WIPO Domain Name Decision: D2005-0199

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Globosat Programadora Ltda. v. J. Almeida

Case No. D2005-0199

1. The Parties

The Complainant is Globosat Programadora Ltda., Rio de Janeiro, Brazil, represented by Matos & Associados, Brazil.

The Respondent is J. Almeida, Porto, Portugal.

2. The Domain Name and Registrar

The disputed domain name <globosat.com> is registered with Fushi Tarazu, Incorporated.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2005. On February 21, 2005, the Center transmitted by email to Fushi Tarazu, Incorporated a request for registrar verification in connection with the domain name at issue. On February 22, 2005, Fushi Tarazu, Incorporated transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2005. The Response was filed with the Center on March 15, 2005.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on March 23, 2005. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant is the owner of the trademark GLOBOSAT registered in Brazil under Nº 816243522 and 816243506, in classes 38 and 41, granted in 1993, and in Portugal under no. 32629, in classes 38 and 41, granted in 1998.

The Complainant has also registered the trademark GLOBOSAT in the United States, Argentina, Uruguay, Paraguay, Mexico, Peru, Guatemala, Ecuador, Bolivia, France, Sweden, Britain and Northern Ireland, Denmark, Norway, Germany, Switzerland and Benelux.

The Respondent registered the domain name <globosat.com> on September 18, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

Complainant is based in Rio de Janeiro, Brazil, and was incorporated on July 7, 1995. Complainant develops a variety of television channels and programs for the paid television business.

Complainant has continuously and extensively promoted its GLOBOSAT mark for more than eight years throughout Brazil and other countries. Complainant has developed substantial goodwill and name and brand recognition in its GLOBOSAT mark, based on its long and extensive use of GLOBOSAT mark. Complainant also uses its GLOBOSAT mark on Complainant’s website, located at <globosat.com.br>.

At this time, Complainant has nineteen cable television channels in Brazil. Complainant’s channels reach more than 2 million Brazilian homes and have 70% of the national market.

Complainant also has two cable television channels in Portugal called GNT 1 and GNT 2. These channels, which have been available in Portugal for over six years, present a selection of the best content of Complainant’s channels as well as several productions of its parent company TV Globo Ltda. Complainant’s channels have approximately one million subscribers in Portugal. Complainant’s website in Portugal has an average of 700 visits per day. Complainant’s GLOBOSAT mark is therefore well known in its channel of trade, in Brazil, Portugal and other countries. Considering that Respondent is located in Portugal, it could not fail to have knowledge of the well-known status of Complainant’s mark GLOBOSAT.

Complainant held the registration for the domain name <globosat.com> for a long time. However, the registration lapsed in August 2004, when inadvertently it was not renewed in due time. After its expiration, Respondent registered the domain name <globosat.com> without Complainant’s authorization.

Complainant has already been successful in a domain name dispute under the Policy, for the domain names <globosat.com> and <globosat.net>. In Globosat Programadora Ltda. v. Artmidia Comunicação Visual e Arte Ltda,. (WIPO Case No. D2000-0605, the Panel ordered the transfer of the domain names <globosat.com> and <globosat.net> to Complainant.)

Complainant owns through an assignment from Globosat Comunicações Ltda. (formerly Horizonte Comunicações Ltda.), a related company, the Brazilian trademark registration N° 816 243 506 for GLOBOSAT, in class 41, filed on June 11, 1991, and granted on January 5, 1993, for “entertainment services” and the Brazilian trademark registration N° 816 243 522 for GLOBOSAT, in class 38, filed on June 11, 1991, and granted on February 9, 1993, for “communication, publicity and advertising services”. Complainant also owns a US trademark Registration for GLOBOSAT Nº 2,126,699, to cover “production of television programs and distribution of television programs for others” in class 41, filed with the United States Patent and Trademark Office on June 12, 1996, and granted on January 6, 1998. In Portugal, where Respondent is located, Complainant has a trademark registration for GLOBOSAT in classes 38 and 41 (registration Nº 326,290). In addition, Complainant owns several trademark registrations for GLOBOSAT in many different countries around the world such as Argentina, Uruguay, Paraguay, Mexico, Peru, Guatemala, Ecuador, Bolivia, France, Sweden, United Kingdom, Denmark, Norway, Germany, Switzerland and Benelux.

The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights: The <globosat.com> domain name has suggestions, connotations, and commercial impressions that are identical, and therefore confusingly similar, to those of Complainant’s respective GLOBOSAT mark. Complainant’s GLOBOSAT mark, which Respondent has wrongfully incorporated into its domain name, is uniquely associated with Complainant and its services. The GLOBOSAT mark is not legitimately used by any other individual or entity (other than entities properly affiliated with Complainant) nor in relation to products or services other than those offered by Complainant. For these reasons, the GLOBOSAT mark and words uniquely suggest Complainant’s television and entertainment products and services, and the GLOBOSAT mark and words have connotations and commercial impressions of Complainant’s expertise relating to Complainant’s television and entertainment products and services.

The Respondent has no rights or legitimate interests in respect of the domain name: Respondent’s use of the <globosat.com> domain name is not in connection with a bona fide offering of goods or services. Respondent is not commonly known or identified by the name GLOBOSAT. Respondent does not operate a business commonly known as GLOBOSAT nor offer any goods or services under the GLOBOSAT mark. The domain name under dispute is simply redirected to a domain name registration service provider website. Respondent has not acquired trademark or service mark rights for the GLOBOSAT mark. Respondent is not making a legitimate noncommercial or fair use of the domain name <globosat.com>. Respondent is not a licensee of Complainant, nor is Respondent otherwise authorized by Complainant to use Complainant’s GLOBOSAT mark or to apply for or use any domain name incorporating the GLOBOSAT mark.

The domain name was registered and is being used in bad faith: Respondent does not conduct any legitimate commercial or noncommercial business under the GLOBOSAT mark. A person who visits <globosat.com> on the Internet is linked directly and involuntarily to the website of “www.dominio.com”, which provides domain name registration services. Furthermore, Respondent’s passive holding of the domain name <globosat.com> constitutes bad faith registration and use of the domain name. There are several decisions establishing that “non-action” or “lack of action” constitute use in bad faith. Moreover, the fact that Complainant inadvertently failed to renew its domain name <globosat.com> does not eliminate Respondent’s bad faith. Respondent has registered the <globosat.com> domain name in order to prevent Complainant, as the owner of the GLOBOSAT mark, from reflecting its mark in corresponding .com domain name unless Complainant pays to purchase or rent the domain name from Respondent. If a person views the “www.globosat.com” website and sees a page offering domain names registration services, that person may then search the Whois database for the registrant of <globosat.com> and assume that Respondent, whose name will appear, is affiliated with Complainant. By registering the <globosat.com> domain name, Respondent is diverting consumers away from the official site of Complainant and making it difficult for Complainant’s customers and the general public to locate Complainant’s official website, thereby disrupting Complainant’s business. Respondent’s registration of the <globosat.com> domain name is diluting and weakening the unique and distinctive significance of Complainant’s GLOBOSAT mark. Respondent has registered the <globosat.com> domain name for the purpose of selling or renting or otherwise transferring the domain name to Complainant who is the owner of the respective GLOBOSAT mark or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. If Respondent sells the <globosat.com> domain name to a competitor of Complainant, that competitor of Complainant could likewise use the <globosat.com> domain name to disrupt the business of Complainant and cause a substantial likelihood of confusion and substantial actual confusion. Respondent’s use of a domain name identical, and therefore confusingly similar to Complainant’s GLOBOSAT mark has caused, and if not altered by the Panel, will continue to cause serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its GLOBOSAT mark.

Finally, Complainant requests that <globosat.com> be transferred to the Complainant.

B. Respondent

The Respondent alleges that:

Complainant’s assertion regarding its use of brand in Portugal is not true. GNT channels are offered locally without any reference to Globosat or Globosat Programadora Ltda. Complainant’s website <globosat.com.br> makes no reference to Globosat Programadora Ltda or GLOBOSAT brand in Portugal, or in any country other than Brazil. Complainant’s assertion seems exclusively intended to confuse the Panel, by simulating local use in Portugal that indeed has never occurred. Portugal cable TV operator (“ http://www.tvcabo.pt”) is the one to offer GNT channel (and only one channel, not two), that Complainant alleges to offer. There is not any mention there on “www.tvcabo.pt” site to GLOBOSAT brand or Globosat Programadora Ltda as the source of these offerings, presented as having Globo TV as contents source provider.

GLOBOSAT as a brand is not used in Portugal, and as a consequence, it was in no way known by Portugal or even European residents, as the Respondent itself, and should not serve as basis for creating any Complainant’s rights over Respondent’s domain name <globosat.com> or to support Complainant’s alleged bad faith by Respondent on registering the domain name <globosat.com>.

A research on past versions of website <globosat.com> at Internet Archive shows it simply as a domain parking pages until 2000, then a simple redirection to Complainant’s Brazilian website, “www.globosat.com.br”. At that time, as of today also, Complainant website does not make any reference to its alleged presence in Portugal, but rather shows the company as a local cable TV contents provider, just in Brazil.

Respondent has rights or legitimate interests in respect of the domain name: Respondent registered <globosat.com> to publish a website dedicated to provide free information on available satellite systems around the world, with civil or military purposes, their location, services provided, the technology involved, and dissertations about satellite technology and future trends, all as part of Respondent graduating project and within Respondent’s professional area, of Electronic and Telecommunications Engineering. The domain name is a combination of two common words: “globo” the Portuguese word for “globe”/”earth” and “sat” as common abbreviation of “satellite”. Respondent needed to choose .com TLD for his globosat domain as .pt domains are reserved for businesses or organizations, so he could not have registered <globosat.pt> or <globosat.com.pt. Therefore, there is a legitimate interest for Respondent’s choice of registration of <globosat.com>. Complainant, despite its alleged use of brand in Portugal, did not at any time register the domain names <globosat.pt> or <globosat.com.pt> that remain both available. Respondent was in preparations to use the domain name in connection with a bona fide offering of non commercial information on satellite resources (within Respondent’s professional area, of Electronic and Telecommunications Engineering) to be published once completed; meanwhile, the domain name has been left at default domain registration service parking page, which is a standard practice of most domain registration services. Use of default parking pages while registrant prepares to publish his work on the web, shall not be, by no means, an evidence of bad faith. No notice of dispute has been received prior to the commencement of this proceeding. Thus, Respondent was not aware of Complainant’s intents while investing his time researching, collecting and formatting material for publication. Respondent will make a legitimate non-commercial and fair use of the domain name <globosat.com> without intent for commercial gain or misleadingly to divert consumers or to tarnish the trademark at issue, specially as Complainant is not offering goods and services under mark GLOBOSAT in Respondent’s country, nor even in Europe.

The domain name has been registered and is used in good faith: Respondent was in preparations to use the domain name in connection with a bona fide offering of non commercial information. The domain name was not registered for the purpose of selling, renting, or otherwise transferring it. The domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct. Indeed, Respondent, after been served with notice of the dispute, in order to avoid litigation with a corporation and its attorneys which was economically unbalanced against him, has even offered to give up the domain name in favor of Complainant just for Respondent’s out of pocket expenses until that point, totaling US$ 700.00 (seven hundred US dollars). Complainant refused to settle, obligating Respondent to expend additional US$300.00 (three hundred US dollars) on help for response preparation, totaling US$1,000.00 (one thousand US dollars). Complainant and the Respondent are not competitors and the domain name was not registered in any way to disrupt the Complainant’s business. Indeed, Complainant and Respondent are in different countries, in separated continents and do not operate the same kind of business. Respondent’s non commercial use of <globosat.com> in Portugal would in no way disrupt Complainant’s operation, which is local to Brazil. Complainant has never made use of the domain name <globosat.com> except to redirect the users to its Brazilian website. No reference to Portugal is presented on this website, namely “www.globosat.com.br”. As an additional evidence that Complainant’s alleged use of <globosat.com> is not true, Complainant admits they have been registrant of the domain name <globosat.com> for some extent of time, but for two times they have let it expire, which is evidence that the domain name was not in use. Current expiration policy allows a serious registrant enough time and options to avoid expiration and also to redeem expired domain names for a moderate fee. The domain name <globosat.com> was available at the time the Respondent registered it, so Complainant has not noticed it expired or if they noticed, they have not made any effort to renew it or redeem it, even having several months to do so (registrar policies vary, but most allow for something between 75 to 100 days after expiration before a domain is deleted). Hard to accept that a responsible corporation would not notice its website was offline, then expired, then deleted without taking any action or spending US$150 to redeem it. The domain name was not registered in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website. Respondent indeed had no knowledge of Complainants existence. Complainant was not using <globosat.com> prior to when it expired, otherwise, they would have noticed the expiration and renewed the domain name. If they were not organized enough, at least their customers would have alerted them about the website failure.

Respondent believes that the Complainant’s behavior in this dispute denotes a clear intention of imposing the Respondent a reverse domain name hijacking over his domain <globosat.com>. Complainant’s initiation of this dispute without any prior notice to Respondent, with dispute notices coming from attorneys only after the initiation of this dispute at the Center and Complainant’s refusal to cover Respondent’s nominal out of pocket expenses, reinforce the use by Complainant of its economic strength to force Respondent to give up the domain name without retribution for expenses incurred.

Accordingly Respondent asks the Panel to reject the Complaint and make a finding of reverse domain name hijacking.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark GLOBOSAT registered in Brazil under nos. 816243522 and 816243506, in classes 38 and 41, granted in 1993, and in Portugal under no. 32629, in classes 38 and 41, granted in 1998.

As held in numerous precedents, the addition of a suffix, in this particular case “.com”, does not provide the domain name with distinctiveness and therefore, the Panel finds that Complainant’s trademark is identical to the domain name <globosat.com>.

Consequently, the Panel finds that the Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a Complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.” See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

Complainant has introduced some arguments in order to prove that the Respondent has no rights or legitimate interests in the disputed domain name, namely: Respondent is not commonly known or identified by the name GLOBOSAT; Respondent does not operate a business or other organization commonly known as GLOBOSAT; Respondent does not offer any goods or services under the GLOBOSAT mark; the domain name under dispute is simply redirected to a domain name registration service provider website; Respondent has not acquired trademark rights in GLOBOSAT; Respondent is not a licensee of Complainant, nor is authorized to use the trademark GLOBOSAT or to apply for domain names incorporating the trademark GLOBOSAT.

On the other hand, Respondent alleged that he registered <globosat.com> to publish a website dedicated to provide free information on satellite systems and technology, all as part of Respondent’s graduating project and within Respondent’s professional area (Electronic and Telecommunications Engineering). Respondent also indicated that the domain name is a combination of two common words: “globo” the Portuguese word for “globe”/”earth” and “sat” as common abbreviation of “satellite”.

However, Respondent failed to file evidence or bring to these proceedings elements to prove that he was indeed preparing a non commercial website dedicated to satellite systems and technology.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Complainant alleged that it has two cable television channels called GNT 1 and GNT 2, which have been available in Portugal for over six years and have approximately one million subscribers. It asserted that its website in Portugal “http://gntpt.globo.com” has an average of 700 visits per day.

Complainant also alleged that the GLOBOSAT mark is well known in Brazil, Portugal and other countries and that, considering that Respondent is located in Portugal, Respondent could not fail to have knowledge of the well-known status of Complainant’s mark GLOBOSAT.

However, the evidence filed by Complainant does not prove that the trademark GLOBOSAT is known in Portugal, where Respondent is domiciled, nor in the European Community.

In Complainant’s website “www.globosat.com.br”, which apparently is addressed to Brazilian audience, there is only one reference to Portugal. It indicates that from a total of twenty-one channels, two are in operation in Portugal. It is worth noting that this website also indicates that Globosat is the major television cable company in Latin America and that it is leader in Brazil. No further references about Portugal were found.

From the website “http://gntpt.globo.com” whereby Complainant offers the GNT channel in Portugal, the Panel notes that there is only a small reference to the Complainant and its trademark GLOBOSAT. The website indicates that the purpose of GNT is bringing to Portugal the best of the Brazilian television and that GNT is the only channel that joins the best of the channels Globo and Globosat. No further references about the trademark GLOBOSAT were found in this website. It is worth noting that the website also indicates to contact the Portuguese operator “TV Cabo” in order to reach GNT channel rather than to contact the Complainant.

It is evident that these two brief and unobtrusive references are not sufficient evidence to sustain that Respondent knew of the trademark GLOBOSAT or the Complainant before registering the domain name, nor to prove that the trademark GLOBOSAT is well-known in Portugal.

The fact that the domain name <globosat.com> currently redirects to <dominio.com>, which provides domain name registration services, is not sufficient evidence of bad faith since there are no reasons to believe that at the time the domain name was registered Respondent knew the Brazilian company Globosat Programadora Ltda. or its trademark GLOBOSAT.

Consequently, the Panel finds that the Complainant has failed to prove the third element required in paragraph 4(a) of the Policy.

D. Finding of Reverse Domain Name Hijacking

Respondent asks the Panel to make a finding of reverse domain name hijacking.

The Panel understands that initiating these administrative proceedings against the Respondent without any prior notice of the dispute does not constitute bad faith. Neither does Complainant’s refusal to reimburse Respondent’s expenses.

Furthermore, the Panel finds that there are no elements in this case indicating that the Complaint was filed in bad faith.

In consequence, Respondent’s request is denied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Miguel B. O’Farrell
Sole Panelist

Dated: April 5, 2005