DECISION

Metalacre Industria e Comercio de Lacres Ltda v. Yesica Moreno and American Seals, Inc.

Claim Number: FA0407000296401

PARTIES

Complainant is Metalacre Industria e Comercio de Lacres Ltda (“Complainant”), represented by Michael C. Cesarano, of Akerman Senterfitt, One S.E. 3rd Avenue, 20th Floor, Miami, FL 33131-1714.  Respondent is Yesica Moreno and American Seals, Inc. (“Respondent”), P.O. Box 841003, Pembroke Pines, Florida 33084.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <metalacre.com>, registered with Parava Networks Inc. d/b/a Registrateya.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 14, 2004; the Forum received a hard copy of the Complaint on July 19, 2004.

On July 20, 2004, Parava Networks Inc. d/b/a Registrateya.com confirmed by e-mail to the Forum that the domain name <metalacre.com> is registered with Parava Networks Inc. d/b/a Registrateya.com and that Respondent is the current registrant of the name.  Parava Networks Inc. d/b/a Registrateya.com has verified that Respondent is bound by the Parava Networks Inc. d/b/a Registrateya.com 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 July 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 2004 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 postmaster@metalacre.com by e-mail.

A timely Response was received and determined to be complete on August 13, 2004.

A timely Additional Submission was received on August 18, 2004

On August 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

On September 8, 2004 a further submission, said to be a Response to Complainant's Additional Submission, was served by Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant manufactures security seals. These include a range of plastic and metallic seals. It is based in Brazil.

METALACRE is a registered Brazilian trademark of Complainant.  In addition, Complainant has applied to the Brazilian Federal Authority, the Instituto Nacional da Propriedade Industrial, for three additional trademark registrations of the mark METALACRE to cover several other products and services.

Complainant states it is the owner of the site <metalacre.com.br>, which is a Brazilian registered site created on March 10, 1999.  Complainant also has two trademark applications pending before the United States Patent and Trademark Office to register the mark METALACRE for plastic seals and metallic seals

Complainant operates an internet web site through which internet users can purchase seals, among other products, on-line.  Complainant says Respondent also operate an internet web site offering seals and related products on-line.  Complainant’s and Respondents' web sites are used for the same services of providing seal products in response to orders solicited through the web site.

It also alleges that Respondent “offered to sell Complainant the identical or confusingly similar domain name metalacre.com”, but no evidence is tendered to show this.

Complainant maintains a web site bearing its name <metalacre.com.br> and does business through that web site.  Complainant asserts that Respondent's use of an identical and confusingly similar domain name <metalacre.com> had diverted, and will continue to divert business from Complainant to Respondent as a consequence of the confusing similarity.

Complainant suggests that Respondent could not have been commonly known by the disputed domain name <metalacre.com> because the domain name was merely used to redirect Internet users to the homepage of American Seals USA

B. Respondent

Complainant also manufactures security seals. These include a range of plastic and metallic seals. It is US based.

Respondent does not dispute that Complainant may have rights in the METALACRE mark.  Rather, Respondent argues that the disputed domain name <metalacre.com> is comprised of the generic term “metalacre,” and therefore is available for priority registration under the Policy.  Respondent alleges that the term “metalacre” means “seals that are made out of metal in Portuguese.” 

Respondent says it did not acquire the domain name in bad faith. It asserts that it purchased the domain name; and since its company exports seals to all Central and South America (including Brazil), it required a name in Portuguese to make it easier for its customers to get to their website and get the product needed.

Respondent asserts that the name METALACRE.COM bears no relation to the name of Respondent’s business, American Seals, but bears a relation to its company name, American Seals, since it manufactures metal and plastic seals.

Respondent states it was not aware of the existence of the company name, Metalacre Industria e Comercio de Lacres Ltda, when it bought the domain name. It asserts that when it acquired the domain name it did it with all the intention of using it by linking it to its webpage, <americanseals.com>.  It says that when Complainant contacted Respondent, the domain name was already linked to <americanseals.com> Respondent claims its intention was to make it easier for its customers to locate it.

Respondent argues that the fact that the domain name that it bought is very similar to the other company's domain name is a mere coincidence. It submits that if Respondent did not purchase the domain name <metalacre.com> it is not Respondent’s fault and that whatever is said, the name "metalacre" still remains generic.

C. Additional Submission

Complainant submits in response that it has been domiciled in Brazil since 1983 and has used the domain name <metalacre.com.br> prior to Respondent’s use of the disputed domain name for services that directly compete with Complainant's services in Brazil.  Accordingly, it argues, Respondent must have presumed knowledge of Complainant’s mark in at least that territory.

Complainant states Respondent’s argument that it used the generic word "metalacre," meaning "seals that are made out of metal in Portuguese," is unavailing as the word "metalacre" does not exist as a word in the Portuguese language.  Rather, the Portuguese word "lacrar" means "seal."

Finally, Complainant states that despite Respondents' claim that it is using the disputed domain name to "make it easier" for its Portuguese customers to access its web page and "get the product needed," nothing in Respondents' web site appears in the Portuguese language or is otherwise calculated to be understood by a consumer who speaks the Portuguese language.

D.  Response to Additional Submission

On September 8, 2004, after the due date of the decision, a further submission (said to be a Response to Complainant's Additional Submission) was received from Respondent. As the submission was received after the deadline for submissions, the Forum does not consider the submission to be in compliance with Supplemental Rule #7.

The Panel may accept this deficient submission. However, it is so clearly out of time and seeks to repeat what has been said before. Further, no explanation is given for its late service. For these reasons the Panel has not considered this additional material.

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

(1) the domain name<metalacre.com> is identical or confusingly similar to the trademark METALACRE;

(2) Respondent has no right or legitimate interests in respect of the domain name<metalacre.com>; and

(3) The domain name<metalacre.com>was registered and is being used in bad faith.

DISCUSSION

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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

Complainant alleges rights in the METALACRE trademark,which is used in connection with seal products.  As evidence of such rights, Complainant points to the registration of the METALACRE mark (Serial No. 813.411.327) with the Brazilian trademark authority, the Instituto Nacional da Propriedade Industrial, in September of 1988.  Complainant also states that it owns three other pending trademark applications for the METALACRE mark in Brazil (Ser. Nos. 824.947.866, 824.947.908, 824.947.924), as well as two with the United States Patent and Trademark Office (Ser. Nos. 78/348278 and 78/348276).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

The Panel may find the disputed domain name <metalacre.com> is identical to Complainant’s METALACRE mark pursuant to Policy ¶ 4(a)(i) because the domain name contains the mark in its entirety.  The addition of generic top-level domains, such as ‘.com,’ have been deemed immaterial in analyzing the similarity between domain names and marks under the Policy.  See Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

It should also be noted that, apart from Complainant’s trademark registrations/applications there is little evidence of the nature and extent of its use of the trademark METALACRE.  However, Respondent does not dispute Complainant’s rights in the term METALACRE, whether as mark or otherwise.  Indeed, it can reasonably be taken as an inference that Respondent accepts Complainant’s right in the mark.

Respondent’s main argument is that “metalacre” is available for registration under the Policy because the term means “seals that are made out of metal” in Portuguese.  It seems common ground that both parties are involved in the security seal industry and manufacture and sell these products.  It also seems that the products are made of materials, which include plastic and metal.  Complainant in turn argues that the word “metalacre” does not exist as a word in the Portuguese language, even though the Portuguese word “lacrar” means “seal”.  “Lacre” and “acre” seem to have different meanings in Portuguese.  Thus, the meaning of the combined word may depend on how it is rendered and read.

Further, no party suggests that the word “metalacre” exists in the Portuguese language as such.  It is thus, prima facie, newly coined, even it may have some descriptive significance.  There is, certainly no evidence that it is generic.

For the above reasons, it is found that Complainant makes out this ground.

Rights or Legitimate Interests

Complainant argues that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  As evidence, Complainant points to Respondent’s use of a domain name that is identical to Complainant’s METALACRE mark for the purpose of soliciting “seal product sales,” which is in direct competition with Complainant’s business.  The Panel may find that Respondent’s use of a domain name that is identical to a competitor’s mark for the purpose of selling competing goods or services does not evidence rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Commun., Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Furthermore, Complainant states that Respondent could not have been commonly known by the disputed domain name <metalacre.com> because the domain name was merely used to redirect Internet users to the homepage of American Seals USA.  Therefore, the Panel may find that Respondent’s own actions preclude a finding under Policy ¶ 4(c)(ii) that Respondent was commonly known by the domain name at issue.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).     

Respondent’s argument that it should be entitled to use the word/term “metalacre” is based principally on the ground that it is a generic term that should be open to use.  One would have thought that if this argument was to be sustained, some evidence to support the alleged generic nature of the term would have been provided.  Instead, Respondent has relied on the simple assertion that the words have particular meanings.  That however does not deal with the combined and, it seems, newly coined word “metalacre”.

Further, in terms of having found a legitimate interest, the point made by Complainant in its additional submission that whatever might be said, Respondent is seeking to use the disputed domain name for services that directly compete with Complainant’s services in Brazil.  Likewise, Complainant notes that Respondent’s website does not seem to be directed to those who speak the Portuguese language.  This assertion is not disputed either.

 For the above reasons, it is found that Complainant makes out this ground.

Registration and Use in Bad Faith

Complainant alleges that Respondent “offered to sell Complainant the identical or confusingly similar domain name metalacre.com.”.  The Panel may find that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i) based on the following facts: Complainant used the METALACRE mark since at least as early as 1988; Respondent registered the disputed domain name <metalacre.com> approximately fourteen years after Complainant’s initial use of the METALACRE mark; Respondent operates in the same industry as Complainant; and Respondent offered to sell the domain name registration at issue to Complainant. 

Therefore, if looked at collectively, the Panel may find that these circumstances reasonably establish that Respondent registered the domain name primarily to sell the domain name registration to Complainant in violation of Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner."); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

The Panel does not place great emphasis on the allegation of offering to sell the disputed domain name.  This does not go much further than mere assertion, even though it is not disputed by Respondent.

In addition, Complainant argues that Respondent has also violated Policy ¶ 4(b)(iii) by registering the domain name at issue for the purpose of disrupting the business of a competitor, namely Complainant.  The Panel may find that Respondent’s registration and use of the disputed domain name, which is identical to a Complainant’s mark, for the purpose of selling competing goods is sufficient to establish that Respondent registered the domain name primarily to disrupt Complainant’s business.  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

Furthermore, in conjunction with the foregoing, Complainant contends that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s METALACRE mark in violation of Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website).

Reference is also made to Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Complainant also states that further evidence of Respondent’s bad faith registration and use of the disputed domain name may be found in the fact that the disputed domain name <metalacre.com> “bears no relation to the name of Respondent’s business, American Seals.” 

The suggestion that Respondent is using the disputed domain name to attract business, particularly from South America, is well made.  Respondent is not using the disputed domain name as the name of its business but, it seems, as a means to attract business from South America, even though they might have dealt with Complainant and know it by its name.  This is more consistent with deliberate confusing use, rather than any suggestions of use of a pre-existing and bona fide generic name.  It is also more consistent with using an opportunity to expand business, using a competitor’s name, rather than bona fide registration and use of a generic term, as alleged.

For this reason, the ground is made out.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <metalacre.com> domain name be TRANSFERRED from Respondent to Complainant.

Clive Elliott, Panelist
Dated: September 8, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1065.html