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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Companhia Brasileira de Bebidas - CBB v. Pedro Cuesta Unkhoff and IA LTDA. aka Indъstria Amazфnia Ltda

Case No. D2005-0634

1. The Parties

The Complainant is Companhia Brasileira de Bebidas - CBB, Sгo Paulo, Brazil, represented by Dannemann, Siemsen, Bigler & Ipanema Moreira, Rio de Janeiro, Brazil.

The Respondents are Pedro Cuesta Unkhoff and IA LTDA. aka Indъstria Amazфnia Ltda, with domicile of record in Barcelona, Spain.

2. The Domain Name and Registrar

The disputed domain name <guaranaantarctica.com> is registered with the registrar Interdomain.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on June 16, 2005, and in hard copy format on June 28, 2005. On June 20, 2005, the Center transmitted by email to Interdomain a request for registrar verification in connection with the domain name at issue. On July 1, 2005, Interdomain 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 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 July 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2005. The Response was filed with the Center on July 25, 2005.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 9, 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.

Pursuant to Rules, paragraph 11 and the Panel’s discretion therein, the language of the Proceedings is English.

4. Factual Background

Complainant is part of AMBEV, the largest national brewery in Brazil currently employing more than 17,000 people. In 2004, Complainant’s holding company and Interbrew formed INBEV, a global premier brewer and soft drink producer based in Belgium owning a portfolio of 200 brands that operates in 32 countries and has a worldwide market share of nearly 14%, its net turnover for the fiscal year of 2004 being in excess of 8.57 million euros.

To advertise its products and provide information on the AMBEV and INBEV groups, Complainant maintains websites at <ambev.com.br> and <inbev.com>, respectively.

Out of its most successful local products, Complainant markets GUARANA ANTARCTICA, a soda made out of a regional fruit called “guaranб” which ranks second among the best-selling soft drinks in Brazil, for which it registered and has continuously used in Brazil since 1921, the trademark GUARANБ ANTARCTICA that is also registered in a number of countries. By virtue of Complainant’s recent operational deal with Pepsi Co., the GUARANA ANTARCTICA soda is expected to be bottled and distributed internationally.

As part of one of the most recent advertising campaigns for the GUARANA ANTARCTICA brand, Complainant has sponsored the worldwide-famous Brazilian soccer team so that the mark in question is prominently displayed on the players’ uniforms. Unquestionably, the GUARANA ANTARCTICA mark has achieved substantial goodwill and widespread recognition and notoriety among Brazilian consumers at large.

For their part, Respondents, on the one hand an individual acting on behalf of IA Ltda. aka Indъstria Amazфnia Ltda., a Brazilian corporation also in the business of soft drinks, and that very same company on the other, registered the disputed domain name on December 1, 2002.

As further elaborated below, the dispute at hand arises out of and is preceded by a series of conflicts between the same parties regarding ownership of the GUARANA AMAZONIA trademark in different jurisdictions, as well as the <guaranaamazonia.com> domain name registered by Complainant.

5. Parties’ Contentions

A. Complainant

In essence, Complainant puts forward the following arguments:

(i) As the relevant part of the disputed domain name is “guaranaantarctica”, it is incontrovertible that the domain name in issue is identical to the Complainant’s registered trademark.

(ii) In view of the mark’s long prior use by the Complainant and given that one of its components, namely “ANTARCTICA”, formed part of the company name Companhia Antarctica Paulista, one of Complainant’s predecessors, it is clear that the only entity which has legitimate rights over GUARANA ANTARCTICA is the Complainant.

(iii) Since its date of registration, the disputed domain name has resolved to the website of Terra Networks S.A. in Spain.

(iv) The Respondents have never traded, used or demonstrated any intention of using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

(v) As they operate in the same industry as Complainant, the Respondents can not claim they were unaware of the reputation of the GUARANA ANTARCTICA mark by the time the disputed domain name was registered.

(vi) Should a potential consumer attempt to find the GUARANA ANTARCTICA product on the Internet, he/she will be frustrated as the information sought will not be found at <guaranaantarctica.com>.

(vii) In view of the fact that the Respondents directly compete with Complainant in the same country, there is no doubt that their intention is to prejudice the commercial interests of the Complainant.

(viii) The unsuccessful attempts by Complainant to get hold of Respondents at the e-mail address of record should be taken into account to find Respondents’ bad faith in the registration of the disputed domain name.

(ix) Based on the ruling in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Respondents’ registration and use of the domain name in the instant case should be found in bad faith.

B. Respondents

Respondents’ main submissions can be summarized as follows:

(i) The present dispute is totally associated with the <guaranaamazonia.com> domain name, which was registered by Complainant in violation of Respondents’ earlier rights over the as yet unregistered mark GUARANA AMAZONIA applied to the guaranб-made soft drink produced by Respondents since as early as 1960.

(ii) The disputed domain name was available for registration at the time Complainant misappropriated the <guaaranaamazonia.com> domain name.

(iii) Respondents never intended to sell the domain name in dispute to anybody nor use it, all they tried to accomplish was the transfer of <guaranaamazonia.com> in exchange for surrendering <guaranaantarctica.com>

(iv) Just as Respondents are aware of Complainant’s identity and reputation associated with its soft drink’s mark, the opposite also holds as Indъstria Amazфnia Ltda. has produced, sold and distributed in Brazil since 1960, its “Guaranб Amazфnia” soft drink.

(v) In addition to identifying a plant, the term “guaranб” has become commonplace in Brazil to mean soft drink.

(vi) Upon registration, Respondents have parked the disputed domain name at Terra, without any intention of making any commercial or misleading use of it.

(vii) Respondents’ registration of the disputed domain name constitutes a legitimate self-defense aimed at counteracting Complainant’s misappropriation of <guaranaamazonia.com>.

(viii) As this case has something to do with a reverse domain name hijacking issue, we ask the Panel to take into account that the dispute at hand goes beyond the domain name context so as to order the exchange of domain names, or alternatively, at a minimum, to refrain from issuing its decision. In doing so, the Panel should bear in mind that Respondents are unlikely to prevail in a similar UDRP action claiming transfer of the <guaranaamazonia.com> domain name as Complainant has secured a sufficient number of trademark registrations for GUARANA AMAZONIA in countries other than Brazil, to defend itself in the event of future proceedings brought against it.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:

(i) The domain name 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 is being used in bad faith.

A. Identical or Confusingly Similar

First of all, the Panel notes that Complainant’s mark enjoys a very strong reputation in the field of soft drinks by virtue of its continued use in the Brazilian marketplace as of 1921, its large-scale advertising campaigns and the product’s nationwide consumption by the general public.

Secondly, as noted in Nicole Kidman v John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but, rather, whether the domain name in issue, standing alone, is sufficiently similar to the Complainant’s trademark to justify a remedy under the Policy.

Turning to the relevant question of this part of the decision, as a result of a global appreciation of the conflicting signs, plainly, there exists visual, aural and conceptual correspondence between the disputed domain name and the Complainant’s mark to warrant a finding of identity for it is well-settled that the addition of the generic top-level domain (gTLD) “.com” is without legal significance under this type of analysis for the following reasons: use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider as a source of goods or services. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; Infinity Broadcasting Corp. v. Quality Services, Inc., WIPO Case No. D2000-0361 and Blue Sky Software Corp. v. Digital Sierra Inc. and Abdullah Khan, WIPO Case No. D2000-0165.

Likewise, the authority is legion in regard to the dismissal of orthographic marks such as dashes or apostrophes, or spacing between words, for the purposes of a confusion analysis under the Policy. See InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Stella D’Oro Biscuit Co, Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012; Servicios Administrativos Industriales, S.A. de C.V. (SAISA) v. Grupo Bremse, WIPO Case No. DMX2004-0003; and Newman/Haas Racing v. Virtual Agents, Inc., WIPO Case No. D2000-1688.

Accordingly, this Panel finds that Complainant has proven the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Respondents repeatedly admit in their Response to having “really no interest in the domain <guaranaantarctica.com>” [at paragraph 20]; that they “never wanted to sell nor use this domain” [at paragraph 7,]; as well as to having “no intention of making any commercial use of it” [at paragraph 23]; and claimed they “never had interest of keeping this domain” [at paragraph 26].

Basically, Respondents’ main defense in this case hinges upon their reliance on what they label “a legitimate self-defense” action taken as a countervailing measure against Complainant’s registration of the <guaranaamazonia.com> domain name in contravention of Respondents’ senior rights over the Brazilian mark GUARANБ AMAZФNIA, whose registration in favor of Respondent Indъstria Amazфnia Ltda is currently being opposed by Complainant.

As to this, in acknowledging that the Policy defenses provided for in paragraph 4(c) are not exhaustive, the Panel holds that the abusive registration of a domain name performed by way of a reprisal calculated to achieve a trade-off, does not afford Respondents with a right or legitimate interest in respect of that very same domain name in the sense of Policy paragraph 4 (a)(ii). See the ruling of learned panelists Ricketson, Cornish and Casey in Geobra Brandstдtter GmbH & Co KG v. Only Kids Inc., WIPO Case No. D2001-0841 (finding respondent’s allegation of the sort of a “defensive” measure taken, the kind of reason that provides no basis for establishing any right or legitimate interest in the disputed domain names).

Furthermore, it is to be noted that retaliation does not constitute an appropriate means of redress sanctioned by the Policy, nor is the exchange of domains names a valid remedy to be ordered by the Panel. See America Online, Inc. v. Popixel Art d/b/a America Online Latino, WIPO Case No. D2001-0957 (holding that the power of the panel is expressly limited to deciding whether or not to issue an order to the registrar canceling or transferring the domain name(s) to the complainant and that any other remedies requested by either party must be taken to a national court).

More importantly, Respondents should have realized that their parallel dispute with Complainant regarding ownership of the <guaranaamazonia.com> domain name was not submitted for resolution through this proceeding. Therefore, as Respondents’ assertions about the legitimacy of their claim against Complainant must be the subject of an independent action and analysis, they are consequently disregarded in the context of this decision. Along the same line of reasoning see N.M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd., WIPO Case No. D2001-1029 (attributing no impact whatsoever on the outcome of the panel’s decision to respondent’s allegations against the complainant and its counsel).

Therefore, the Panel finds that Complainant has also made out its case with respect to the second limb of Policy, paragraph 4(a).

C. Registered and Used in Bad Faith

It remains uncontroverted that Respondents are in the same business as Complainant and that from its registration, the contested domain name has been “parked” on Terra’s portal. Currently, the associated web site is no longer operating.

In this vein and as pointed out by Complainant, the Panel acknowledges that, as confirmed by countless UDRP decisions, passive holding of a domain name with knowledge that the domain name infringes on another party’s trademark rights is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and also the panels’ consensus view on this point as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2.

Further, it is held that by registering the disputed domain name for the purpose of parking it on a third party’s website, Respondents must be deemed to have registered and used the said domain name in bad faith.

Additionally, Respondents’ vindictive registration of a different domain name from the one in dispute here can only be regarded as conclusive evidence of bad faith. See Cabela’s Incorporated v. Cupcake Patrol, NAF (National Arbitration Forum) Case No. FA95080 (finding bad faith where respondent registered the disputed domain name to retaliate against complainant); also Benefits Technologies, Inc. d/b/a Benefit America v. IMedia, Inc., NAF Case No. FA98436 (considering in bad faith respondent’s retaliation for perceived wrongful acts by complainant and holding that trademarks and domain names cannot be held hostage as leverage in other unrelated disputes); and Paul Petrovich and Petrovich Development Company v. Jazz Melody, NAF Case No. FA290894 (finding revengeful motives to constitute an additional non-enumerated factor of bad faith use and registration pursuant to Policy, paragraph 4(a)(iii)).

Complainant therefore succeeds on the third element.

Reverse Domain Name Hijacking

Respondents have mentioned the possibility of finding reverse domain name hijacking in the instant case on the part of Complainant. In this regard, the Panel finds no evidence that the Complainant had lodged a vexatious action and accordingly rules out such possibility.

7. Decision

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 <guaranaantarctica.com> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: August 23, 2005