Vaga-lume Midia Ltda
Kevo Ouz d/b/a Online Marketing Realty
Claim Number: FA0910001287151
Complainant is Vaga-lume Midia Ltda ("Complainant"), represented by Zak Muscovtich, of The Muscovitch Law Firm, Canada. Respondent is Kevo Ouz d/b/a Online Marketing Realty ("Respondent"), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vagalume.com>, registered with Enom, Inc.
Each of the undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC. as Panelist
Paul M. DeCicco as Panelist
Roberto A. Bianchi as Chair
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 1, 2009.
On October 1, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vagalume.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 28, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Respondent requested an extension of time to respond until November 12, 2009, which was subsequently granted.
A timely Response was received and determined to be complete on November 12, 2009.
On November 17, 2009, the Forum received an Additional Submission from Complainant. On November 23, 2009, the Forum received a Respondent's Additional Submission in Reply to Complainant's Additional Submission.
On November 19, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco and The Honourable Neil Anthony Brown QC. as Panelists, and Roberto A. Bianchi as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Vagalume is a Brazilian-based website about music and lyrics created in 2002, by husband and wife team, Daniel Lafraia and Ana Leticia Torres. It offers vast music related content, including lyrics, translations, news, interviews, videos, biographies, discographies, and autographs .The website operates from its primary domain name, VAGALUME.COM.BR (registered March 14, 2002) and its secondary domain name, VAGA-LUME.COM.BR (registered April 24, 2006). Vagalume's audience is one of the largest for any single web site in all of Brazil, with 800,000 daily unique visitors and 12 million daily page views. Brazil itself is the world's sixth largest country, with a population of nearly 200,000,000, which in part explains the impressive numbers of visitors that Vagalume enjoys.
Vagalume is part of the UOL network of web sites. UOL is the largest general portal of any kind in Brazil. In fact, from November 1, 2007 to July 31, 2009 alone, Vagalume received a total of 542,967,903 visits. Vagalume's traffic comes primarily from Brazil (89%), Since 2006, Vaga-lume has expanded its audience to include Spanish-speakers, in addition to Portuguese, by creating a version of Vagalume for Argentina (www.vaga-lume.com.ar) and for Mexico (www.vagalume.com.mx), with all its content in Spanish. Furthermore, Vagalume has expanded into Twitter, and has a total of 24,161 Twitter followers, and into a Vagalume Google social network, called Orkut, with nearly 200,000 members.
Vagalume's substantial traffic and reputation demonstrate that the Complainant has longstanding trademark rights in VAGALUME pre-dating its actual trademark registration dated March 3, 2009. It is readily apparent that Complainant's common law trademark rights in VAGALUME go back to at least 2004, if not earlier, to 2002. Complainant is the owner of the VAGA LUME trademark filed August 6, 2004, and registered on March 3, 2009 under Reg. No. 826569726 with the Instituto Nacional da Propriedade Industrial, Brazil's official trademark and patent registration office, covering "web page creation on the Internet and hosting of a music portal". Complainant's predecessors in interest first launched the VAGALUME.COM.BR web site on or about November 23, 2002.
Respondent is a well known and experienced cybersquatter. He has lost three previous complaints made against him over four domain names pursuant to the ICANN Uniform Dispute Resolution Policy: Nike, Inc. v. Online Marketing Realty c/o Young Jin, NAF Claim Number FA0605000713839 (NikeStore.com, June 30, 2006); Movado LLC v. Online Marketing Realty, WIPO Case No. D2008-0757 (MovadoWatch.com, June 22, 2008), and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 (WIKIPEADIA.COM and WIKIPEDIIA.COM, August 7, 2009). Respondent has a serious history of cybersquatting that spans over at least four years, with his most recent loss of a UDRP being only weeks ago. Furthermore, he is the registrant of the following domain names that are currently cybersquatted by him: wwwGucci.com, Carrtier.com, Aple.com and wwwWorldCupSoccer.com.
As a result of the substantial traffic and reputation as previously set out herein, VAGALUME has acquired a secondary meaning other than "firefly" to millions of Portuguese speaking Brazilians. Respondent is also a trader of other domain names, and his numerous postings about these domain names in public, demonstrate that he is a skilled and adept domainer who is familiar with traffic rankings, Alexa, and other ways of gauging the value of domain names. Respondent is aware of value of misdirected traffic and trademark infringement, and has been taking advantage for years. That is why the Respondent targeted the domain name for this particular cybersquat. In fact, the cybersquatted Domain Name gets hundreds of thousands, if not millions of visitors who are all looking for Complainant's VAGALUME web site. According to Google Analytics Report, 363,788 visitors to the Complainant's web site only arrived there after mistakenly searching Google for "vagalume.com", and that 304,115 visitors only arrived after mistakenly searching for www.vagalume.com.
When the owner of Complainant, Daniel Lafraia emailed the Respondent on July 3, 2009 and asked how much the Respondent wanted to sell the Domain Name for, the Respondent replied, "100k to 200k offers, it makes 100 dollars a day". The domain name VAGALUME.COM is nearly identical to Complainant's registered trademark VAGA LUME, which has been used by the Complainant since as early as November 23, 2002. The dominant feature of Complainant's trademark is VAGA LUME, not the design aspect, and accordingly, the disputed domain name is confusingly similar. Respondent has no legitimate interest in the Domain Name.
- All that the Respondent has used the Domain Name for is blatant trademark infringing Pay-Per-Click ads related to the exact subject matter of the Complainant's business, i.e. music. As such, pursuant to paragraph 4(c) of the Policy, Respondent has no right or legitimate interest in the infringing domain name. There isn't any evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name other than the aforementioned trademark infringing PPC advertising, and accordingly, that is not a bona fide offering of goods or services. Respondent is misleading visitors for commercial gain and therefore obviously cannot be 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". Furthermore, the Respondent is not and has never been commonly known by VAGALUME. Respondent registered the domain name in bad faith to take advantage of the Complainant. Given the extensive experience and knowledge of the Respondent in the field of domain names and corresponding traffic, it is extraordinarily unlikely that the Respondent registered the Domain Name for any reason other than to capitalize off of the Complainant's trademark rights and reputation. The Respondent likely targeted the Complainant due to the substantial traffic that the Complainant enjoys in connection with its domain name and corresponding trademark rights. Respondent is using the domain name in Bad Faith, by intentionally seeking to exploit user confusion through the diversion of Internet users away from the Complainant's web site to Respondent's 'pay per click' site, for its own benefit and commercial gain. Diverting users in this misleading manner is evidence of Respondent's bad faith.
Respondent contends the following:
The disputed domain name solely incorporates the common word "vagalume" (or vaga-lume), a Portuguese word meaning "firefly." Complainant does not enjoy exclusive use of this word - even within the field of music covered by its trademark. "Vagalume" is subject to substantial third party use on the Internet. A Google search for "vagalume," excluding "vagalume.com.br" and "uol.com.br" to avoid references to Complainant, yielded 3.33 million third party web pages containing the term. The term Vagalume is commonly associated with music independent of Complainant's web site. Complainant does not have a registered trademark for the word "vagalume" or "vaga-lume" standing alone. Complainant's mark is a design mark, which incorporates the common word "vaga-lume." Ownership of a design plus words mark does not entitle the owner of the mark to prevent use of those words by others in commerce.
Apparently cognizant of the weakness of its case on this prong, Complainant points to alleged common law trademark rights it has to the word vaga-lume." The problem with this argument is that virtually every instance of its trademark Vagalume appears as a design with the distinctive firefly. The word "vagalume" without the design has appeared only intermittently on Complainant's web site, but not as a trademark. It is clear that from its inception Complainant included the firefly as an integral part of its trademark. Complainant itself admits it included the firefly to stand-in for the dash that had been required in the word vaga-lume in the Portuguese language. Accordingly, any common law trademark rights possessed by Complainant are in its design mark, and not in the word vaga-lume or vagalume standing alone. The Panel should, therefore, find that Complainant does not have enforceable rights to a trademark that is identical or confusingly similar to the Disputed Domain and, accordingly, issue a decision denying the Complaint.
Respondent has rights and a legitimate interest in the domain name. The Disputed Domain name incorporates the common word "vagalume," which is a common word meaning firefly in Portuguese. Respondent purchased the disputed domain name for this reason, without knowledge of Complainant's trademark and without intent to target Complainant's trademark. Complainant does not have exclusive rights to the common word "vagalume" -- even within the field of music. There is no evidence that Respondent targeted Complainant or its trademark, nor is there is evidence from which to infer that he did. A Google search for "vagalume," excluding "vagalume.com.br" and "uol.com.br" to avoid references to Complainant, yielded 3.33 million third party web pages containing the term. Respondent does not even have exclusive use of the term in the field music. For example, Vagalume, produced by Igalia.com, is a Last.fm client (music player) for the UK based Internet radio and community web site Last.fm. There is also a record company based in Amsterdam called Vagalume Records. Brazilian recording artist Rinaldo Donati recorded an album in 2006 called Vagalume. It is clear that Complainant does not have exclusive rights to this common term even within the field of music.
Because "vagalume" is a common word, Respondent has a legitimate interest in the disputed domain. The legitimate interest is established where there is no evidence Respondent targeted Complainant's trademark. The fact that the term is subject to substantial third party use is another factor that directs a finding of legitimate interest on the part of Respondent. The principle that a legitimate interest is established in connection with the registration of common word domain names, absent evidence of trademark targeting, is applicable to words in any language regardless of whether or not the domain registrant is native to the country applicable to the language of the disputed domain. Accordingly, the fact that Respondent is not a native of a Portuguese-speaking country is entirely irrelevant. Vagalume is a common word free to be registered by anyone.
Respondent's legitimate interest is further established because it has used the Disputed Domain to post pay-per-click advertising links in connection with the Parked.com domain hosting service. The links that have appeared on the site related to Complainant's goods and services do not make Respondent's interest illegitimate. Respondent did not select the links. They were auto-generated by Yahoo and Parked.com. These third-party links do not in any way make Respondent's interest illegitimate.
It cannot be concluded that the music links on Respondent's web site appeared as a result of Complainant's trademark. The links are generic music links and are not directly related to the goods and services offered by Complainant. There is no evidence to suggest that the links appeared on Respondent's web site as a result of Complainant's mark. They just as easily could have been generated based on other third party music uses of "vagalume" such as the Vagalume client music player for last.fm or Vagalume records. There were 131,000 Google search results for Vagalume Records, and at least 85,200 Google search results for the Vagalume Last.fm player.
The links on Respondents web site include "music videos, sheet music, free music, cd, rock, jazz, music lessons, instruments, piano, etc." There is no link on Respondent's site that is directly related to Complainant's site. For example, Complainant states that its web site "offers vast music related content including lyrics, translations, news, interviews, videos, biographies, discographies and autographs." The only link on Respondent's web site that would arguably be directly competitive with Complainant's offerings is, perhaps, music videos. There are no links on Respondent's site for autographs, lyrics, translations, news, interviews, biographies or discographies, and Complainant does not offer services related to music lessons, sheet music, or pianos. Accordingly, while Complainant wishes the Panel to simply assume Respondent targeted its trademark as a result of music-related links appearing on its site, there is no evidence to support this.
Respondent did not select the links, and did not know until he received this Complaint, that the links created an alleged trademark conflict with Complainant. Nor would he be expected to know this. Complainant has no U.S. registered trademark. Once Respondent became aware of the possible conflict he took remedial action. Following receipt of the Complaint, Respondent instructed Parked.com to block any music links from appearing on the web site. This action does not constitute bad faith under the Policy. To the contrary, this was done as an accommodation based on Complainant's allegations pending outcome of this dispute. This has been recognized under the Policy as "a rational effort to avoid a costly dispute."
While Complainant has attempted to paint Respondent as a cybersquatter based on a few UDRP losses and four domain name registrations, the truth is that Respondent is a bona fide domain name entrepreneur with a portfolio of domain names almost exclusively composed of common words, descriptive terms, and typo (misspellings) of such words. It is true that Respondent registers typo domains as Complainant suggests. However, the domain names incorporate typos of common words and phrases.
It is obviously unfair and incorrect to generalize Respondent as a "sophisticated and well known cybersquatter" when the bulk of his domain names, to say the least, are common words, descriptive phrases and misspellings of the same. Those few domain names are anomalies. If there is any registration pattern present in this case, it is that Respondent overwhelmingly targets non-infringing, clean common words. Vagalume.com is one such example.
Complainant has not demonstrated that the domain name was registered and is being used in bad faith. Respondent had no knowledge of Complainant or its trademark when it purchased the Disputed Domain on December 31, 2007. Nor was there a basis for Respondent to have knowledge of Complainant's mark.
Complainant speculates based on Respondent's "extensive experience and knowledge in the field of domain names and corresponding traffic" that he "likely targeted the Complainant due to the substantial traffic that the Complainant enjoys in connection with its domain name and corresponding trademark rights." While it is true that Respondent has experience in registering domain names with traffic, the overwhelming evidence is that Respondent targets common word domain names, not trademarks. The registration of the Disputed Domain is in line with Respondent's general pattern of registering common word domain names, and there is no evidence Respondent targeted Complainant's mark. The fact is that Respondent registered a common word domain name which has a lot of traffic. This does not prove Respondent targeted a trademark, just a high-traffic common word domain name. The high traffic of vagalume.com is entirely consistent with what one would expect from a common word domain name. The fact that the Disputed Domain earns advertising revenue also should not prejudice the panel. Respondent is a domain name entrepreneur. He makes money off of domain name traffic generated by common word domain names, such as ring.com. The fact that the common word domain name vagalume.com earns money is entirely consistent with Respondent's business model of earning money off of common word domain names. There is nothing nefarious about it.
The Disputed Domain has not been used in bad faith. The links appearing on vagalume.com were auto-generated by Parked.com and Yahoo and, thus, do not constitute evidence that Respondent acted in bad faith. Moreover, there is no conclusive evidence that the music links appearing on Respondent's web site had anything to do with Complainant's trademark. As discussed above there is substantial third party use of the mark "vagalume" within the music industry, Complainant has not demonstrated that the links appeared on Vagalume.com because of Complainant's marks. The links may very well have appeared as a result of the other third party uses of "vagalume." Where there are multiple users of the same common word mark it certainly cannot be concluded, except with direct evidence, that the Respondent targeted Complainant's trademark.
Complainant urges the Panel to infer Respondent targeted its trademark because of a few other domain names Respondent has registered which may have constituted trademark violations. But as mentioned above, Respondent's portfolio consists overwhelmingly of common words domain names and typos of common word domain names. The 3 losing UDRP decisions and 2-4 domain names alleged to be trademark abuses are insignificant in the context of the more than a hundred domain names Respondent has registered which incorporate common words (like vagalume.com) as well as typos of common words. The domain names referenced by Complainant are anomalies.
Complainant further suggests that the fact that Respondent indicated it would consider an offer for $100,000 to $200,000 to purchase the Disputed Domain supports its case of bad faith registration and use. However, Respondent has never offered the Disputed Domain for sale and he did not know that the party contacting him was Complainant. Bad faith requires the intent to profit from the sale of a domain name to a trademark holder. Here, Respondent simply replied to an unsolicited inquiry stating a number that he would deem acceptable in connection with the sale of his common word domain name. This proves nothing.
C. Additional Submissions
The Additional Submissions of the Parties were timely submitted, in compliance of the Forum's Supplemental Rule # 7. The Panel decides to admit and consider Complainant's Additional Submission because it submits evidence unavailable at the time the Complaint was submitted, consisting in printouts of Respondent's website as revised by Respondent himself after he was served with the Complaint. The Panel decides to also admit and consider Respondent's reply to Complainant Additional Submission.
In its Additional Submission, Complainant contends the following:
In his Response, Respondent contends that 'he didn't select the music-related links; they were auto-generated'. What Respondent does not reveal is that he in fact created a customized web site for the disputed domain name, which was not automatically generated. On or about October 15, 2009 - a week after the Respondent was served with the Complaint, Respondent revised the web site associated with the Disputed Domain Name (as it appeared in Exhibit "NN" to the Complaint). Respondent, apparently in an effort to lay the ground work for his upcoming 'descriptive domain name defense', customized his PPC web site by inserting a picture of a firefly and added the caption, "What does vagalume mean?", which was hyper-text linked to a specific and corresponding Portuguese language entry in Wikipedia for the definition of "vagalume". As such, Respondent demonstrated, for all to see, including the Panel, that he enjoys full control over the content of the web site and could customize it as he sees fit
With the benefit of this new evidence, looking back at the original website, it can now also be determined that Respondent similarly customized that web site version. The original web site contained a customized, Portuguese language, descriptive title in the same area of the web site where the recent revisions were made: "Busca- Artistas, Musicas, Trecho, Videos". This was not a standard PPC page created by software, but a custom job by Respondent, in order to fully capitalize off of his cybersquat. Ordinary, non-customized web PPC web sites, look like the one that he subsequently erected on or about October 27, 2009, in association with the disputed domain name. The ability to customize a web site is publicized by Respondent's PPC advertising company, Parked.com, right on its web site.
Complainant now realizes that Respondent also manually optimized the advertisements that appeared. When "vagalume.org" (a very similar domain name) is entered into the Parked.com system, no music related advertisements were generated. According to Mr. Ouzounian's contentions, this should have produced music related advertisements because the software at Parked.com allegedly produces music related advertisements when it correlates music with "vagalume". As it turns out, Parked.com did not produce music ads at all, just generic ads, demonstrating that Mr. Ouzounian's claims are false. This demonstrates that when the Parked.com system is using the automatic/default settings, the system does not correlate "vagalume" with music. On the other hand, when music keywords are manually inputted using the "edit keywords" feature, music related ads are generated. Furthermore, when the word, "firefly" in English is inputted, ads related to a T.V. show called "Firefly" by the producer of "Buffy the Vampire Slayer" are generated; which is what the Respondent has up now, with a photo of a firefly that he manually uploaded.
Respondent has expressly admitted that what attracted him to the Domain Name was that it had "a lot of traffic", but claims that it he registered it only because it was 'a common word, meaning firefly, in Portuguese'. Obviously, being an Armenian American from Los Angeles, he did not go looking for so-called "common Portuguese words" on Sedo. He went looking for traffic. Accordingly, his primary and original interest in the Domain Name was its associated traffic; it just happened to have a meaning in Portuguese. Yet remarkably, a sophisticated domainer and cyber squatter such as Respondent, claims that he didn't realize until he received the Complaint, that all this traffic, that generated $100 per day, was intended for the Complainant. A simple Google search would have sufficed to reveal the Complainant and its tremendous reputation and brand. On a balance of probabilities, there is no question that it is far more likely that the Respondent registered the domain name and used it in bad faith.
Respondent replied to Complainant's Additional Submission by contending the following:
Complainant alleges that Respondent customized the web site at Parked.com with music-related links and with a Portuguese title related to music. While this allegation is not correct, it nevertheless requires further clarification by Respondent regarding the degree of customization undertaken. The Response states that music links on the vagalume.com web site were auto-generated by Parked.com. This is absolutely correct. However, following receipt of the Additional Submission, Respondent contacted Parked.com and requested past communications between Respondent and Parked.com to get a more accurate report on the web site use history. Upon review of these communications, Respondent was reminded that, although he did not select the music links on the web site as correctly alleged in the Response, he did advise Parked.com that the site should have a music theme, as this was the theme of the web site when Respondent purchased it from Sedo. Respondent also advised Parked.com to place a Portuguese title on the page because he knew Vagalume was a Portuguese word. This information was unintentionally omitted from the Response as Respondent unintentionally failed to provide it to Respondent's counsel.
When Respondent chose to move the Disputed Domain to Parked.com, Respondent elected to continue the display of music-related links. The important point is that Respondent did not elect to continue a music theme on the Vagalume.com web site because of Complainant's business or its trademark. He simply continued the music use of the web site that had existed prior to his purchase of the Disputed Domain because that was what was working well for the domain name. Respondent never denied knowledge that vagalume.com was connected to music, just that he purchased the Disputed Domain because it was a common word and the Disputed Domain was receiving substantial user traffic.
This music connection does not translate to a direct connection with Complainant because, as noted in the Response, there is substantial third party use of "vagalume" by others in the music industry. Even continuing today, Sedo's domain hosting platform, Sedoparking.com, leads to links related to music for "vagalume." This test can be done by typing the url: http://sedoparking.com/vagalume.com. The ads include: "musica tropical;" "letra de musica;" "letras musica;" and "Spanish Christmas Karaoke."
Respondent also unintentionally omitted from the Response the full hosting history of the disputed domain name and wishes to clarify that here simply to be complete. Prior to Respondent purchasing the disputed domain name, when it was hosted at Sedo.com, the vagalume.com web site had had a music theme. Screenshot of Vagalume.com Sedo page annexed as Exhibit 2. After Respondent purchased the Disputed Domain, he continued to host it at Sedo.com for a short period, during which time the web site continued to have a music theme and music related links. After a few months, Respondent moved the Disputed Domain to parking company SmartName.com, continuing the music theme. Subsequently, Respondent put the domain name on his own server and monetized it with Google Adsense for a short period, and then ultimately moved it to Parked.com.
Complainant is a Brazilian corporation. It operates the VAGALUME or VAGA LUME website at vagalume/uol.com.br and at its own vagalume websites under the .br, .mx and .ar ccTLDs for Brazil, Argentina and Mexico. Complainant registered the Brazilian device mark VAGA LUME (and design) under Reg. No. 826568726, with Reg. Date March 3, 2009, filed on August 6, 2004. Complainant websites enjoy substantial traffic mostly from Brazilian Internet visitors interested in the contents of the websites, related to lyrics, music and videos.
Complainant acquired common law trademark rights in the word mark VAGALUME as early as 2004 or before.
Respondent is in the business of trading in domain names.
Respondent is not known by the disputed domain name.
Respondent registered the disputed domain name on December 31, 2007.
The disputed domain name generates an income stream of approximately $100 usd per day.
Respondent knew of the Complainant and/or the Complainant's trademark in VAGALUME at the time he registered the disputed domain name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 that the Complainant must 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
By submitting a copy of the registration certificate, Complainant has evidenced that it has trademark rights in the Brazilian mark VAGALUME (and design).
The fact that the registration of the Complainant's mark was granted after Respondent registered its domain name is irrelevant as regards the first element of the Policy. See MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO Oct. 8, 2003) (considering that quite recent trademarks that do not appear to predate the registration of the domain name in question are sufficient for the purposes of the Policy, paragraph 4(a)(i)); see also Digital Vision, Ltd. v. Advanced Chemill Systems, D2001-0827 (WIPO Sept. 23, 2001) (finding that although trademark registration postdated the domain name registration, complainant has satisfied the first requirement because Policy 4.a.(i) does not require that the trade mark be registered prior to the domain name registration).
The Panel finds that the at-issue domain name is confusingly similar to Complainant's mark. That Complainant's registered mark is a device mark composed of the word VAGALUME and a fanciful drawing of a firefly cannot avoid confusing similarity since the Complainant demonstrates that it has common law trademark rights in the word mark VAGALUME. Even if we consider the trademark only as registered, the term VAGALUME is the dominant part of such mark. In fact, it is the only portion that can be used in speech when talking about Complainant's products or services, or in written communications over the Internet, or while attempting to type in a web address directly into one's browser. Complainant submits printout of web pages where the text portion of the mark is used, like the website vagalume.uol.com.br where phrases like "follow the vagalume" and "Vagalume survey" appear (printout of September 10, 2009) or in the press article of Reuters, posted on January 30, 2006 at musica.uol.com.br (printout of September 17, 2009, Annex "CC" to the Complaint). See Park Place Entertainment Corporation v. Mike Gorman, D2000-0699 (WIPO, Sept. 5, 2000) (finding that since a domain name does not include design elements, it cannot be identical to the stylized versions of complainant's mark; however, complainant can establish the first element of the test when the dominant portion of complainant's word and design mark is a term that would be used by consumers and the press in referring to the complainant. The fact that complainant's design element is not reproduced in respondent's domain name is of no practical significance. "Because domain names cannot include design elements, Internet users must seek a website by typing in the name they know, rather than a design element. For example, Internet users cannot (yet) find a website for Nike shoes by typing in a "swoosh." Likewise, Internet users cannot type in a representation of the Eiffel Tower in order to find Complainant's website relating to its PARIS LAS VEGAS hotel and casino.").
Since there is letter-by-letter coincidence between the disputed domain name and the relevant portion of Complainant's mark, the Panel finds that the first element of the Policy is met.
The issue whether "VAGALUME" or "VAGA-LUME" is a descriptive or a common use word, and the extent and consequences of Complainant's common law rights in the mark, prior to Respondent's registration of the name domain name, are dealt with under the sections of "rights and legitimate interests" and "bad faith".
Rights or Legitimate Interests.
Respondent contends that <vagalume.com> is a common word domain name, subject to substantial third party use related to music, that he purchased it because it was receiving substantial traffic, and that he continued to associate it with music, which is how the domain name had been modified prior to purchase.
The Panel notes that Complainant's device mark VAGALUME and design is composed of a dominant portion, the Portuguese term VAGALUME or VAGA-LUME, and a cartoon-like drawing representing an insect with wings. As noted above, the term VAGALUME means "firefly" in English.
The Panel believes that a device mark gives rights in the compound, and does not deprive others of the right to use the word portion descriptively. See Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000) (finding that ownership of a mark consisting of a stylized form of the words "lovely girl", with a picture of a heart replacing the letter "o" in "lovely", as a means of identifying the source of particular goods and services, does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with their primary meaning in the English language, adding that the owner of the trademark APPLE in relation to computers cannot prevent use of the word "apple" in relation to apples.)
However, in the instant case, the term VAGALUME is not descriptive of the services covered by the mark and the trademark is thus considered an arbitrary trademark. These services are, according to Complainant's trademark registration certificate, services of International Class 42: "creation of pages for the Internet and hosting of a portal about music and musical portal".
Unlike the respondent in Porto Chico, who did use the words "lovely girls" as an accurate description of lovely girls, Respondent does not appear to have registered the disputed domain name or used the term VAGALUME descriptively in accordance with its primary meaning of "firefly", either in Portuguese or in English.
Respondent contends that he registered the disputed domain name because of its traffic, but he does not submit any evidence that this traffic was due to the alleged "common nature" of the term VAGALUME, or that it was in any way related to the users' interest in fireflies. As shown by Complainant with the results of a search for traffic details conducted in Alexa.com on September 17, 2009, 91.4 % of the users of the "vagalume.com" website come from Brazil, a truly substantial figure.
As also shown by Complainant, after having received service of the present complaint, Respondent manually modified the parameters governing the generation of ads appearing on the website at the disputed domain name, from ads almost related to music to generic ads. This shows that Respondent always could and did control the contents of his website ("pay-per-click" links), which deprives of any credibility Respondent's contention that he did not did not select the links, and that they were auto-generated by Yahoo and Parked.com. Respondent's manual change of the ads parameters, following his having received service of the complaint, was hidden until Complainant revealed it in its additional submission. This shows that when Respondent registered the disputed domain name he was targeting Complainant's mark to extract income from pay-per-click links precisely aimed at Complainant's audience and traffic. Only after having been served with the complaint, did Respondent use his ability to manually control the contents of his website at the disputed domain name, and posted texts explaining that VAGALUME means "firefly", in an obvious attempt to justify - ex post facto - his having chosen the disputed domain name. All this does not reveal a use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, pursuant to Policy 4.c.i., or a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy 4.c.iii. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy 4.c.i or a legitimate noncommercial or fair use under Policy 4.c.iii); see also Vance Int'l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Also, Respondent has not shown that he has been known by the domain name pursuant to Policy 4.c.ii., or that he has any other right or legitimate interest in the domain name. The Panel concludes that the second requirement of the Policy is met.
Registration and Use in Bad Faith
It is generally accepted by UDRP Panels that registration of a domain name in bad faith requires that the respondent be aware of the mark to which the domain name is identical or confusingly similar to. Registrants of large numbers of domain names must be particularly careful in respect of the rights of third parties. See Grundfos A/S v. Tex. Int'l Prop. Assocs., D2007-1448 (WIPO Dec. 14, 2007), where the panel stated that "those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: 'It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights' ")
In the present proceeding, Respondent claims that he had no knowledge of Complainant or its trademark when it purchased the disputed domain name on December 31, 2007, the date of the domain name registration, nor was there a basis for Respondent to have knowledge of Complainant's mark. Respondent adds that prior to purchasing the disputed domain name, he conducted a trademark search at the website of the U.S. Patent and Trademark Office, and that he found no registered mark, nor was there an application for such mark then or at present. Respondent thus seems to have complied with the standard on willful blindness as in mVisible Techs., Inc. v. Navigation Catalyst Systems, Inc., D2007-1141 (WIPO, Nov. 30, 2007), that "a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights". However, the panel in mVisible added, "in this context, a failure to conduct adequate searching may give rise to an inference of knowledge" [of the complainant's mark].
Respondent further alleges that a respondent in the United States is not obligated to search the records of foreign trademark offices, that foreign trademark registrations do not put U.S. domain name registrants on constructive notice of foreign trademarks, that the Brazilian trademark office does not have an English version, and that it is difficult for a non-Portuguese speaker to determine how to conduct a search at the web site. Respondent concludes that he was not obligated to conduct a trademark search in Brazil.
The Panel does not share Respondent's view. Respondent states that he knows that VAGALUME is a Portuguese word meaning "firefly". Since Portuguese is spoken in very few countries, and the Portuguese-speaking country with the largest population is Brazil, with over 200 million, the Panel believes that when Respondent decided to search only the USTPO trademark databases he must have known that it was highly unlikely to find a mark in Portuguese. Hence, excluding a cursory search for Brazilian marks makes Respondent's US-only search "inadequate", in terms of the mVisible decision. See Balglow Fin. S.A., Fortuna Comercio e Franquias Ltda. v. Name Admin. Inc. (BVI), D2008-1216, (WIPO Nov. 10, 2008), finding that a cursory search of the OHIM trademark database prior to the respondent's registration of the disputed domain name would have disclosed the existence of two Community trademark registrations for the complainant 's mark. (The respondent in Balglow also resided in the United States).
Nor is a reasonable excuse for not conducting a trademark search on the Brazilian PTO database that it does not have an English version. Respondent knows enough of trademark search on the Internet to believe that it takes more than just typing the term in question into a search field. In any case, Respondent certainly knows that an easy search can be conducted with just the help of Google or Yahoo search engines to determine if there appeared to be common law rights in the at-issue trademark. In fact, Respondent did conduct such search, since he found a music player called Vagalume, a record company in Amsterdam called Vagalume Records, and a Brazilian recording artist recording an album also called Vagalume. Because Respondent has conducted such search, he also must have found that Complainant's website at vagalume.com.br or vagalume.uol.com.br enjoyed substantial recognition and Internet traffic. A search using Google on "vagalume" returns the Complainant's website in the number one ranked position. Google, "vagalume" (November 29, 2009) In fact, Complainant, whose business appears to be entirely on the Internet, has evidenced with substantial traffic figures that its site had acquired secondary meaning and recognition in Brazil as an Internet lyrics and music portal by 2004, and at any event, before the registration of the domain name by Respondent.
According to documents submitted by Complainant with the Complaint, Vagalume's audience is one of the largest for any single web site in Brazil, with 800,000 daily unique visitors and 12 million daily page views. Respondent does not contest such figures. In these circumstances, it is more likely than not that Respondent, a sophisticated Internet user and domainer, and evidently aware of traffic statistics, must have known of Complainant, its mark, and services related to Complainant's lyrics and music portal when he purchased and registered the vagalume.com domain name in 2007. Otherwise it would be very hard to explain why he simply purchased a domain name with such traffic without even wondering about the reasons behind such success.
Additionally, the Panel notes that Respondent's remarks that he had no knowledge of the Complainant or its trademark prior to the instant dispute are contradicted by the uncontroverted circumstantial evidence discussed above. Respondent's prevarication regarding his prior knowledge of the Complainant and its common law trademark, as well other apparently disingenuous statements made in his pleadings, is additional independent and sufficient grounds for finding bad faith registration and use.
In its reply to Complainant's additional submission, Respondent contends that prior to his having purchased the disputed domain name, when it was hosted at Sedo.com, the <vagalume.com> website already had a music theme. In support, Respondent submits an undated printout of a web page at http://sedoparking.com/vagalume.com, the first two links of which, "Letra De Musica" and "Letras Musica", mean "Lyrics". The fifth link, titled "Spanish Christmas Karaoke", also relates to lyrics. In the Panel's opinion, even if this printout had been obtained prior to Respondent's purchase of the domain name, the links related to lyrics only suggest that the former owner of the disputed domain name also had Complainant, its mark and website specialized in lyrics, in mind.
Also, the Panel cannot overlook the fact that Respondent was the losing party in three previous UDRP proceedings: Movado LLC v. Online Mktg. Realty, D2008-0757 WIPO Jun. 22, 2008), over MovadoWatch.com, Wikimedia Found. Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798, August 7, 2009, over wikipeadia.com and wikipediia.com, and Nike, Inc. v. Online Mktg. Realty c/o Young Jin, FA 713839 (Nat. Arb. Forum Jun. 30, 2006), over NikeStore.com. While Respondent observes that in all such cases he was in default, the Panel cannot but speculate that an experienced domainer like Respondent may have considered that its case was indefensible. In any event, there is no evidence that Respondent has challenged any of these decisions before a court, as it was his right under the UDRP. Respondent cavalierly considers such cases to be a "few UDRP losses". The Panel believes that those cases demonstrate that Respondent had engaged "in a pattern of such conduct" when he registered the disputed domain name in order to prevent Complainant from reflecting the VAGALUME mark in a ".com" domain name, which is a circumstance of bad faith registration pursuant to Policy 4.b.ii. See Sport Supply Grp., Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)("[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent."); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that "Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it" and taking notice of another UDRP proceeding against the respondent to find that "this is part of a pattern of such registrations").
For the reasons above, the Panel concludes that Respondent registered the disputed domain name with Complainant's website and mark in mind, i.e. in bad faith.
Respondent has been using the disputed domain name to post Pay Per Click (PPC) links. It appears that Respondent has operated some changes in the parameters governing the posting of PPC links on his website. At some point of time, Respondent seems to have caused PPC links related to lyrics to appear. Later, after having received notice of the dispute, Respondent appears to have changed the parameters controlling PPC links, and caused or allowed some content related to fireflies to appear on the website. Respondent appears to also have inserted a cartoon-like drawing representing a firefly (or "vagalume"). In each case, Respondent appears to have had control of his website and the contents posted thereon. See Owens Corning v. NA, D2007-1143 (WIPO Oct. 1, 2007), where the panel addressed respondent's contention that she had no hand in choosing of the type of advertising that would appear. The panel stated that domain name parking services will usually allow users to choose "keywords" to associate with a domain name so that the sponsored links that appear on the page are better aligned with the domain name in the hope that more "click through" revenue will be generated. The panel added that in circumstances where a respondent does not disclose the exact manner in which the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, it is reasonable for the panel to infer that the respondent had some influence upon the sponsored link selection process. While there can be no duty to disclose that which one does not know and thus there are situations where unsophisticated domain name registrants will be completely unaware that they may control what appears to be a static page unconditionally spawned by the domain name's registrar, here Respondent is a sophisticated domainer and it is unlikely if not absurd to find that he was unaware of exactly how the parking page worked and that he could manipulate it.
Importantly, by allowing the website at the disputed domain name to be used by a parking service, Respondent is knowingly and intentionally drawing traffic - i.e. Internet users looking for Complainant and its VAGALUME music portal - to his own website, with the purpose of extracting income from pay-per-click links related to music or simply by means of search engines. This is bad faith registration and use pursuant to Policy 4.b.iv. ("By using the domain name, you 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 location"). Respondent's conduct constitutes bad faith registration and use under Policy 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant's competitors represents bad faith registration and use under Policy 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant's competitors, as well as by diverting Internet users to several other domain names).
Therefore, the Panel finds that the third requirement of the Policy is also met.
Respondent also argues that Complainant waited almost two years after Respondent registered the disputed domain name to file this UDRP complaint, which raises the inference that Complainant was not confident in the merits of its case. The Panel cannot share such argument which is grounded in speculation. Furthermore, there is no provision in the UDRP allowing a defense of laches. Nor is there a clear line of precedent supporting it. See Tom Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO Jul. 5, 2006), considering that there is no meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name. Finally, there is no indication as to how Respondent may have been prejudiced by the delay. To the contrary Respondent announced that it was receiving a $100/day income stream from the parked domain name and so if anything he was the beneficiary of two years of income that are not, and cannot be, challenged within this abbreviated proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vagalume.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Roberto A. Bianchi, Chair
Dated: December 7, 2009
DISSENTING OPINION BY THE HONOURABLE NEIL ANTHONY BROWN QC
I would find that neither the Complainant's registered trademark or its alleged common law trademark is sufficient to support the Complaint.
I would also find that, on the other heads of the Policy, there are several obstacles in the way of a finding in favour of the Complainant in this matter, such that the Complaint cannot with any confidence be resolved using the UDRP process and that the parties should be left to pursue it in litigation in the courts.
The matter is not entirely free from doubt on either side, but the majority decision is in effect that a party such as the present Complainant can successfully claim transfer of a domain name in a common word when its associates did not apply for a trademark until two years after the domain name was registered, it did not come into existence as a company for a further two years, has apparently never protested at the existence of the contentious domain name or its use, has acquiesced in the rights of the owner of the domain name by trying to buy it and, when its trademark is granted, nine years after the domain name was registered, claims for the first time that a new owner of the domain name has acted in bad faith because the website carries material similar to that of the Complainant. Clearly, such a claim can be made and may succeed, but if it is to succeed and if the result is for the Complainant to wrest control of the use of a common word, it must be done on good evidence and not on supposition and conjecture. In my opinion, that can only be done safely in court proceedings.
The registered trademark
The only registered trademark relied on by the Complainant is the trademark which includes the drawing of a firefly as well as the word or words "vagalume". That raises the question whether the disputed domain name is identical or confusingly similar to the sole registered trademark relied on.
The same issue arose in Deutsche Post AG v. NJDomains,WIPO Case No. D2006-0001 where the panel (of which I was a member) said as follows:
Trademark number 39540404
"..., as the Respondent points out, it is important to see exactly what it is that has been registered. The Complainant asserts that the domain name is 'identical to the Complainant's trademarks 'Post' trademark 39540404, however, is not solely for a word, but for a device which is set out in the Response. The device consists of a horn and two arrows as well as the word 'Post'.
Thus, the trademark is not for the word 'Post' at all, but for a logo or, as it is called on the register, a word/figurative mark.'
The question then is whether the domain name is identical or confusingly similar to this word/figurative mark.
That type of question is not always easy to resolve, for the figurative or graphic part of a trademark cannot be translated into a domain name and a true comparison is therefore difficult to make.
There are some obvious similarities between the two expressions, for they both contain the words 'Post'. However, that is where the similarities end. Thereafter, it is necessary to make the comparison having regard to how a reasonable bystander would view the domain name and the trademark. The Panel is of the opinion that a reasonable bystander would not regard the domain name as confusingly similar to the trademark because the trademark is figurative and is an entirely different representation from the domain name.
That is so because the trademark is dominated by the very prominent illustration of a horn. It is true that some UDRP panelists have taken the view that in making the comparison presently under discussion, devices and similar figurative depictions should be ignored so that a straight comparison can be made between the words. Thus, the panelist in Sweeps Vacuums & Repair Ctr. v. Nett Corp., WIPO Case No. D2001-0031 said that "graphic elements . . . not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity." On the other hand, the panelist in Curvon Corp. v. Lauren Kallareou, WIPO Case No. D2001- 0565, said that "The Mark. . . is the whole of the composite of design matter and word matter [that] is shown in the registration document," which is the same view taken by other panelists.
The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying that test, the overall impression of the trademark in the present case is entirely different from that conveyed by the domain name. The pictorial representation of the horn is such a prominent and dominating part of the trademark that the result is a logo of the horn as well as the word 'Post'. It is highly artificial to contend that this is a trademark for the word 'Post' when it clearly is far more than that.
Nor in the opinion of the Panel could a reasonable bystander looking at the domain name, which evokes the common generic word 'Post', be confused into thinking that it was really referring to a coloured logo of a horn with the word Post added to it and the company whose logo it was.
Accordingly, the Panel finds that the domain name is neither identical to nor confusingly similar to the German trademark registered number 39540404."
The Complainant in the present case seems to adopt the same or a similar test to describe the trademark, by arguing that "the dominant feature of the Complainant's Registered Trademark, is of course VAGA LUME, not the design aspect..."
Applying the Deutsche Post test of "the overall impression or idea created respectively by the mark and the domain name", or the Complainant's test of "the dominant feature", the trademark is clearly the words dominated by the drawing of the firefly.
That being so, the Policy calls for a comparison between the domain name and the trademark, a comparison that can only be made by the panel placing itself in the position of an objective bystander. It should be noted that the Policy does not invite the panel to ignore parts of a trademark, especially when they are, as in this case, the most dominant aspect of the mark. Accordingly, it is nothing to the point to say that a firefly or any other graphic representation cannot be reproduced in a domain name, for the Policy requires the comparison to be made with the trademark as it is.
Resolving the issue in the present case is not an easy one to resolve, but four facts tilt the scales in favour of a finding that the domain name is not identical or confusingly similar to the trademark result. They are: (i) the dominant presence of the firefly and its integral contribution to the trademark as a whole; (ii) the fact that it is always placed in the same position between the two words "vaga" and "lume"; (iii) the fact that the Complainant itself rarely if ever uses the expression "vaga lume" or the word "vagalume" without the firefly as a trademark, but virtually always uses the words and the firefly to indicate its trademark; and (iv) the fact that even today it apparently has not applied for a trademark registration of the word VAGALUME by itself. Accordingly, the "vagalume" of the domain name is essentially different from and does not invoke the registered trademark and is therefore not confusingly similar to it.
The common law trademark
The Complainant also relies on a common law trademark for VAGA LUME and VAGALUME, i.e. the words themselves.
Why the common law trademark is important
It will have been appreciated that the Complainant's trademark was registered on March 3, 2009. The Respondent, however, came to own the domain name by transfer prior to that date, in fact on December 31, 2007. If the only trademark that the Complainant can rely on is the registered trademark, it will have difficulty in proving registration of the domain name in bad faith. If, however, it can establish a common law trademark that existed before December 31, 2007 it may be able to show that it had a trademark before the Respondent registered the domain name. It will then be able to try to show bad faith registration of the domain name after the common law trademark rights began to run.
No doubt the Complainant and its advisers were alert to this dichotomy and that is the reason for putting the case for a common law trademark.
Has the common law trademark been made out?
The test that the Complainant is required to meet was stated succinctly in Mayekawa Mfg. Co., Ltd. v. Modern Limited - Cayman Web Development, WIPO Case No. D2005-0745 to be:
"In the case of a common law mark, a complainant must show that the mark is used as a trademark or service mark and that the mark has acquired distinctiveness in relation to the complainant's goods or services."
The Complainant has marshalled an impressive portfolio of material on internet traffic to its site, testimonials and press recognition, showing that the site is well known and very popular and that the public and the fans and supporters of the site are prepared to say so. The majority of this material shows the regular use of the two words and the drawing of the firefly, some of it shows the use of the two word expression "vaga lume" and a little of it uses the single word "vagalume".
On the other side of the argument, the Respondent's own very detailed case shows other uses of the word "vagalume" such that there must be at least some doubt whether the word alone "has acquired distinctiveness in relation to the complainant's goods or services."
Moreover, judging from its website, the Complainant does not use the word "vagalume"
by itself as its trademark and when its uses the expression "vaga lume" it expresses it
as VAGA-LUME, as in the expression " "VAGA-LUME" e seu personagem sao marcas registradas de Vaga-Lume Midia Ltda e seus autores."
In fact, the most significant point about the material seems to be that the Complainant goes out of its way to note by repeated use of the symbol that the word and design mark with the firefly is its trademark and that by inference the expression "vaga lume" and the word "vagalume" are not.
The difficulty for the Complainant, therefore, is that it asserts repeatedly that its trademark is the word and drawing trademark rather than the words alone.
The Complainant's advisers have made out a detailed case on this issue. It is difficult to resolve the issue in a definitive way, but bearing in mind that the Complainant's endeavours are directed to depriving the Respondent of a property right in essentially summary proceedings, that the onus of proof is on the Complainant, that it has repeatedly claimed that the word/ drawing mark identified by the symbol is its trademark and made few if any uses of the words alone as a trademark, it cannot be concluded on the balance of probabilities that the common law trademark has been made out.
Rights and Legitimate Interests
My view on this issue is that it is impossible to say with any conviction that the Respondent has no right or legitimate interest in the domain name. Indeed this case is a very good example of how the UDRP process cannot resolve such issues when they are strongly disputed by evidence and how, accordingly, an order should not be made depriving the Respondent of a property right without there being a much stronger case being presented against him, which must necessarily be done in court proceedings.
The starting point must be that the domain name is clearly a common word, which is at least a prima facie showing of a right or legitimate interest. That is so because no-one has a monopoly over the use of common or generic words in domain names and there have been many UDRP decisions to that effect, some of which have been cited and relied on by the Respondent and some of which are collected at Lindsay, International Domain Law, ICANN and the UDRP (2007) 354 et seq. There is no essential difference, for example, between the domain name in the present case, <vagalume.com>, a Portuguese word meaning firefly in English, the domain name <target.com> in Target Brands, Inc v. Eastwind Group, NAF Case No FA267475 (July 9, 2004) and the domain name <thyme.com> in Shirmax Retail Ltd v. CES Marketing, eRES Case, No AF-0104 (March 20, 2000).
To establish his case, the Respondent also relies on, amongst other decisions, Churrascaria Porcao Ltda v. Prime Products Internation , Inc D2001-0535 which establishes another element in this case. This decision is significant for the reason that it shows that a common word gives rise to a legitimate interest in a domain name even if the name is in a language other than the language of the registrant, where in that case, as in the present case, the language was Portuguese and the Respondent was American. The panel stated what must be regarded now as a general principle in this field:
"Therefore the Panel is inclined to accept that in this particular case the principle "first come, first served" was a sufficient basis for acquiring rights or legitimate interests in the (common use) domain name at issue. Even if Respondent has not proved that any of the circumstances of Policy, Paragraph 4(c) are present in its favor, the Panel finds that Complainant has not evidenced that Respondent lacks rights or legitimate interests in a domain name basically consisting of a common use word (Policy, Paragraph 4(a) (ii))."
This principle must be especially applicable in the present case for the following reason.
The registration date of the disputed domain name within the meaning of the Policy for the purpose of judging the actions of the Respondent is December 31, 2007, the date when the Respondent acquired the domain name and had it registered in his name. (BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) and The Ass'n of Junior Leagues Int'l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007).
But the domain name was registered by the original registrant, the Respondent's predecessor in title, on May 15, 2000, being 2 years before the Complainant registered its own domain name <vagalume.com.br> and started its website and more than 4 years before it applied for its trademark.
So at least the original registrant had a legitimate interest in the domain name for several years and that interest was established long before the Complainant came on the scene or was even incorporated.
The principle is further enhanced by the fact that the Respondent never seems to have objected to the domain name continuing to be registered or used and seems to have acknowledged that the Respondent had such an interest in it by offering to buy it. This again is a feature similar to Churrascaria Porcao Ltda v. Prime Products Internationa, Inc (supra) where the panel said as an additional reason showing the Respondent's right or legitimate interest in the domain name:
"It is also true that Complainant waited almost five years to show some interest in the domain name by initiating the present proceeding. Even if Complainant's inaction does not necessarily amount to "acquiescence" (as contended by Respondent) the Panel notes that PORCAO is a common use word, and that during a considerably long period following registration the domain name <porcao.com> remained unchallenged by Complainant."
Likewise, the present Complainant left the domain name <vagalume.com> unchallenged for several years. Just how long is seen by a closer scrutiny of the relevant dates. The domain name was first registered on May 15, 2000, i.e. long before all of the following significant events:
-when the Complainant's owners registered the domain name vagalume.com.br, on March 14, 2002;
-when the Complainant's owners started their own website, on November 23, 2002;
-when the Complainant was incorporated, on April 19, 2004;
-when the application for the Complainant's trademark was filed, on August 6, 2004;
-when the Complainant registered the domain name vaga-lume.com.br, on April 24, 2006;
-when the Respondent came to own the domain name, on December 31, 2007; and
-when the Complainant's trademark was registered, on March 3, 2009.
During the whole of this time, so far as the evidence goes, the Respondent's registration of the domain name and that of his predecessors remained unchallenged.
Indeed, as late as June 30, 2009, when the Complainant offered to buy the domain name, it made no claim that the Respondent was not entitled to it.
How then, as it was put in Admiral Insurance Services v. Dicker, D2005-0241 (WIPO June 4, 2005), did events occur that "could render illegitimate that which was previously illegitimate..."?
It is said that there are two grounds for concluding that this has occurred. The first is that the Respondent does not appear to have registered or used the domain name descriptively in accordance with the primary meaning of the word "firefly" in Portuguese or English. However, there is no obligation on the Respondent to do so, provided he is not targeting the Complainant or misleading the public and provided that his conduct is otherwise legitimate. In this regard he has provided a Declaration to the effect that the advertisements on the website were auto-generated by the providers and were not directed by him. The Respondent has also cited UDRP decisions to the effect that such a use of a domain name does not destroy a legitimacy that is otherwise present, one of which is the case just referred to.
The other ground is that the Complainant's detailed research has revealed that the Respondent has manually controlled the contents of his website, thus showing that he could and did seek to target the Complainant and trade off its name and prominence. It should, however, also be pointed out that the Respondent has given a plausible explanation of his actions in a Supplementary Submission.
Putting all of this material together, one has to conclude that it is equivocal and that there are several disputed and unresolved issues, but that it cannot be said with any confidence that the Respondent has no right or legitimate interest in the domain name.
It may well be, of course, that if the same issues were pursued in civil litigation, the conclusion would be different. But in the context of the present proceedings it is unsafe to conclude that paragraph 4(a)(ii) of the Policy has been made out.
Registration and Use in Bad Faith
The evidence and submissions under paragraph 4(a)(iii) also give rise to such conflicting conclusions that it is impossible to say with any conviction that the Respondent registered and used the domain name in bad faith.
The majority's finding on bad faith is in substance based on a finding that there was an obligation on the Respondent to conduct a search of the Brazilian trade mark registry and that not to do so was tantamount to "wilful blindness". Accordingly, it is said that registration of the domain name with such wilful blindness was registration in bad faith. The authority for that proposition is said to be Balglow Finance S.A., Fortuna Comercio e Franquias Ltda. v. Name Administration Inc. (BVI), D2008-1216, and (WIPO Nov. 10, 2008). However, the basis of that decision seems to be where the registrant makes, in effect, no inquiry at all, a position reflected in such observations of the panel as that "( t)he record reflects that the Respondent registered the disputed domain name without exploring the possibility of third-party rights,..." In contrast, the Respondent in the present case conducted a search in the trade mark registry of the country of his domicile, which on at least one view is as good as could reasonably be expected of him. In any event, apart from any such general principle, to impose such an obligation on a registrant in the position of the Respondent in the present case seems to go further than the terms or sprit of the Policy requires. It is apparently said against the Respondent that as he knew the word "vagalume" was a Portuguese word, he should have searched in Brazil, but not apparently in Portugal. If such an obligation is to be imposed on registrants, it is hard to see why there is not an even wider obligation of them to search in every country where the language in question is spoken, such as to search in Italy, Austria and Switzerland if the registrant knows the proposed domain name is in German.
Imposing this requirement on the Respondent is also requiring him to search in the Portuguese language, to conduct Google or Yahoo searches and to speculate on what the result of his searches means. Again, it is difficult to see where this requirement comes from and why it is not imposing an impossible burden on a registrant in an area where the system and the Policy are presumably there to encourage the use of the internet and not to intimidate people from using it.
There is also a danger in concluding from what the Respondent allegedly did not do, from conjecture and at best from evidence that has not been tested in cross-examination, that he "must have known of Complainant, its mark, and services ...", that he engaged in "prevarication", made "disingenuous statements", that other UDRP cases he did not defend were "indefensible" and that he had acted "cavalierly". None of those conclusions is supported by evidence.
Such conclusions are hard enough to make in a considered judgement after a case with all the assistance of discovery, interrogatories and cross examination, let alone in summary proceedings like the present without that assistance and subject to a rigid timetable.
The same may be said with respect to use in bad faith. One would like to see a sounder basis for rejecting the Respondent's evidence on this issue than that he is a sophisticated operator who must have known how to manipulate a Pay Per Click service.
Just as importantly, it seems to me that the conclusions reached by the majority on bad faith, as on rights and legitimate interests, are so dependent on speculation about the Respondent's knowledge and intention that they should be left to judicial proceedings where those subjective motivations can be fully investigated. At the very least, it is impossible to say with any conviction that the Respondent registered and used the domain name in bad faith.
Accordingly, the Complainant's case has not been made out.
The Honourable Neil Anthony Brown QC
Dated: December 7, 2009
National Arbitration Forum