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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xuxa Promoзхes e Produзхes Artнsticas Ltda. v. BlessHost Internet

Case No. D2007-0979

1. The Parties

Complainant is Xuxa Promoзхes e Produзхes Artнsticas Ltda., of Rio de Janeiro, Brazil, represented by Alves, Vieira, Lopes, Brazil.

Respondent is BlessHost Internet, of Sгo Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <clickxuxa.com> is registered with Everyone’s Internet, Ltd. dba resellone.net.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2007. On July 5, 2007, the Center transmitted by email to Everyone’s Internet, Ltd. dba resellone.net a request for registrar verification in connection with the domain name at issue. On July 27, 2007, Everyones Internet, Ltd. dba resellone.net transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 1, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2007. Respondent did not submit a Response. Accordingly, the Center notified Respondent’s default on August 27, 2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 12, 2007. 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 trademark upon which the Complaint is based is XUXA. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations in Brazil for the trademark XUXA and other marks composed by the name XUXA or variations thereof, including the Trademark Registration No. 811276643 issued on August 23, 1983.

According to the contentions submitted, Complainant is owned by Ms. Maria da Graзa Xuxa Meneghel, a Brazilian TV artist and model widely known in Brazil as “Xuxa”. The XUXA brand name and trademark are highly recognizable and famous, as acknowledged by five prior WIPO UDRP decisions. Xuxa Promoзхes Produзхes Ltda. v. Ivo Conestabile Junior, WIPO Case No. D2005-0873; Xuxa Promoзхes Produзхes Ltda. v. LaPorte Holdings, WIPO Case No. D2005-0899; Xuxa Promoзхes Produзхes Ltda. v. Adriane da Silva, WIPO Case No. D2006-0039; Xuxa Promoзхes Produзхes Ltda. v. David Lichtman, WIPO Case No. D2006-0558; Xuxa Promoзхes Produзхes Ltda. v. Admin, Domain, WIPO Case No. D2006-0971.

According to the contentions submitted, Complainant owns an official website for Xuxa named “Portal X”, which can be accessed at “www.portalx.com.br” and “www.xuxa.com.br”.

Respondent registered the domain name <clickxuxa.com> with Everyones Internet, Ltd. dba resellone.net on February 14, 2006 as indicated in the Registrar’s Whois service through an independent search by Panel on September 18, 2007. Respondent operates a website to which the disputed domain name resolves.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name < clickxuxa.com > reproduces the XUXA trademark and that the addition of the word “click” does not detract from the distinctiveness of the famous XUXA trademark and brand name. Therefore, Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademarks and may cause Internet users to believe that the website to which the disputed domain name resolves is the official site of Complainant.

Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent is not the owner of any trademark registration for the use of the word XUXA, and has no rights in the XUXA trademark; (ii) the registration of the XUXA trademarks by Complainant precedes the creation of the disputed domain name; and (iii) XUXA is a name widely recognized as relating to the artist known as “Xuxa”, and the use of of the disputed domain name could bring damage to the value of the XUXA trademark because of the fame associated with that brand.

Finally, Complainant argues that the bad faith of Respondent in registering and using the disputed domain name results from the following elements: (i) Respondent was aware of the existence of Complainant’s trademark and the XUXA brand name in view of the contents of the website to which the disputed domain name resolves; (ii) the use of disputed domain name may lead users to believe that it was created by the Complainant own staff; (iii) Respondent intended to obtain an economic benefit from the registration of the domain name as contemplated under paragraph 4(b)(i) of the Policy.

B. Respondent

Upon receipt of the Center’s Notification to Complainant that the Complaint was administratively deficient, Respondent’s administrative and technical contact sent an email to the Center stating that “there are no documents proving that the company Xuxa Promoзхes e Produзхes Artнsticas Ltda. have the rights about the ‘xuxa’ word” and arguing that “the best decision is for the domain name continue with the current owner until the “Xuxa Promoзхes e Produзхes Artнsticas Ltda” send some documents proving that they are the owner of the trademark/word ‘xuxa’”.

The Center advised Respondent’s administrative and technical contact that the Notification of Complaint would be forwarded shortly together with all the documents submitted by the Complainant. However, the Respondent did not file a Response to the Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondent to reply to all of the Complainant’s contentions by submitting a complete Response. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. (see e.g. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.)

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

This Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that this may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In the disputed domain name the XUXA trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the generic words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).

The word “click” is purely descriptive and does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. Corbis Corporation v. RegisterFly.com/Whois Protection Service/surf advertising company/ Joseph, Graham, WIPO Case No. D2006-0546 (finding inter alia that the addition of the word “clicks” is not apt to distinguish the domain name <corbisclicks.com> from the Corbis mark). Additionally, as a matter of fact, the combination of “click” with “xuxa” creates an immediate potential for false association with the XUXA trademark and brand name, and a high degree of initial confusion.

Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

Respondent’s website at “www.clickxuxa.com” provides a wide range of information and materials concerning the artist known as Xuxa. There are disclaimers on the website stating that that is a fan site. In fact, the website home page contains a lettering with the following message: “www.clickxuxa.com - Our Queen at a click - 2007 - Year II - Fan site in honor of the greatest Brazilian TV star.” However, a claim that something is a “fan site” does not automatically turn it into one. Curtis Jackson v. WhoisGuard, WIPO Case No. D2006-0070.

There is no dispute that Respondent was not authorized by Complainant to use the XUXA trademark and that Respondent is not commonly known by that name. The basic argument advanced by Complainant is that the use of the disputed domain name could bring damage to the value of the XUXA trademark because of the fame associated with that brand.

However this may be, this Panel takes the view that a trademark owner has the right to decide how its mark will be used in the market in association with the products or services distinguished by it. The Panel also agrees that the exclusive rights granted to a trademark owner by their nature impose a certain limitation on a third party’s freedom of expression. While a third party may of course express their views regarding a trademark owner, this does not in the Panel’s view necessarily require a right to do so under a domain name with a high probability of confusion with the trademark at issue. Other WIPO panels have also noted that “[T]he right of free speech is recognized under the Policy, inter alia, in paragraph 4(c)(iii), further to which Respondent is allowed to make legitimate noncommercial or fair use of a domain name”. Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560.

There are also a number of UDRP cases where the panel found that a non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.5. This section of the Overview namely deals with fan sites that are clearly active and non-commercial. There are two main views:

(i) View 1: An active and clearly non-commercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be non-commercial and clearly distinctive from any official site.

(ii) View 2: Respondent does not have rights to express its view, even if positive, on an individual or entity by using a confusingly similar domain name, as the respondent is misrepresenting itself as being that individual or entity. In particular, where the domain name is identical to the trademark, the respondent, in its actions, prevents the trademark holder from exercising the rights to its mark and managing its presence on the Internet.

If the Panel were to apply only the first of these views to the present case because Respondent purports to use the disputed domain name for an allegedly fan website, there would be a potential issue of nominative fair use. DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222. The Panel accepts that provision of information regarding celebrities may constitute services under paragraph 4(c)(i) of the Policy because the term “services” may include noncommercial services to the public. Estate of Gary Jennings and Joyce O. Servis v. Submachine and Joe Ross, WIPO Case No. D2001-1042; 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001; Tom Cruise v. Network Operations Center / Alberta Hot Rods, supra.

Based upon a review by the Panel of the website at “www.clickxuxa.com” and of Respondent’s personal site (“www.blesshost.com.br”), it appears that Respondent does not provide advertising or commercial links at “www.clickxuxa.com”. However, there are certain complicating factors which should be taken into account:

(i) It appears that Respondent is not a not-for-profit fan club entity but instead appears to do business in the Internet community, since Respondent provides inter alia website hosting and domain name registration services. What is the motivation for an Internet service company to hold and maintain an alleged “fan club site”?

(ii) Respondent did not choose an obvious domain name for identifying a Xuxa fan site, such as for instance <xuxafan> or <xuxafans>¹, but rather the combination of Xuxa with “click”, which, in addition to its evident confusing similarity with the XUXA mark, may misleadingly divert Internet users seeking a Xuxa official site. The fan club disclaimer, would in any case be seen by Internet users only when access to the website is made. Why did Respondent not choose a more obvious domain name for identification of a fan site?

(iii) The website at “www.clickxuxa.com” appears to be a sophisticated site with many features, including an online magazine (called “Icone), produced by a team composed of at least nine professionals in charge of specific responsibilities. While in terms of visible content it currently has the appearance of a legitimate fan site, it could very readily be turned to a clear commercial purpose.

(iv) Respondent failed to submit a complete response. But Respondent’s administrative and technical contact sent an email to the Center stating that “there are no documents proving that the company Xuxa Promoзхes e Produзхes Artнsticas Ltda. have the rights about the ‘xuxa’ word” and arguing that “the best decision is for the domain name continue with the current owner until the “Xuxa Promoзхes e Produзхes Artнsticas Ltda” send some documents proving that they are the owner of the trademark/word ‘xuxa’”. However, the Respondent has not sought to advance any argument or evidence in response to the Complainant’s contentions that the Respondent lacks rights or legitimate interests in the domain name.

(v) Respondent appears to be using the website at “www.clickxuxa.com” to establish “partnerships” and connect the website users to other alleged fan sites of Brazilian and foreign celebrities. Respondent is apparently attempting to establish a network of contacts which, together with the record of fans registered with the “www.clickxuxa.com” may also easily be used for commercial purposes.

(vi) If Respondent felt it had rights or legitimate interests based on its seeming operation of a fan site, and, it had no commercial interest in the site or domain name, why has it chosen not to address these issues in response?

The Panel concludes that these circumstances are very unusual in the context of an alleged fan site and, therefore, finds that Respondent cannot rely essentially on silence and its fan site disclaimer to rights or legitimate interests in respect of the disputed domain name.

The consensus view in WIPO Panel decisions has been that “[w]hile the overall burden of proof rests with the complainant, …. this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.1).

The Panel is convinced that the Complainant had done enough to establish a prima facie case and is not convinced that Respondent is making a legitimate or fair use of the disputed domain name. By failing to reply to Complainant’s allegations, Respondent did not bring any evidence or argument which could clearly justify why Respondent chose <clickxuxa> for its domain name. Particularly in the context of a domain name that has such an evident prospect for confusion with the Complainant’s mark, and in the particular circumstances of this case, in the Panel’s view, something more by way of explanation from Respondent would be required in order to justify a finding in its favour.

In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

There is no dispute that Respondent was aware of the XUXA brand name and trademark when it registered the domain name. In fact, as indicated before, there are disclaimers on the website stating that that is a Xuxa fan site. However, the mere inclusion of a disclaimer does not insulate a respondent from a finding of bad faith, if other factors are present which demonstrate bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.5.

The Panel has found before that the combination of Xuxa with “click”, a word used in connection with business activities, may misleadingly divert Internet users seeking Xuxa official sites. In fact, there is, in the Panel’s view, a considerable possibility that people may try to get in contact with Xuxa by typing “clickxuxa” because of the meaning of the word “click”‘. TV Globo Ltda. v. Globo Design Ltda., WIPO Case No. D2000-1559. It has also been emphasized that Respondent appears to do business in the Internet community, nor has Respondent sought to directly contest any of Complainant’s contentions regarding bad faith. Therefore, the Panel concludes on balance that Respondent registered the <clickxuxa.com> domain name to profit from the fame of the XUXA brand name and trademark.

As a result, the Panel finds that Respondent registered the disputed domain name in bad faith.

Respondent provides different types of materials at “www.clickxuxa.com” which may infringe on the rights of third parties since Respondent does seem to have authorization from Xuxa or the copyright owners to offer these materials. The Panel does not make a finding on the issue of infringement of third party’s rights as any such determination is outside of the Panel’s purview. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784. However, the Panel notes that Respondent appears to make an intensive and careless use of third parties’ materials regarding the artist even though Respondent apparently created a sophisticated website produced by a team of professionals.

In previous WIPO UDRP cases involving apparent fan sites related to Complainant, the decision was often made on the basis of the existence or absence of commercial use. See, e.g., Xuxa Promoзхes e Produзхes Artнsticas Ltda. v. Ivo Conestabile Junior, WIPO Case No. D2005-0873; Xuxa Promoзхes e Produзхes Artнsticas LTDA. v. David Lichtman, WIPO Case No. D2006-0558. In those instances the panel found that the website at the disputed domain name was used for commercial purposes.

A question which arises in the present case is whether Respondent’s site is actually “non-commercial”. Reference should be made to the fact that paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if the panel finds them to be present shall constitute evidence of bad faith use of a domain name within the meaning of paragraph 4(a)(iii) of the Policy. Galatasaray Spor Kulubu Dernegi, Galatasaray Pazarlama A.S., Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726.

The Panel is convinced on balance in the particular circumstances of this case that when Respondent, an apparent Internet website service provider, launched a sophisticated and professional website it had primarily in mind the possibilities of obtaining a commercial benefit from the disputed domain name. Contrary to what some of the visible content of the website at “www.clickxuxa.com” may suggest, Respondent’s intentions do not seem to be non-commercial.

Therefore, the Panel concludes that Respondent intends to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <clickxuxa.com> be transferred to the Complainant.

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Manoel J. Pereira dos Santos
Sole Panelist

Dated: September 26, 2007

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¹ The domain names <xuxafan.com> and <xuxafans.com> were availabe for registration pursuant to a database research made by Panel as of September 21, 2007 at NSI databases.