The Complainant Guarani S.A. of Sao Paolo, Brazil brought this UDRP against Marchex Sales, Inc, who as usual was represented by John Berryhill, Ph.D. Esq. on the domain name guarani.com
The three member panel found that the domain which is a generic dictionary word which, among other things, refers to a South American ethnological group, a group of languages and dialects spoken by that group and has been the name of the official currency of Paraguay since 1943, coupled with the fact that the trademark holder was in Brazil and the domain owner was in the US and was not responsible for doing a worldwide TM check”.
Here are the relevant facts and findings by the panel:
“The Complainant is the owner of several trademark registrations in Brazil for the word “guarani”, such as:
No 780332423 GUARANI word
Filing Date: September 29, 1978
Registration Date: June 12, 1984
Class 33.20: sugar and sweetener
“The disputed domain name was “created” on November 20, 2000.”
“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.
“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.”