UDRP complaint for Guarani.com denied – Yet another Brazilian Complainant

A three member Panel denied the UDRP complaint for the domain name Guarani.com that a Brazilian company filed at WIPO. The Panel denied the complaint because there was nothing indicating that the Respondent in the US should have been aware of the Complainant’s trademarks in Brazil and other Latin American countries already at the date of the registration of the disputed domain name guarani.com, or be required to do a worldwide search for all trademarks that incorporate what appears to be a very common word. Also none of the PPC links at the disputed domain name goes to any competitor of the Complainant. Also Respondent’s offer to sell the domain name for $65k was not found to be of bad faith as not only did the Complainant initiate the negotiations but they occurred years after the Respondent’s registration of the disputed domain name.

This is yet another UDRP complaint that was denied and is coming from Brazil after Márcio Mello Chaves, was labeled a REVERSE DOMAIN NAME HIJACKER in the Saveme.com Case.

The Complaint was filed with the WIPO Arbitration and Mediation Center on October 26, 2012. The Complainant was Guarani S.A. of Sao Paolo, Brazil and the Respondent was Marchex Sales, Inc, Brendhan Hight of Las Vegas, Nevada, United States of America represented by John Berryhill. The Center appointed Petter Rindforth, Torsten Bettinger and Richard G. Lyon as panelists.

The Complainant is the owner of several trademark registrations in Brazil for the word “guarani”.

The disputed domain name was “created” on November 20, 2000. According to the Response the current Respondent purchased guarani.com, in late 2004. As the Complaint has not proven or proposed any other date, the Panel will treat 2004 as the year the Respondent registered the disputed domain name.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown duly registered trademarks in Brazil for GUARANI, as a word mark as well as a combined word and device mark. As the disputed domain name consists of the term “guarani”, the Panel finds that guarani.com is identical to the Complainant’s registered trademark GUARANI.

B. Rights or Legitimate Interests

As the Policy’s requirements are conjunctive, and referring to the further comments and conclusions regarding “Registration and Use in Bad Faith”, paragraph 4(a)(iii), below, the Panel finds no reason to comment or consider paragraph 4(a)(ii) as the Complaint has been denied on other grounds.

C. Registered and Used in Bad Faith

The Panel cannot find any evidence of bad faith registration, as – considering the geographical separation between the Complainant and the Respondent – there is nothing in the present record indicating that the Respondent in the US should have been aware of the Complainant’s trademarks in Brazil and other Latin American countries already at the date of the registration of the disputed domain name <guarani.com>, or be required to do a worldwide search for all trademarks that incorporate what appears to be a very common word. None of the PPC links at the disputed domain name goes to any competitor of the Complainant; indeed there is no allegation of such conduct. In short there is no provided evidence of targeting and no evidence of record from which the Panel might infer it.

Accordingly, the Panel finds that there is insufficient evidence in the present record to indicate that the Respondent registered the disputed domain name in bad faith, and the third element of the Policy has not been met.

The Panel also notes that sale negotiations, especially if initiated by the complainant, are not inherently bad faith. In the present case, not only did the Complainant initiate the negotiations but they occurred years after the Respondent’s registration of the disputed domain name. In any event, the Panel finds that these communications provide no basis for finding the Respondent’s intent to sell to the complaining trademark owner as such in 2004 when the disputed domain name was registered. Therefore, the Panel concludes that the Complainant has at least failed to prove that the disputed domain name is registered in bad faith.

Decision

So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.