Portugal based Complainant Company is a Libson Stock Exchange listed media Company and has rights in the mark since 1991. Respondent Mr. Refinaldo Chilengue did not file a formal response but had responded to a Complainant’s Cease & Desist letter in January 2020 claiming use of the brand name for his newspaper since the last 20 years. The same was further evident from his social media presence, clearly evidencing the Respondent has been known by the domain name atleast since 1997. The words ‘Correio Da Manhã’ in the disputed domain name mean ‘Monring Mail’. Hence legitimate interests upheld, hence Complaint Denied !
Cofina Media, SA v. Refinaldo Chilengue, Sojornal
Case No. D2020-2829
1. The Parties
Reclamante is Cofina Media, SA, Portugal, represented by CCA Advogados, Portugal.
The Respondent is Refinaldo Chilengue, Sojornal, Mozambique.
2. The Domain Name and the Registration Unit
The domain name in dispute is <correiodamanhamoz.com> and is registered with FastDomain, Inc. (“Registration Unit”).
3. History of the Procedure
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 27, 2020, the Center sent the verification request by email to the Registry Unit. registration of the disputed domain name. On October 27, 2020, the Registry Unit sent the Center a response to verify the domain name in dispute, confirming that the Respondent is the holder of the registration and providing his contact details.
The Center sent an e-mail communication to the parties in English and Portuguese on November 3, 2020 about the language of the procedure, given that the Complainant filed the Complaint in Portuguese and the language of the domain name registration agreement is English. On November 6, 2020, the Complainant submitted the Complaint translated into English.
The Center found that the Complaint meets the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Uniform Domain Name Dispute Resolution Policy Regulation (the “Regulation” ), and the WIPO Complementary Regulation for the Uniform Domain Name Dispute Resolution Policy (the “Complementary Regulation”).
In accordance with paragraphs 2 (a) and 4 (a) of the Rules, the Center formalized the notification of the Complaint and the administrative procedure was initiated on November 16, 2020. In accordance with paragraph 5 (a) of the Rules, the The deadline for sending the defense ended on December 6, 2020. The Respondent did not present a defense. Thus, on January 12, 2021, the Center notified the parties of the Respondent’s Revelation.
The Center appointed Wilson Pinheiro Jabur as the Specialist of the Administrative Panel, on January 18, 2021. The Specialist considers that the Panel was properly constituted. The Specialist presented the Term of Acceptance and the Declaration of Impartiality and Independence, as required by the Center, in compliance with paragraph 7 of the Regulations.
On January 19, 2021 the Respondent sent an e-mail communication to the Center requesting the use of the Portuguese language, and the Center then sent the Respondent the Portuguese version of the Complaint, as originally presented. The Complainant did not submit any other communications.
4. Fact Issues
Reclamante is a Portuguese media conglomerate founded in 1990, listed on the Lisbon stock exchange since 1998, currently holding five newspapers, three magazines and a cable television channel.
The CORREIO DA MORHÃ newspaper was founded in 1979 and acquired by Reclamante in 2000, printed daily in Portugal with a circulation of over 110,000 copies. Reclamante is also the broadcaster of the CORREIO DA MANHÃ TV (“CMTV”) channel in Portugal (since 2013), Mozambique and Angola (since 2014).
The Respondent owns the domain names <correiodamanha.pt> and <correiodamanhatv.pt>, among others, and the following trademark registrations (Attachments XXVI – XXXII to the Complaint):
– Portuguese registration No. 239564 for the mixed mark CORREIO DA MORHÃ, filed on February 23, 1987, registered on April 20, 1991, in class 25;
– Portuguese registration No. 440304 for the mixed mark CORREIO DA MORHÃ, deposited on October 30, 2008, registered on January 20, 2009, in classes 16 and 41; and
– Mozambican registration No. 1096903 for CORREIO DA MORHÃ registered on July 5, 2011, in classes 16 and 41.
The disputed domain name <correiodamanhamoz.com> was registered on May 18, 2016 and currently redirects users to a page displaying links to other sites.
5. Claims of the Parties
A. Complainant
Reclamante claims to be one of the most important media groups in Portugal, with its newspaper CORREIO DA MORHÃ the most read by the Portuguese, with an electronic edition dedicated to Africa and accessible in Mozambique. It also maintains that Reclamante is its television channel CORREIO DA MANHA, the Portuguese cable channel with the highest audience.
The Complainant further asserts that it sent a notification to the Respondent on November 21, 2019 (Attachments XXIII and XXIV to the Complaint) as soon as it learned of the domain name in dispute and its use by the Respondent in connection with a page that, in addition to reproducing the name CORREIO DA MORHÃ, presents a total coincidence between the scopes and contents of the sites, disseminating news under the same structure and layout of sites ( trade dress and graphic layout of news, titles, image display, lettering etc.). ).
The Respondent responded to the notification on January 31, 2020 (Attachment XXV to the Complaint) acknowledging that he used “CORREIO DA MORHÃ DE MOÇAMBIQUE” as the name of his newspaper “for more than 20 years, without any complaint, in addition to those who resemble it it is not unheard of in media titles worldwide ”.
The domain name in dispute, according to the Complainant, reproduces its brand, with the simple addition of the suffix “moz”, indicative of Mozambique, which in no way contributes to endow it with distinctiveness.
The Complainant maintains that the Respondent has no rights or legitimate interest in relation to the domain name in dispute since:
(i) the Respondent has been using the domain name in dispute in connection with a page that serves a news newspaper in a very similar way to that with which the Complainant uses its CORREIO DA MORHÃ brand, with the Respondent copying the entire concept of the model business and its trade dress ;
(ii) the Complainant has not authorized the Respondent to register or use the disputed domain name;
(iii) there is no evidence that the Respondent is commonly known or identified by the domain name in dispute.
Finally, Reclamente argues that, because it uses its CORREIO DA MORHÃ brand in connection with a 24-hour cable TV channel in Portugal, Mozambique and Angola, in addition to the significant circulation of its newspaper, it would be implausible that the Respondent did not had knowledge of the Complainant’s reputation and, when registering the domain name in dispute, had no clear intention to create confusion and practice unfair competition with the Complainant in view of the reproduction of the same business model and trade dress as the Complainant, which would constitute clear evidence that the Respondent would be seeking to take advantage of the Complainant’s well-known brand.
B. Respondent
The Respondent did not submit a formal response to the Complaint, having only sent a message by e-mail to the Center requesting that Portuguese be the language of the procedure, after the deadline for replying had elapsed.
6. Language of the Procedure
According to paragraph 11 of the Rules, the language of the procedure must be the language of the disputed domain name registration agreement. The Specialist, however, may determine that the language of the procedure is different from the language of the registration agreement in view of the circumstances of the administrative procedure.
When submitting its application for the language of the procedure to be Portuguese, the Complainant maintained that this language should be adopted in view of the Mozambican nationality of the Respondent, a country whose only official language is Portuguese; the content of the website available on the disputed domain name; there was an exchange of correspondence between the Parties, prior to the initiation of the procedure, in Portuguese and the fact that the Complainant is Portuguese.
The Respondent, on the other hand, also requested, in an extemporaneous manifestation, that the language of the procedure was Portuguese.
In view of the request, from both parties and, since both are located in Portuguese-speaking countries, the possibility of prejudice for the Respondent is not envisaged in the fact that the Procedure is adopted in Portuguese.
7. Analysis and Conclusions
Paragraph 4 (a) of the UDRP establishes the three requirements that must be fulfilled for the Specialist to determine the transfer of the domain name in dispute to the Complainant:
i. that the disputed domain name is identical or confused with a trademark over which the Complainant has rights; and
ii. that the Respondent has no rights or legitimate interests in relation to the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant, therefore, must prove in these administrative procedures each of these three elements so that the domain name in dispute is transferred to it, in accordance with paragraph 4 (a) of the UDRP.
A. Confusing identity or similarity between the disputed domain name and the Complainant’s brand
The Complainant demonstrated to be the holder of several registrations for the brand CORREIO DA MORHÃ. This mark is reproduced in its entirety on the domain name in dispute.
The addition of the suffix “moz” is not enough to distance the disputed domain name from the Reclamante brand, given that the Reclamante brand stands out clearly in the disputed domain name. See paragraph 1.7 of the Synthesis of Opinions of the WIPO Administrative Panels on certain issues related to UDRP, third edition (“Synthesis of WIPO 3.0”).
In view of the foregoing, the Expert understands that the domain name in dispute is confused with the Complainant’s brand, with item (i) of paragraph 4 (a) of the UDRP being filled out.
B. Respondent’s legitimate rights or interests in the disputed domain name
In view of the particularities of this case and also considering that the requirements of paragraph 4 (a) of the Policy are cumulative, this Panel will address the second and third requirements jointly since this case clearly does not seem to be within the strict limits of the UDRP, as it involves issues that would be better analyzed by a court with jurisdiction to deal with the facts under discussion.
Although the Respondent did not respond to the Complainant’s allegations, there are elements in this case that indicate the potential presence of rights or legitimate interests on the part of the Respondent, namely:
i. in the Respondent’s response to the notification sent by the Complainant (Attachment XXV to the Complaint), the Respondent claims to have used the name CORREIO DA MORHÃ in his daily newspaper and website since its creation “more than twenty years ago”;
ii. the Respondent’s Facebook page (reproduced in the Complaint) contains over 5,500 likes;
iii. the channel on the social network YouTube relating to the Respondent (Appendix XXII to the Complaint) includes more than 8,500 followers;
iv. the Complainant’s complaint that the Respondent would have violated his trade dress and business model requires in-depth analysis given that several news sites appear to present similar ways of disseminating news as much as the Complainant and the Respondent, and there do not appear to be exclusive rights over the “concept” of news categorization or the use of square or rectangular photographs in conjunction with links to the full articles (the Panel remembers, for example, the pages of the Financial Times <ft.com> 1 and the Brazilian news site UOL, <uol.com.br> 2 , which have long adopted a similar display);
v. a perfunctory search conducted by the Panel corroborated the indication that the Respondent may actually be known as “Correio da Manhã” in Mozambique since 10 February 1997 3 .
In the face of such evidence, the Panel must analyze whether the Respondent’s conduct would characterize bad faith in the registration and use of the disputed domain name in the light of paragraph 4 (b) of the Policy which brings four hypotheses which, if detected by the Specialist, will characterize registration and use of domain name and bad faith:
a) have the Respondent registered the domain name for the purpose of selling, renting or transferring it to the Complainant or to third parties; or
b) have the Respondent registered the domain name to prevent the Complainant from using it as a corresponding domain name; or
c) have the Respondent registered the domain name in order to harm the Complainant’s commercial activity; or
d) when using the domain name, the Respondent intentionally tries to attract, for profit, Internet users to its website or any other electronic address, creating a situation of probable confusion with the Complainant’s distinctive sign.
Although the Complainant points out that the Respondent would have had the clear intention of creating confusion and practicing unfair competition, the Complainant did not prove, in the Expert’s opinion, that the Respondent was specifically approaching the Complainant.
To be successful, the Complainant should have demonstrated that its specific clientele and its brand were being targeted by the Respondent at the time of registering the disputed domain name. In other words, the Complainant would need to demonstrate (i) that the Respondent was aware of the Complainant or its marks before registering the disputed domain name; and (ii) that the particularities of the case in question indicate that the Respondent also intended to violate the Complainant’s specific rights, as opposed to merely benefiting from the presence and attractiveness of the disputed domain name, which does not seem to happen in this case .
In any case, as noted earlier, this is clearly not an appropriate case for the UDRP, as it involves issues that would be best handled by a court with full jurisdiction to address the facts under discussion.
7. Decision
For the reasons stated above, the Complaint must be rejected.
Wilson Pinheiro Jabur
Specialist
Date: February 1, 2021
1 Accessed on January 27, 2021.
2 Accessed on January 27, 2021.
3 The page https://www.jornalnoticias.co.mz/index.php/recreio-e-divulgacao/11081-correio-da-manha-e-prestigio-terao-sites-na-internet (accessed on January 27 of 2021) brings a news dated February 17, 2014 stating that ““ Correio da Manhã ”is a generalist electronic newspaper, but with a greater focus on Economy & Business articles, launched on the market on February 10, 1997” and that, on the 17th anniversary of the Respondent’s company, it announced the launch of new communication platforms, “namely internet pages of the digital daily ‘Correio da Manhã’”.
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