Domain Name and Registrar

The domain name at issue is <blindex.com>. The registrar is Network

Solutions, Inc. (the "Registrar"), 21355 Ridgetop Circle,

Dulles, VA 20166, United States of America.

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

an electronic copy of Complaint on April 28, 2002, and on May 2, 2002,

in hardcopy. The Complainant paid the required fee.

On April 30, 2002, the Center sent an Acknowledgement of Receipt of Complaint

to the Complainant.

On May 6, 2002, the Center verified that the Complaint satisfies the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy

(the "Policy"), the Rules for Uniform Domain Name Dispute Resolution

Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On May 6, 2002, the Center also sent to the Respondent, with a

copy to the Complainant, a Notification of Complaint and Commencement of

Administrative Proceeding together with copies of the Complaint. This notification

was sent by the methods required under paragraph 2(a) of the Rules. The

formal date of the commencement of this administrative proceeding is May 6, 2002.

On May 28, 2002, the Center sent a Notification of Respondent Default.

No Response has been received by the Respondent.

After receiving a completed and signed Statement of Acceptance and Declaration

of Impartiality and Independence on June 4, 2002, the Center notified

the parties of the appointment of a single-member panel consisting of Eduardo

Magalhães Machado, Esq. ("the Sole Panelist").

4. Factual Background

The trademark upon which the Complaint is based is BLINDEX.

The Complainant said that its first use of the expression BLINDEX dates

January 23, 1951 (in connection with its business and as a trade

name, since Complainant was incorporated on February 10, 1989,

under the name BLINDEX VIDROS E SEGURANÇA LTDA, after a corporate

restructuring that occurred at Santa Lúcia Cristais Blindex Ltda,

which was constituted on January 23, 1951).

Complainant filed the trademark BLINDEX in Brazil in the year 1958 and

the registration was achieved in June 26, 1958, (duly renewed)

under the serial nº 002.766.507 in local class 20.20 to distinguish

"glasses, crystals and mirrors in general". Such registration

for the trademark "BLINDEX" was declared notorious by the Brazilian

Trademark Office.

Along with such registration, Complainant is also entitled to 17 registrations

in Brazil incorporating the expression "BLINDEX", all currently

valid.

Complainant also owns the US trademark registration nº 136845, granted

on November 5, 1985, and the Chilean trademark registration nº

536967 granted on April 5, 1999, for the mark "BLINDEX"

and the country code top level domain <blindex.com.br>.

The Complainant declares that it is one of the largest manufactures of

glass in Brazil, being a market leader in its sector, supplying the automotive,

whitegoods and civil construction market as well as the specialized shower

screen market. The products identified by that mark represent nowadays 11%

of Brazilian market of shower cubicles, 22% of laminated glass market and

7% of the installation market.

Complainant also states that the trademark represents approximately R$

380.000.000.00 (roughly US$ 160 million) in the complainant´s assets and

shows percentages of up to 89% of public knowledge and recognition of the

mark (as pool conducted in December 2000 by the Gallup Organization).

As per the documentation attached by the Complainant, on April 28, 1998,

Respondent registered the domain name <blindex.com> with Network Solution, Inc.

From the date of registration and until after the Respondent was put on

notice by Complainant of its legal rights, Respondent made no active use

of the domain name.

Print outs enclosed in the Complaint obtained from the website relating

to the <blindex.com> domain name proved that the only content of the

site was a message offering the domain name for sale for a minimum of US$

50,000.00.

Besides, Complainant has also demonstrated that Respondent registered at

least 12 (twelve) ".com" and ".com.br" domain names

which reproduce third parties’ trademarks, trade names and acronyms.

On July 31, 2000, Complainant sent a letter notifying Respondent of the

Complainant’s rights on the BLINDEX trademark alerting Respondent that Complainant

considered Respondent´s registration of the <blindex.com> domain name

to be trademark infringement.

On August 8, 2000, Complainant received a response from the Respondent

claiming that the registration was an attempt to reach the North American

market for the export of equipment for the blind, thus being "blin"

for "blind" and "ex" for "express" or "export".

5. Parties' Contentions

5.1 Complainant contends that:

a) The domain name <blindex.com> is identical, and therefore confusingly

similar to the trademark BLINDEX, because there is an absolute similitude between

the word "blindex" in the trademark and in the domain name.

The <blindex.com> domain name is also confusingly similar to the

its previously registered local country domain name in Brazil <blindex.com.br>.

b) Respondent has no legitimate interest in the contested domain name, because:

i) "BLINDEX" is not a generic term, nor descriptive of Respondent´s

products, and is not a dictionary word either in Portuguese, English, French

or Italian languages.

ii) "BLINDEX" is a coined word created by the antecessor of the Complainant

in 1951.

iii) Respondent was constituted on April 3, 1995, currently having

as business activity the "retail commerce of electrical and electronic

materials (wires, fuses, switches, outlets, batteries, electrical switches,

voltage regulators, coils, transistors, valves, electronic tubes radio and tv

accessories, lamps, etc) exclusive for vehicles, auxiliary services rendered

to companies, to entities and to individuals not specified or not classified,

retail, commerce of chemical, pharmaceutical, veterinary and odontological products,

import and wholesale commerce of imported products". Respondent´s activities

do not relate to the products commercialized under the "BLINDEX" trademark

and Respondent has never been known to be related or associated to said mark.

iv) The element "BLINDEX" does not appear in the Respondent´s trade

name, nor in its name, surname or nickname of any of its partners;

v) Respondent has never used the domain name, at least not before any notice

of this proceeding. The only use made by the Respondent of the mentioned domain

name was to offer it for sale for the minimum amount of US$ 50,000,00. Since

such amount is much higher than the amounts disbursed to register and maintain

the domain name, so it is clear that it is an out of pocket amount demanded

by the Respondent to sell or transfer the domain name, thus aiming to have a

clear commercial gain.

vi) Trademark "BLINDEX" has been registered in Brazil since 1962,

where both Complainant and Respondent are domiciled. Thus, at least 35 years

before Respondent registered the disputed domain name, it was a matter of public

record in Brazil that "BLINDEX" was a registered trademark that had

also been declared notorious.

vii) A pool conducted by The Gallup Organization on the public´s knowledge

of and association to the "BLINDEX" trademark shows percentages of

up to 89% of public knowledge and recognition of the mark. This fact makes even

more unreasonable to believe that the Respondent could not have had knowledge

of Complainant´s mark.

c) The <blindex.com> domain name has been registered and is

being used in bad faith, because:

i) Respondent has registered numerous domain names which reproduce

trademarks and trade names of other third parties as well as acronyms

relating to Official Bodies of the Brazilian Government;

ii) Respondent is preventing the Complainant in this proceeding

from using its mark in the ".com" top level domain name

and the Respondent intent to profit from selling of its domain name

registrations to the legitimate owner of the trademark;

iii) Respondent acts as defendant in a lawsuit filed by Sotequi

STI International, in which decision, rendered by the Judge of the

33rd State Civil Court

House of the State of São Paulo City, it has been recognized

that defendant (Respondent) "acted in an admissible and unacceptable

manner" when registering a series of domain names, ruled in favour

of the to plaintiff and ordered the transfer of the disputed domain

names;

iv) Respondent has never used the domain name <blindex.com>

to export to the United States equipment for the blind, as alleged

in its r eply to the warning letter addressed by the Complainant;

v) Respondent has offered the domain name for sale, for an amount

much higher than what is reasonably disbursed with registration and

maintenance fees (US$ 50,000,00), even though after having been warned

about the Complainant´s rights thereto.

vi) Respondent has no relation with the "BLINDEX" element

(it is not included in its name, nor is it in the name, surname or

nickname of its partners or products), and

vii) Respondent and Complainant are both domiciled in Brazil,

in view of that Respondent and could not be unaware of the Complainant´s

mark.

The Response

The Respondent did not submit a Response before the Center during the expected

timeframe.

6. Discussion and Findings

The Policy institutes in Paragraph 4 a.(i) the cumulative elements that

shall be proved by the Complainant to succeed in an administrative proceeding

for abusive domain name registration. We will examine each one of these

elements in the following points.

6.(i) Identity or Confusing Similarity

Since the particle ".com" is merely an attribute to this kind

of gTDL domain names, the Panel finds that, in view of the above, the trademark

BLINDEX is identical to the domain name <blindex.com>. Therefore,

the requirement of Paragraph 4 a.(i) has been met.

6.(ii) Respondent’s Rights or Legitimate Interests in the Domain

Name

This Panel does not consider "Blindex" to be a generic term,

a common word, or even a word possible to find in the English or Portuguese

dictionaries or in a dictionary of any other language nor a fantasy composition

between two or more words included in a dictionary.

The trademark BLINDEX is therefore distinctive.

The only time that Respondent used the term "blindex" was when

he registered it as a domain name. As per the evidence, Bac do Brasil Ltda.

does not have any enterprise or business known with this denomination, nor

any trademark containing this word, nor any other link of any kind with

the term.

The Policy states that a respondent can demonstrate its rights and legitimate

interests in the domain name by showing its efforts made before any notice

of the dispute to use the domain name in connection with a bona fide offering

of goods or services.

In this case, Respondent has received notice of the dispute as of July 31, 2000,

and made no use of the domain name other than offering it for sale, so Respondent

failed in demonstrating the above mentioned situation. The Policy recognizes

that actual use of the domain name is not required to show a right or legitimate

interest in the domain name. Evidence of a demonstrable plan to make bona

fide use of the domain name may be sufficient. Here, however, Respondent

has failed present evidence demonstrating that it had any plan for a bona

fide use of the domain name prior to the notice of the dispute.

Moreover, both parties are established in Brazil and the Complainant is

the title holder of the registration for trademark "BLINDEX" (nº

002.766.507) in Brazil (with the notorious status) in US (registration nº

1.368.845) and in Chile (registration nº537.967).

On this basis, the Panel concluded that the Respondent has no rights or

legitimate interests in the domain name <blindex.com>. Therefore,

the requirement of Paragraph 4 a.(ii) is met.

6.(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith

This Panel is of the opinion that the registration of the domain name <blindex.com>

took place in bad faith. As circumstances supporting this conclusion, it

should be mentioned first of all that no legitimate interest or use in or

with respect to the sign BLINDEX could be established on the side of the

Respondent.

Respondent’s registration of the disputed domain name with full knowledge

that the name belonged to Complainant infringed the Registrar Service Agreement

in §17 (ii), that states:

"to the best of your knowledge and belief neither the registration

of your domain name nor the manner in which you intend to use such domain

will directly or indirectly infringe the legal rights of a third party".

Indeed, taking into consideration Complainant’s development and fame across

Brazil, it may be reasonably assumed that Respondent knew of the existence

of Complainant and of its "BLINDEX" trademark, and nevertheless

proceeded with the registration of the litigious domain name.

Another important point is that Respondent has registered several domain

names which are identical and reproduce third parties trademarks, trade

names and acronyms. Such situation suggests more than a coincidence in Respondent´s

selection of those domain names. Rather, the study of a selection of the

domain names registered shows Respondent’s intent to obtain profits from

activities other than maintaining several active web sites for providing

goods and services in commerce. Consequently, the Panel finds that the domain

names were registered by the Respondent with the clear intention to prevent

the owners of the domain names from reflecting their marks in the corresponding

domain name and to obtain profits with those domain names (Paragraph 4 b.(ii)

of the Policy).

Inasmuch, as proved in Complainant´s Exhibit K, K.1, K.2 nd K.3 Respondent´s

has offered to sell the domain name <blindex.com> through greatdomains.com´s

website (website that appeared when trying to reach www.blindex.com). This

Panel understands that such act shows that Respondent was trying to obtain

profits in excess of its reasonable out-of-pocket expenses related to the

registration of the domain name by selling the mentioned domain name to

the Complainant or someone else.

In conclusion, this Panel finds that the Respondent registered and used

the domain name <blindex.com> in bad faith.

7. Decision

Complainant has proved that the domain name is identical to its trademark,

that Respondent has no rights or legitimate interest in the domain name,

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

Therefore, according to Paragraph 4.i of the Policy, the Panel requires

that the registration of the domain name <blindex.com> be transferred

to the Complainant.

Eduardo Magalhães Machado

Sole Panelist

Dated: June 17, 2002