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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

S & J Promoções Artísticas Comercial Ltda and Four Team Ltda. v. Zyone Web Systems

Case No. D2003-0146

 

1. Parties

The Complainants are S & J Promoções Artísticas Comercial Ltda., São Paulo, Brazil, and Four Team Ltda., São Paulo, Brazil.

The Respondent is Zyone Web Systems, c/o Mr Fernando da Silva, Miami, Florida, United States of America.

The Complainants are represented by Messrs Newton Silviera, Wilson Silveira e Associados – Advogados of Brazil.

 

2. The Domain Name and Registrar

The domain name in dispute is <sandyandjunior.com> ("the domain name"). The Registrar of the domain name is Intercosmos Media Group, Inc. of New Orleans, Louisiana, United States of America.

 

3. Procedural Background

The Complaint was filed with WIPO Arbitration and Mediation Center ("the Center") on February 25, 2003. On February 26, 2003, the Center transmitted by e-mail to Intercosmos Media Group Inc. a request for registrar verification in connection with the domain name. This was received on the same day by e-mail to the Center confirming that the Respondent was listed as the Registrant and providing the contact details for the administrative billing and technical contact.

In response to a notification by the Center dated March 3, 2003, that the Complaint was administratively deficient the Complainant filed an amendment to the Complaint by e-mail on March 3, 2003, and by hard copy on March 10, 2003.

The Center verified that the Complaint together with the amendment 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 March 11, 2003.

In accordance with paragraph 5(a) of the Rules the due date for the Response was March 31, 2003. The Response was filed with the Centre on April 1, 2003. The Center appointed Mr. Clive Duncan Thorne as the sole panelist on this matter on April 8, 2003. 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.

The Panel understands the requisite fees have been paid. No interim orders have been made by the Panel. The language of the proceedings is English.

 

4. Factual Background

The Complainants are both Brazilian Limited Liability Partnerships and owners and administrators of the rights relating to the well-known duo of Brazilian singers "Sandy&Junior".

The First Complainant is the owner of the ccTLD Domain Name <sandyejunior.com.br> and has several registrations or applications for the trademark "Sandy&Junior" in Argentina, Chile, European Community, Paraguay, Uruguay and the USA and is the former owner of the registrations and applications for the trademark "Sandy&Junior" in Brazil.

The Second Complainant is the owner of the ccTLD Domain Names <sandyjunior.com.br> and <sandyjr.com.br> and of the registrations and/or applications for the trademark "Sandy&Junior" in Mexico and Venezuela and for registrations and applications of the trademark "Sandy&Junior" in Brazil. The Complainants indicate that of a total of 24 registrations and applications for the trademark "Sandy&Junior" in Brazil which had been assigned by the First to the Second Complainant, 8 nevertheless still appear in the Brazilian Trademark Offices Databank as belonging to the First Complainant because the necessary recordal proceedings are still pending.

The Complainants are in charge of managing and promoting the "Sandy&Junior" duo’s career and business. "Sandy&Junior" is an extremely popular and well known Brazilian brother and sister duo of singers who started their career in Brazil in 1989. They have apparently recorded 13 albums including two live and one remix album, two DVDs and three long form videos.

They appear to have been very successful in Latin America, achieving a number of awards and are the main characters of a weekly television programme entitled "Sandy&Junior" televised in Brazil. In June 2002, they launched their first album in English "Love Never Fails – Sandy & Junior.com" and started an international tour in order to promote the release of that album throughout the world. 750,000 copies of this album have already been sold. The Spanish version of the album is in first position in Venezuela, third position in Colombia, fourth position in Spain and within the top 20 in Argentina and Chile. The "Love Never Fails" video clip is in the first position of the Italian MTV. They will be participating as Judges and performers in the International Song Festival at Vina Del Mar in Chile. At the end of 2003 they will probably release their first movie which will be a production of Fox Films Spectra Media, Universal Music International and Globo Films.

The Complainants give evidence of their trademark rights. Copies of trademark registration certificates, filing receipts and other documents in Brazil, Argentina, Chile, European Community, Paraguay, USA and Uruguay are annexed as Annex D to the Complaint. The registrations for Brazil, Argentina, Chile, European Community, Mexico, Paraguay, USA, Uruguay and Venezuela are also listed in the Complaint. The Complainants draw attention to the registrations being made or applied for in a large number of classes including classes 3, 8, 9, 15, 16, 20, 21, 24, 29, 31, 32, 35 and 41. The First Complainant is also the owner of the Domain Name <sandyejunior.com.br>. The Second Complainant is the owner of the Domain Names <sandyjunior.com.br> and <sandyjr.com.br>.

The evidence of the trademark rights owned by the Complainants is not challenged by the Respondent. The Panel therefore accepts this evidence.

In its Response the Respondent explains that for over two years it has been developing a fan site in the USA in English for "Sandy&Junior" who are, (which the Respondent stresses) Brazilian and Portuguese speaking.

The Respondent Mr Fernando da Silva lives in the USA. In February 2001, his son along with his niece who are both fans of "Sandy&Junior" apparently asked him to do a website for them in English. It was apparently intended to be a fan site paying homage to "Sandy&Junior". Accordingly the website was registered in February 2001, under the name "Sandy&Junior.com".

 

5. The Parties’ Contentions

Complainants

The Complainants contend:-

1.1 The disputed domain name is similar to the name of the famous duo "Sandy&Junior" represented by the Complainants and to their registered trademarks and that Internet users will certainly assume that "Sandy&Junior’s" official website is at the address "sandyandjunior.com".

1.2 Before the Respondent registered his domain name on February 4, 2001, neither the Respondent nor his business was known as "Sandy&Junior" and the Respondent had no pre-existing trademark or other rights in the name "Sandy&Junior".

1.3 The Respondent has registered the domain name <sandyandjunior.com> only after the Brazilian singers became famous.

1.4 The Respondent’s website has links with other websites which suggest association, sponsorship or endorsement with the singers "Sandy&Junior" and the Complainants’ website and companies which does not exist.

Respondent

In summary the Respondent’s contentions are as follows:-

(a) The Respondent has rights in "Sandy&Junior" written in English;

(b) The Respondent’s website is merely a fan site;

(c) The Respondent has not tried to sell or use the website commercially;

(d) The Respondent does not offend against paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

 

6. Discussion and Findings

General

In order to succeed in their Complaint the Complainants have to show the following elements under paragraph 4(a) of the Policy:-

6.1 That the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

6.2 The Respondent has no rights or legitimate interest in respect of the domain name;

6.3 The domain name has been registered and is being used in bad faith by the Respondent.

The Panel proceeds to deal with each of these elements.

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights

The Complainants’ trademarks set out in the Complaint were for the most part filed before the date of registration of the domain name in dispute by the Respondent. It is also in the Panel’s view apparent that through the Complainants the duo "Sandy&Junior" began to acquire rights in the name "Sandy&Junior" from 1989, and at an increasing rate in the late 1990s and from 2000 onwards.

The Complainants assert that the disputed domain name "Sandy&Junior" is similar to the name of the duo "Sandy&Junior" ie using the ampersand rather than the word "and". By contrast the Respondent seeks to distinguish between the domain name as it is registered with the word "and" compared to "Sandy&Junior" and "sandyejunior" (ie the Portuguese version which is presumably used in Brazil). The Respondent states that it tried to register <sandyjunior.com> since the ampersand symbol cannot be used in domain name addresses. The Complainants point out that the sound and meaning of both the symbol "&" and the word "and" are identical in sound and meaning.

The Panel accepts the Complainants’ contentions and finds that the domain name registered by the Respondent is confusingly similar to the trademark "Sandy&Junior" and also to the name of the singers "Sandy&Junior".

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

The Complainant points out that it has never licensed the use of the trademark "Sandy&Junior" or such name to the Respondent or assigned such trademark to the Respondent for any purpose and that there has not been any "involvement and/or relationship" between the Respondent and the Complainants.

The Respondent submits that he was entitled to create a fan site using the domain name in dispute because he "invented the concept of sandy ‘and’ junior written in English, since the couple was, again, predominantly Brazlian and until 2002, more than a year later, [ie after registration of the domain name] had never had an international career". However the Respondent admits that the Complainants already had dozens of websites and an official website in respect of both "Sandy&Junior" or "sandyejunior".

The Panel finds that there is no evidence pointing to any pre-existing rights that the Respondent had or any legitimate interest in respect of the domain name. To the contrary the Respondent admits that the Complainants had rights in "Sandy&Junior". The Panel having found that "sandy&junior" is confusingly similar to "Sandy&Junior" it follows that the Respondent could not have had any legitimate rights to the domain name as at the date of registration.

In these circumstances the Panel finds for the Complainants in respect of this element.

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

In support of its submissions the Complainants have adduced evidence that the Respondent’s website promotes commercial websites through advertising banners which have direct links to inter alia <amazon.com>, "ideaDigital" and "zy1-zyone". These websites link to a number of commercial e-commerce companies offering a wide variety of products. In particular it is pointed out by the Complainants that the zy1-zyone links directly to companies offering products such as sexy lingerie and also to KLAMBADA tours which is a sex related website which takes the Internet users to several other sex related websites with the implication that they can be understood as endorsed by the duo "Sandy&Junior".

The Complainant points out that it has expressly indicated at the Respondent’s website "www.sandyandjunior.com" that the Respondent is involved in fan site design creation and image manipulation. This the Complainants submit is clear evidence that the Respondent takes both direct and indirect commercial advantage from the access of Internet users to his non-commercial fan website at "sandyandjunior.com".

The Panel has looked at the exhibits set out at "Annex E" to the Complaint which it accepts support the Complainant’s contentions with regard to the links to the Respondent’s website. In particular the Panel notes the references under the print-out "Sandy&Junior international website Sandy&Junior" to the effect that:

"This is Sandy and Junior’s first international website made by fans to the fans filled with cool things and information so come on in and enjoy Sandy & Junior.com. Sandy and Junior".

The Respondent denies bad faith stating that the website is purely a fan site and which is:

"[a] beautifully crafted site with content, traffic and regular visitors, and [it] became a community to many fans of the couple".

It denies that it has used the website for commercial purposes or seeking profit.

The Panel having reviewed the links does not accept the submissions of the Respondent. Rather it accepts the submissions of the Complainants that the Respondent has registered and is using the domain name to attract Internet users to its website and other on-line locations and has created a likelihood of confusion with the name of the Brazlian duo as to the source of sponsorship, affiliation or endorsement of the Respondent’s website and in respect of the products and services offered by the linked website and on-line locations. The fact that there are links to less salubrious websites such as the KLAMBADA tours link has the potential of causing greater damage to the Complainants.

The Complainants also draw attention to an e-mail dated April 5, 2002, from the Respondent to a Mr.Oliver Buckwell of Universal Music International, the duo’s record company. It would appear that Mr Buckwell had enquired whether the Respondent was interested in transferring the domain name. The Respondent replied:-

"as for the actual sale of my domain, I am sorry but I am really not interested in parting with it, besides, the amount you mentioned doesn’t appeal to me".

The Complainants submit that they can therefore assume that the Respondent will accept "an attractive purchase proposal" for the domain name. In the Panel’s view the circumstances surrounding this exchange of e-mails is insufficiently clear. The Panel therefore does not take this submission into account in deciding whether there is bad faith on the part of the Respondent.

The Panel finds for the above reasons that the Respondent has registered and used the domain name <sandyandjunior.com> in bad faith.

 

7. Decision

The Panel finds for the Complainants.

For all the foregoing reasons in accordance with paragraphs 4(i) of the Policy and 15 of the Rules the Panel orders that the domain name <sandyandjunior.com> be transferred to the Complainant.

 

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Clive Duncan Thorne
Sole Panelist

Dated: April 22, 2003