WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guarani S.A. v. Marchex Sales, Inc, Brendhan Hight

Case No. D2012-2139

1. The Parties

The Complainant is Guarani S.A. of Sao Paolo, Brazil, represented by Nery e Dias Teixeira Sociedade de Advogados, Brazil.

The Respondent is Marchex Sales, Inc, Brendhan Hight of Las Vegas, Nevada, United States of America (“US”), represented by John Berryhill, Ph.D. esq., US.

2. The Domain Name and Registrar

The disputed domain name <guarani.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2012. On October 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response November 26, 2012. The Response was filed with the Center November 27, 2012.

The Center appointed Petter Rindforth, Torsten Bettinger and Richard G. Lyon as panelists in this matter on December 12, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. The Registration Agreement for the disputed domain name is in English, and the case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is the owner of several trademark registrations in Brazil for the word “guarani”, such as:

No 780332423 GUARANI word

Filing Date: September 29, 1978

Registration Date: June 12, 1984

Class 33.20: sugar and sweetener

No 816717079 GUARANI & device

Filing Date: May 05, 1992

Registration Date: May 24, 1994

Class 33.20: sugar and sweetener

No 819473910 GUARANI & device

Filing Date: September 12, 1996

Registration Date: March 09, 1999

Class 33.20: sugar

(Copies of the Certificates of Registrations attached as Annex 6, 7 and 8 of the Complaint).

Date of registration of the Disputed Domain Name

According to Annex 3 of the Complaint, WhoIs information for <guarani.com>, the disputed domain name was “created” on November 20, 2000. According to the Response (though not supported by any evidence) the current Respondent purchased <guarani.com>, in late 2004. As the Complaint has not proven or proposed any other date, the Panel will treat 2004 as the year the Respondent registered the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant is a joint-stock company established in Brazil since 1970 and states that it is currently the third largest Brazilian producer of sugar and ethanol.

The Complainant has always used the word “guarani” as the dominant element of its trade name in order to distinguish products, services, and the company itself in the market, as well as to distinguish its products abroad. The Complainant owns 36 trademark registrations in Brazil, containing the word “guarani”, the first one registered in June 12, 1984. According to the Complainant, this grants an exclusivity regarding the use of the word “guarani”. In 1999, the Complainant registered the Brazilian domain name <aguarani.com.br> to distinguish its company, which name at that time was Açúcar Guarani S.A.

The Complainant states that it is unquestioned that the disputed domain name is identical to the trademark registrations owned by the Complainant, confusingly similar to the Complainants domain name <aguarani.com.br>, and identical to the dominant element of the trade name of the Complainant.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of <guarani.com>, as the Respondent has no trademarks or trade names that include the word “guarani”, is not known by the word “guarani”, and has registered the disputed domain name without the consent of the Complainant.

There is no content linked to <guarani.com> that demonstrates the existence of any right, product or service of the Respondent related to the word “guarani”. The disputed domain name is actually used as a “link farm” to host sponsored links with no connection with the word “guarani”. The Complainant concludes that the Respondent only wishes to unfairly take advantage of the prestige of the trademark of the Complainant by diverting its users or selling the disputed domain name for a huge amount of money.

During the communication established by the parties prior to this Complaint, the Respondent did not provide any reasonable justification concerning the use of the disputed domain name and/or of the word “guarani”. Instead, it offered the disputed domain name for sale by an exorbitant price.

Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The Respondent obviously registered the disputed domain name with “speculating and reselling purposes”, since the disputed domain name was never really used for legitimate reasons. It contains only a standard page with links for third-party websites and an advertisement presenting the real intention of the Respondent: “This domain may be for sale. Click here for more information”. The link drives the Internet user for another website that only captures offers for domain names. Further there was an email correspondence between the Respondent and a representative of the Complainant, whereby the Respondent required USD 65,000 (sixty-five thousand dollars) for the transfer of <guarani.com>, an amount obviously far “in excess of its out-of-pocket costs directly related” to the disputed domain name.

The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent states that this proceeding involves a generic dictionary word which, among other things, refers to a South American ethnological group, a group of languages and dialects spoken by that group and has been the name of the official currency of Paraguay since 1943.

The Respondent’s registration and use of the name of a tribal group and South American currency in no way violates any cognizable trade or service mark right of the Complainant, and the Respondent is as lawfully entitled to use this word for any purpose other than the limited association which the Complainant may claim in relation to its particular goods or services.

The Respondent accepts that the textual mark registration of the Complainant easily satisfies the first criterion of the Policy, however argues that “guarani” is a common word with limited scope of rights and is also registered as a trademark by 19 other Brazilian companies.

The Respondent further states that the reason for the Complainant’s particular adoption of this non-exclusive and non-distinctive name in connection with sweeteners is that the non-sugar-cane based sweetener stevia was first domesticated by the Guarani tribe itself.

According to the Respondent, the disputed domain name was first registered in 2000 and transferred to MDNH Inc. by Ultimate Search Inc. in February 2005 (pursuant to a deal done in late 2004). MDNH Inc. recently changed its name to Marchex Sales, Inc (where Mr. Brendan Hight, who is named as a Respondent, is a technical employee).

The Respondent further confirms that the Respondent maintains a sizeable portfolio of domain names comprising simple words, short phrases, and other descriptive or common terms for the purpose of providing keyword advertising in relation to the words in the domain name. The Respondent asserts that such descriptive keywords are not used as trade or service marks, and the Respondent does not use the disputed domain name as a trade or service mark.

The Respondent refers to the Complainant’s Annex 12, showing that the corresponding web page of the disputed domain name shows no use related to any of the Complainant’s goods or services. According to the Respondent, <guarani.com> is based on a dictionary word, which alone has inherent value in the secondary market for domain names, and as the name of the currency in Paraguay is a substantial one.

The Respondent concludes that the Complainant has no sole rights to the word “guarani”, if registered and/or used for other goods than “sugar and sweeteners”.

The Respondent denies knowledge of the Complainant and the Complainant’s trademark, prior to the filing of this dispute. The Respondent points out that where a complainant’s mark is a common dictionary word, as in this case, the complainant must proffer evidence that demonstrates that a respondent has specifically

intended to confuse consumers seeking out the complainant.

Regarding the email communications discussing possible sale of the disputed domain name, the Respondent notes that it was the Complainant that initiated a contact with the Respondent – years after registration of the disputed domain name - in an attempt to purchase the disputed domain name. The Respondent, referring to previous UDRP cases, states that standing alone, there is nothing wrong with offering to sell a domain name at a high price. It is a very common business practice. The Respondent did not initiate contact with the Complainant. Rather it responded to contact from the Complainant concerning <guarani.com>.

The Respondent had no reason, based on the Complainant’s communication with no reference to the Complainant’s trademarks, to assume anything other than it was what it purported to be – a request for a price quote on a domain name corresponding to a dictionary word. The Respondent is well aware of the secondary market value of domain names consisting of common terms, and provided a quote.

The Respondent has used the disputed domain name for Pay-Per-Click (PPC) advertising for more than seven years, and is quite content to continue to do so regardless of whether the Respondent receives a purchase inquiry.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown duly registered trademarks in Brazil for GUARANI, as a word mark as well as a combined word and device mark.

The relevant part of the disputed domain name is “guarani”, as it is well established in previous UDRP cases that the added top-level domain, “.com” – being a required element of every domain name – is irrelevant when assessing whether or not the disputed domain name is a mark is identical or confusingly similar.

If a complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP (see further below on Point C.)

As the disputed domain name consists of the term “guarani”, the Panel finds that <guarani.com> is identical to the Complainant’s registered trademark GUARANI.

B. Rights or Legitimate Interests

As the Policy’s requirements are conjunctive, and referring to the further comments and conclusions regarding “Registration and Use in Bad Faith”, paragraph 4(a)(iii), below, the Panel finds no reason to comment or consider paragraph 4(a)(ii) as the Complaint has been denied on other grounds.

C. Registered and Used in Bad Faith

To establish the requirement under paragraph 4(a)(iii) of the Policy, the Complainant must prove that both registration and use of the disputed domain name are in bad faith.

To prove bad faith in registration a complainant must ordinarily show that at the date of domain name registration (as stated above, considered by the Panel in the present case to be somewhere at late 2004):

(a) the Respondent had actual knowledge of the Complainant and its mark (knowledge); and

(b) the Respondent selected the disputed domain name expressly to take advantage of the Complainant and its trademark (targeting).

The Panel cannot find any evidence of bad faith registration, as - considering the geographical separation between the Complainant and the Respondent - there is nothing in the present record indicating that the Respondent in the US should have been aware of the Complainant’s trademarks in Brazil and other Latin American countries already at the date of the registration of the disputed domain name <guarani.com>, or be required to do a worldwide search for all trademarks that incorporate what appears to be a very common word. None of the PPC links at the disputed domain name goes to any competitor of the Complainant; indeed there is no allegation of such conduct. In short there is no provided evidence of targeting and no evidence of record from which the Panel might infer it.

Accordingly, the Panel finds that there is insufficient evidence in the present record to indicate that the Respondent registered the disputed domain name in bad faith, and the third element of the Policy has not been met.

The Panel also notes that sale negotiations, especially if initiated by the complainant, are not inherently bad faith. (See Beehive.com, LLC v. Alliance Capital Management, WIPO Case No. D2012-2003, stating that “the four (4) non-exclusive criteria of the Policy… do not include elements regarding any appraised value for the Disputed Domain Name, the relative importance of the Disputed Domain Name between the Parties or a refusal to reduce an offered sale price.) In the present case, not only did the Complainant initiate the negotiations but they occurred years after the Respondent’s registration of the disputed domain name. In any event, the Panel finds that these communications provide no basis for finding the Respondent’s intent to sell to the complaining trademark owner as such in 2004 when the disputed domain name was registered.

Therefore, the Panel concludes that the Complainant has at least failed to prove that the disputed domain name is registered in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Petter Rindforth
Presiding Panelist

Torsten Bettinger
Panelist

Richard G. Lyon
Panelist
December 19, 2012