National Arbitration Forum




Hugo Daniel Barbaca Bejinha v. Whois Guard Protected

Claim Number: FA0611000836538



Complainant is Hugo Daniel Barbaca Bejinha (“Complainant”), represented by Bernie C. Dietz, 4860 Cox Road, Suite 200, Glen Allen, VA 23060.  Respondent is Whois Guard Protected (“Respondent”), 8939 S. Sepulveda Blvd, Westchester, CA 90045.




The domain name at issue is <>, registered with eNom, Inc.



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.


Dennis A. Foster as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 8, 2006.


On November 8, 2006, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <> 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 November 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 4, 2006 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 by e-mail.


A timely Response was received and determined to be complete on December 4, 2006.


On December 14, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.



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



A. Complainant


- Complainant has engaged in the provision of goods and services, specifically the sale of gaming products from Microsoft, Sony, and Nintendo, to a worldwide customer base since 2003.  Complainant's web site is offered in multiple languages.


- Through August 2006, Complainant filled more than 11,000 orders made at the “Globalchip” online store located at the domain name in question, <>.


- As a result, Complainant has acquired common law trademark rights in the mark, “Globalchip.”  The mark is inherently distinctive and has acquired secondary meaning with respect to Complainant’s activities.


- After Respondent acquired the disputed domain name, Complainant transferred its web site to <>.


- Complainant originally registered the disputed domain name on August 31, 2003.  Complainant had renewed its registration annually before inadvertently failing to re-register the name on August 31, 2006 because its payment for re-registration arrived one day late.


- Immediately upon Complainant’s re-registration failure, Respondent swooped in and purchased the disputed domain name to sell products similar to those sold by Complainant.  In conducting its business under that name, Respondent even uses an uploaded version of Complainant’s own web site.


- The disputed domain name is identical to Complainant’s mark, since it is the same  online name Complainant used to establish its business.


- Respondent has no rights or legitimate interests in the disputed domain name.  None of the three protections for domain name registrants provided in Policy Paragraphs 4(c)(i)-(iii), including that Respondent is making a bona fide offering of goods or services, is commonly known by the domain name, and is making a legitimate, noncommercial or fair use of the domain name, apply to Respondent.  In addition, Respondent’s lack of legitimate interest is demonstrated by the fact that Respondent has chosen to mask its identity through the use of an anonymous registration service.


- Respondent has both registered and is currently using the disputed domain name in bad faith. The registration of the domain name interferes with Complainant's business, as  Respondent has used it to launch a web site that looks exactly like the one the Complainant operated – until the domain name was inadvertently lost – to sell competing products.  This is an obvious effort to mislead and misdirect Internet users for Respondent’s own monetary gain.


B. Respondent


- The Complaint is based on false statements.  Complainant has submitted evidence that can be easily falsified.


- Complainant’s business is illegal, and, in any event, Complainant has no rights in the brand name or logo “Globalchip.”


- Complainant has the burden of proof in this proceeding and cannot disprove that Respondent is using the disputed domain name in a bona fide offering of goods, has a legitimate business in Portugal using that name, and is commonly known by the name.


- As Complainant and Respondent have solely Portuguese customers, only Portuguese authorities should have jurisdiction to decide this dispute.  Complainant does not have customers in any other part of the world, as the important information on its web site is written in Portuguese only.


- The more than 11,000 customers referred to in the Complaint have been either fabricated or cheated since Complainant has no legal permission to conduct its sales.


- Complainant’s web sites contain only material copied or pirated from others.


- Respondent has the right to keep his identity secret to prevent Internet hackers, such as Complainant, from wrongfully using private information.  Also, there is no information about Complainant at its web site.


- Complainant makes false orders to other web sites for the purpose of causing freight cost losses to the owners of those web sites.


- Respondent is the owner of the “Globalchip” trademark by virtue of its recognition in Portugal and Respondent’s registration and ownership of the country code domain name, <>.


- Prior to this dispute, Respondent was using the disputed domain name for a bona fide offering of goods, and Respondent was known as “Globalchip” through use of its <> domain name.


- Respondent did not register and is not using the disputed domain name in bad faith because Respondent, and not Complainant, possesses full rights in the trademark, “Globalchip.”



Complainant, a Portuguese company, obtained ownership of the disputed domain name, <>, in 2003 and has a web site there purporting to resell a variety of computer games and accessories.  It is not possible to determine the actuality or duration of the Complainant’s business.  In 2006, Complainant failed inadvertently to re-register the disputed domain name, but maintained its web site at <>.


Respondent is listed as the current registrant of the disputed domain name, and the record of registration was created on September 1, 2006.  Respondent uses the disputed domain name to market products similar to those sold by Complainant previously under that 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 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


Since Complainant’s claim of trademark rights to the mark “Globalchip” is based solely on Complainant’s use of the disputed domain name in commerce, there is no question that the name, <>, is identical to the putative mark.


The more pertinent question for this Panel to decide is whether indeed Complainant has trademark rights in “Globalchip.”  Complainant admits that it has not registered “Globalchip” in any venue.  Instead, Complainant asserts that it has gained common law trademark rights in that mark.


Many prior UDRP panels have held that unregistered trademarks can receive protection under the Policy through the application of common law trademark rights.  See e.g., Control Techniques Limited v. Lektronix Ltd, D2006-1052 (WIPO October 11, 2006); Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001).  As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, such rulings provide a consensus on the considerations involved in determining when  common law trademark rights may obtain:


The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services.  Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark.  Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.


This Panel notes also that previous Policy panels have opined that the less distinctive a mark (i.e., the more descriptive or generic are the word or words making up the mark), the greater the scrutiny required to sustain a complainant’s assertion of common law trademark rights.  See e.g., One Creative Place, LLC v. Kevin Scott, D2006-0518 (WIPO June 16, 2006); Deutsche Post AG v. NJDomains, D2006-0001 (WIPO March 1, 2006); Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 103058 (Nat. Arb. Forum Feb. 15, 2002).


In this case, Complainant claims common law trademark rights in the mark “Globalchip.”  It is evident that the mark is derived from two common English words, “global” and “chip.”  While the two words are clearly descriptive when considered alone (i.e., global meaning “worldwide;” and chip meaning “a small piece broken or cut off”), when combined they are slightly less descriptive.  Although other inferences could be drawn as to the meaning of this word combination (e.g, something to do with worldwide chocolate chip cookies or potato chips), because “chip” has become a slang English term for the base component of all computers, the mark “Globalchip” is at least suggestive of generic worldwide computer marketing.


Given this relatively low level of distinctiveness, this Panel must consider whether Complainant’s purported three-year internet use of the term is adequately documented to show use giving rise to common law trademark rights.  The Complaint is silent with respect to revenue generated by those sales, leaving this Panel to suspect that it is considerably less than would be expected of a well-known business.  Also weighing against a finding of common law trademark status is the lack of evidence submitted by Complainant regarding large advertising expenses or significant coverage in the media.


Complainant has cited a few prior Policy cases to support its claim of common law trademark rights, but this Panel’s inspection of those cases finds them unsatisfactory as precedent in Complainant’s favor.  In Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), the complainant had been in business for 43 years; and in ProQuest Information and Learning Company v. Domain Administrator, FA 784206 (Nat. Arb. Forum Oct. 11, 2006), the complainant had operated for eleven years, during which it had received numerous public awards.  Meanwhile, in both the cases of Seth Aurbach v. Kevin Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) and SeekAmerica Networks, Inc. v. Massod, D2000-0131 (WIPO April 13, 2000) no response was filed, allowing the respective panels to accept the complainant’s assertion of common law trademark rights without challenge.  In this case, the relevant time frame is at best only three years, and Respondent has contended (even if the Response is sometimes less than coherent) that Complainant does not possess the rights it claims.  This Panel did find a case where a prior UDRP panel found a three-year time span of operation sufficient to establish common law rights in a trademark in a real estate development.  See Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, D2000-1435 (WIPO December 11, 2000).  In that case, however, much greater evidence of advertising expenditure and media recognition was furnished than in the present case.


In fact, Complainant has not shown that it began a business in 2003.  Complaint Exhibits A and B consist only of Complainant’s own affidavit and a couple of copies of the Complainant’s current web site, <>.  This does not show the Panel that the Complainant has been using the name “Global Chip” to conduct business to any appreciable degree since 2003.


In view of the preceding considerations, this Panel determines that Complainant has failed to furnish sufficient evidence to establish common law trademark rights in the mark, “Global Chip,” for purposes of these proceeding.


Accordingly, this Panel must rule that the Complainant has not sustained its burden to prove that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.


Rights or Legitimate Interests/Registration and Use in Bad Faith


While this Panel might find Respondent’s actions in this case to be questionable, in view of the fact that the Complainant has failed to satisfy the requirements of the Policy with respect to Subparagraph 4(a)(i), this Panel need not opine on whether the Respondent has rights or legitimate interests in the disputed domain name, or whether that name was registered and is being used in bad faith.



Complainant having failed to establish all three elements required under the ICANN Policy, this Panel concludes that relief shall be DENIED.



Dennis A. Foster, Panelist
Dated: December 28, 2006



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