WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Editora Balcão Ltda v. Infomídia Produções Ltda.
Case No. D-2000-1149
1. The Parties
The Complainant is:
EDITORA BALCÃO LTDA.
Rua Araújo Porto Alegre, 71 – 2ş/3ş floors
20030-000 – Centro
Rio de Janeiro – RJ
Brazil
Represented by:
MAURÍCIO DE SOUZA TAVARES
From TAVARES & COMPANHIA – PROPRIEDADE INTELECTUAL
Av.Marechal Floriano, 45 / 6ş floor
20080-003 – Centro
Rio de Janeiro – RJ
Brazil
The Respondent is:
INFOMÍDIA PRODUÇÕES LTDA.
Rua Santa Cecília, 2001, apt.802
90420-041 – Porto Alegre – RS
Brazil
Represented by:
FRANCISCO OLIVEIRA
Rua Santa Cecília, 2001, apt.802
90420-041 – Porto Alegre – RS
Brazil
2. The Domain Name(s) and Registrar(s)
The domain name at issue in this complaint is "balcao.net" and the Registrar is Network Solutions Inc. of 505 Huntmar Park Drive, Herndon, Virgínia 20170, USA.
3. Procedural History
Complaint was received by WIPO by e-mail on August 31, 2000 and on
July 11, 2000, in hardcopy.
On September 24, 2000, NSI has confirmed that "balcao.net" is registered in the Respondent's name and that it is in "Active" status.
On October 4, 2000, Complainant sent an amendment to the Center enclosing additional documents. Its hardcopy was received on October 9, 2000.
On October 4, 2000, the Center has verified that the Complaint met the formal requirements and sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint.
On October 26, 2000, Complainant sent by e-mail a reply to the response.
A single member Panel ("The Panel") was properly designated to examine and decide the dispute.
4. Factual Background
Complainant, Editora Balcão Ltda., publishes one of the most famous Brazilian Newspaper specialized in classified advertisement, "BALCÃO".
Trademark "BALCÃO" is already registered in the name of Complainant at the Brazilian Patent and Trademark Office – BPTO, under serial number 811268411, covering "publications in general, journal, magazines and periodicals" and granted on August 8, 1983.
Complainant also owns Brazilian registration nş 811268438 for trademark "BALCÃO – JORNAL DE CLASSIFICADOS", covering the same goods as registration for "BALCÃO" and was granted at the same date.
In class 38, covering "communication services, publicity and advertisement", Complainant owns Brazilian registration nş 816541167 for trademark "BALCÃO 24 HORAS", granted on September 8, 1993.
On September 21, 2000 Arbiter has ascertained that newspaper "BALCÃO" is still on sale and that it is weekly printed and circulated in the State of Rio de Janeiro – Brazil.
Disputed domain "balcao.net" was registered in the name of the Respondent on February 13, 1998 at Network Solutions - Registrar.
Respondent has an active web site located at www.balcao.net offering services of classified advertisement through a link addressed to www.anunciosbrasil.com.br .
5. Parties’ Contentions
A. Complainant
- Trademarks "BALCÃO", "BALCÃO – JORNAL DE CLASSIFICADOS" and "BALCÃO 24HORAS" are registered in its name.
- Its newspaper is well known in the Brazilian territory.
- It has a Franchise under operation in Porto Alegre – the city where Respondent is located.
- In 1997 it started doing business also in the Internet at web address "balcao.com".
- The use of domain "balcao.net" causes a likelihood of confusion for the consumer.
- Respondent has no legitimacy to use or register domain "balcao.net".
- Complainant and Respondent are competitors since both offer the same service.
- Respondent does not operate any business or offer any service or goods under the mark "BALCÃO".
- Respondent is not fairly using domain "balcao.net".
- Respondent does not own any authorization to use trademark "BALCÃO" or to use or register a domain, which incorporates said mark.
- The Respondent’s use of domain "balcao.net" may cause an irreparable injury or damage to the Complainant's activities.
- Respondent is offering a free franchise in its web site in a manner to copy the franchise system adopted by Complainant many years ago.
- Respondent's acts are violation of the Brazilian Trademark Law and might be considered as an act of unfair competition which may cause the dilution and weakness of trademark "BALCÃO".
B. Respondent
- Domain "balcao.net" is a great success in Brazil. A cost free space for publication of classified ads. It has 3.000 daily visits.
- The contents of "balcao.net" were transported to "anunciosbrasil.com.br".
- The word "BALCÃO" has always been used with element ".net".
- Complainant has registered trademark "BALCÃO" only for "newspapers, magazines and periodicals".
- Respondent also questioned the renown of the mark "balcão" and the fact that the mark is in use in Rio de Janeiro.
- Balcão is a common use word in Portuguese Language which means, "counter" in English Language.
- Complainant started to use domain "balcao.com" after taking knowledge of Respondent’s success.
- Domain "balcao.com.br" is registered by another company and it is not active.
- Complainant has challenged the ownership of domain "balcao.net" in view of the popularity achieved by said Website.
- Respondent listed 16 registrations of domains ended in ccTLD ".br" which are partially formed with the word "balcao" and 3 registered with the international TLD (.com , .net and .org).
- Complainant has never demonstrated any interest in a domain formed with the word "balcao" until it has recently purchased domain "balcao.com".
- According to Respondent's arguments, printed classified ad’s business has no relation with an Internet classified ad’s business.
6. Discussion and Findings
In the administrative proceeding each the following provisions of Paragraph 4(a) of the Policy must be attended by the Complainant:
"(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and used in bad faith."
Identical or Confusingly Similar Domain Name:
The Domain Name at issue is "balcao.net". Complainant is the title holder of the registered trademark "BALCÃO", which is obviously identical with the relevant and disputed part of the Domain Name. The registrations for trademark "BALCÃO" cover services in the same activities field of the business developed in Respondent’s web site.
Taking the above into consideration, the requirements of Policy's paragraph 4(a)(i) have been met.
Respondent's Rights or Legitimate Interests in the Domain Name:
Firstly, it is convenient to recall that according to paragraph 4(c) of the Policy, a Respondent can establish its rights or legitimate interests in the Domain Name if it shows the presence of any of the following circumstances:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Although Respondent has been using the domain prior to the notice of the dispute, in compliance with paragraph 4(c)(i) of the Policy, in the Response there is no evidence that the domain has been used with bona fide. The only difference between the services offered by Complainant and Respondent is that Complainant's services of classified ads are offered via printed material and Respondent's services are offered via Internet. However, both reach the same public.
With respect to 4(c)(ii) there is no evidence in the files that Respondent is well known by the domain name. There is, in The Panel's opinion, a strong risk that the users of Respondent web site are associating "balcao.net" to the traditional newspaper.
The provision of 4(c)(iii) is not met by Respondent either, due to the fact that in its Internet business there are evidences of commercial use (although the ads are freely posted Respondent is selling banners exposures and links) and indications of unfair use in view of its similarity with the Complainant business in the real world.
In the absence of any other indications as to the legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under Article 4(a)(ii) of the Policy showing that Respondent has no right or legitimate interest in the Domain Name.
Domain Name Registered and Used in Bad Faith:
The requirements of Policy article 4(a)(iii) is also met by Complainant in the form of item (iv) of Paragraph 4(b), namely:
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."
There is a strong presumption in the files that the Respondent has adopted the domain "balcao.net" to take advantage of a goodwill already established by Complainant after having used trademark "BALCÃO" for years, since Respondent offers exactly the same services as Complainant. However, instead of offering the services in the real world (via printed material), Respondent offers the service via Internet. Further, although "balcão" means a store counter or a balcony, such meaning has no direct relation with the classified ads business, specially considering the ads are printed in the newspaper or are exposed in the Internet.
In an overall assessment of the contentions and facts mentioned above, the Panel concludes that the requirement of paragraph 4(a)(iii) of the Policy is sufficiently achieved by the Complainant, and that the disputed Domain Name has been registered and used in bad faith.
7. Decision
In light of the foregoing, the Panel decides that the domain name registered by Respondent is identical to the trade and service mark of Complainant, that Respondent has no legitimate interests in respect of this domain name, and that the domain name in issue has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the domain name "balcao.net" be transferred to Complainant.
Dated: November, 23, 2000.
