VOTORANTIM PARTICIPAÇÕES S.A. v. Carlos Navarro / NetStructure
Claim Number: FA1207001456005
Complainant is VOTORANTIM PARTICIPAÇÕES S.A. (“Complainant”), represented by ANDRÉA PALMEIRO BRASIL of Silveiro Advogados, Brazil. Respondent is Carlos Navarro / NetStructure (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <votorantim.us>, registered with GODADDY.COM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 31, 2012; the National Arbitration Forum received payment August 10, 2012. The National Arbitration Forum received a hard copy of the Complaint August 10, 2012.
On July 31, 2012, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <votorantim.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 13, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of September 4, 2012, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the National Arbitration Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent was only authorized to register and manage Complainant’s domain name on its behalf. Respondent has no legal rights over the domain names.
ii. Respondent is not commonly known as VOTORANTIM, and has never operated a business under the VOTORANTIM mark.
iii. The domain name continues to resolve to Complainant’s own website, but this could be changed.
i. Respondent was only to register and manage Complainant’s disputed domain names.
ii. Respondent was not authorized to use Complainant’s mark in any way.
iii. Respondent is attempting to continue to profit from Complainant’s domain name registration, which is clear evidence of bad faith.
iv. The disputed domain name remains in Respondent’s control, although the domain name continues to resolve to Complainant’s website.
Complainant established that it has legal rights in the mark contained within the disputed domain name.
Complainant established that Respondent has no rights to or legitimate interests in Complainant’s mark that is used within the disputed domain name.
Respondent opportunistically seeks to take control of Complainant’s mark and use it in a domain name on the basis that Complainant’s permission to use the mark solely on Complainant’s behalf in some way conferred rights on Respondent, which has not been shown to be the case.
Respondent opportunistically registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims to have rights in the VOTORANTIM & Design mark through its trademark registrations with the NIIP (e.g., Reg. No. 6,888,550 registered September 28, 2010) and the IPO (Reg. No. 235,253 registered August 25, 2000). The Panel finds that Complainant’s trademark registrations are sufficient for Complainant to establish Policy ¶ 4(a)(i) rights in the VOTORANTIM & Design mark, regardless of Respondent’s purported location. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel also finds that the design element of Complainant’s mark does not affect the Panel’s Policy ¶ 4(a)(i) determination. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”).
Complainant asserts that the <votorantim.us> domain name is identical to the VOTORANTIM & Design mark. The Panel notes that the disputed domain name contains Complainant’s entire mark, absent the design element, while adding the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the mark in which Complainant has rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes that no evidence on record indicates that Respondent owns a trademark or service mark encompassing the disputed domain name that would satisfy Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant contends that Respondent is not commonly known as VOTORANTIM and has never operated a business under the VOTORANTIM mark. The Panel notes that the WHOIS information indicates that “Carlos Navarro / NetStructure” is the registrant of the <votorantim.us> domain name. Complainant argues that Respondent was a former employee of “Netstructure” and that “Netstructure” was employed by Complainant to register and manage the disputed domain name. Complainant claims that Respondent did not acquire any intellectual property rights from Complainant that would allow Respondent to be known as the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant provides evidence indicating that Respondent resolves the disputed domain name to Complainant’s official website. Complainant notes that it hired Respondent to register and manage Complainant’s domain name portfolio, including the disputed domain name. Complainant claims that, due to some breakdowns in the relationship, Complainant requested the transfer of all of the domain names to Complainant, but that Respondent has refused to transfer some of Complainant’s domain names to it. Complainant notes some problems that Respondent has created with other domain names by cutting off the websites or e-mail servers, thereby injuring Complainant’s business. Complainant contends that Respondent is somehow continuing to profit from its holding of the disputed domain name. Complainant notes that it has no control over the domain name at issue. The Panel finds that Respondent’s use of the disputed domain name to resolve to Complainant’s website, at least for now, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of [UDRP] ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (“The Respondent’s adoption of the disputed domain name was clearly calculated to attract Internet users seeking the Complainant’s website. The Respondent was not authorized to use the Complainant’s mark in this way, and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the disputed domain name.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel notes that Complainant does not argue bad faith under any specific Policy ¶ 4(b) paragraphs. However, the Panel also notes that the Panel is not limited to the factors identified in Policy ¶ 4(b) but may instead take into consideration in making a bad faith determination the totality of the circumstances. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
The Panel finds that Complainant’s evidence shows that the disputed domain name continues to resolve to Complainant’s own website. However, Complainant notes that it has no control over the disputed domain name and that Respondent is continuing to hold on to Complainant’s domain name after the business relationship ended. Complainant contends that Respondent was only supposed to register the domain name and maintain it, not take it over for itself. Complainant notes problems in the past with Respondent where Respondent disrupted Complainant’s other websites and e-mail communications that injured Complainant’s business. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to [UDRP] ¶ 4(a)(iii).”); see also Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use) (emphasis omitted). This is a classic example of opportunistic bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <votorantim.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 25, 2011
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