INTERNET LAW - DOMAIN NAME ISSUES IN BRAZIL

Domain name registration in Brazil has become more widely used as a means of disseminating information about businesses and for securing consumers. The domain name dispute policy has been important in giving companies and/or individuals a means to combat infringement practices. However, in Brazil, there has not been much guidance with statutory policies to determine how these disputes will be resolved.
Domain names serve to locate and to identify sets of computers in the InterNet. The domain name was conceived with the objective to facilitate the memorization of the addresses of computers in the InterNet. Without the use of a domain name or a series of alphanumeric strings separated by periods, a great sequence of numbers would have to be memorized. Domain names are generally used by companies for consumers to be able to easily identify the companies and their website presence. Whether or not a foreign company chooses to register a domain name is based on an evaluation of economic factors and whether or not it will be fiscally important for the company to do so.

In Brazil, domain names are registered with FAPESP (São Paulo State Foundation for Academic Research), a non-profit organization located in the city of São Paulo. The FAPESP was appointed as the organization to deal with these matters in1996 by the CGI (Comitê Gestor da Internet), the Brazilian Internet Administration Committee, as the agency in charge to register and manage all .br Top Level Domains.

CGI Resolutions' 001 and 002 establishes the registration rules in Brazil. Domain name registration bearing .BR, COM.BR, ORG.BR, G12.BR, NET.BR, MIL.BR, GOV.BR, ART.BR, ESP.BR, IND.BR, INF.BR, PSI.BR, REC.BR, TMP.BR, ETC.BR, AGR.COM, SRV.COM, FAR.COM, IMB.COM, FM.BR, AM.BR, TUR.BR, TV.BR and, Top Level Domains is granted only to entities registered with the Brazilian Ministry of Finance’s Corporate Taxpayer Registry (CNPJ). The maximum registration allowed per each CNPJ are 10 (ten) domains. The CGI has approved a new rule that has allowed foreign entities to register the domain name without the CNPJ number, provided that a local representative is appointed and it is recorded with Registro.br system. However, the registration will be canceled if the foreign entity does not establish presence in Brazil within one year from the registration. This rule is being revised by the CGI.

Individuals may register a domain name provided that the Brazilian Ministry of Finance’s Individual Taxpayer Registry (CPF/MF) number is presented. The Top Level Domain available for individuals are ADV.BR, ARQ.BR, ENG.BR, ETI.BR, JOR.BR, LEL.BR, MED.BR, ODO.BR, PSC.BR, VET.BR, NOM.BR, QSL.BR, CIM.BR, MUS.BR, FND.BR, BMD.BR, TRD.BR, GGF.BR, ATO.BR, NOT.BR, MAT.BR, ADM.BR, BIO.BR, CNG.BR, CNT.BR, ECN.BR, FOT.BR, FST.BR, NTR.BR, PPG.BR, PRO.BR, SLG.BR and ZLG.BR. In Brazil, domain names are granted on a first-come, first-serve basis. FAPESP will refuse applications of domain names already registered, or which contain certain reserved expressions, mainly comprised of well-known trademarks.
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How are domain name disputes resolved in Brazil?

There has not been a clear understanding of the policies and procedures to settle disputes involving domain names. There are no statutory regulations regarding domain name disputes that have been enacted in Brazil. Trademark owners have been successful in obtaining preliminary injunctions, by arguing that the use of domain name was made in bad faith and based upon unfair competition.
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When is the ICANN liable for determining domain name disputes?
Disputes involving .br Top Level domain name registration must be solved through settlement between the parties or litigation. To solve a .com Top Level domain name dispute, Brazilian companies are presenting claims before the ICANN panel (Internet Corporation for Assigned Names and Numbers), a World Intellectual Property Organization (WIPO) administrative organization. The most famous decision involving the WIPO and Brazil domain names occurred with

EMBRATEL, a telecommunications company in which they claimed against the registration of the domain names “embratel.net” and “embratel.com” by a third party in the United States. The WIPO panel ultimately granted Embratel the rights to its domain names in which their decision was based on the fact that Embratel is a well-known trademark worldwide.
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What type of evidence should be collected in order to prove that there is infringement?

If a trademark is being infringed on by a domain name, it is advisable that there is evidence obtained that will prove that the domain name was registered in bad faith. In the case that the registrant would be deemed or a cybersquatter or one who has registered the mark in bad faith for the means of extortion, the trademark owner may have a reasonable chance of succeeding in a domain name recovery lawsuit. If the infringed trademark is registered in Brazil with the Brazilian Patent and Trademark Office (Instituto Nacional da Propriedade Industrial – INPI), the chances of success will increase. Definitely, the use of a cease and desist letter can be the first step in dealing with the infringer and forcing them to stop the use of the trademark as a domain name and its voluntary cancellation or assignment, preceded by a redirection of the traffic to a specific Internet Protocol address of the trademark owner, may be effective before a lawsuit.
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What has been the precedence of cases in Brazil involving domain names?

A famous domain name infringement case in Brazil involves the Internet provider America Online Inc. versus America On Line Telecomunicações Ltda., a local provider that registered the domain name "aol.com.br" in 1997. On February 2001, AOL was allowed to freeze the doamin name “aol.com.br” due to the decision of the appeal court of Rio de Janeiro (TJ-RJ). AOL posed the arguments that they had the prior trademark rights over the expression “AOL,” and the bad faith of the Brazilian provider who should have known about the existence of the "aol.com" domain name. The Federal Court of Appeals determined that the Brazilian Company was the first to apply for the registration of the domain name "aol.com.br," and had actually used it in Brazil before America Online had shown any interest in using such an expression in Brazil.

On March 29, 2000, the Appellate Court of Brazil determined that the rendered a decision granting to the trademark owner the title to the domain name registered by third party in bad faith. In the case, Ayrton Senna Promoções,represented by the heirs and successors of the late Brazilian Formula 1 racer Ayrton Senna, sought to prevent Laboratório de Aprendizagem Meu Cantinho Ltda., a school, to use the domain name "ayrtonsenna.com.br." The lower court had determined that the defendant registered "ayrtonsenna.com.br" in bad faith. The court had granted a preliminary injunction was granted to suspend the registration. The Court of Appeals ultimately determined to maintain the rights of the plaintiff over the domain name. The judge determined that the fact that the plaintiff had registered the trademark Ayrton Senna with the Brazilian Patent and Trademark Office (INPI), guaranteed the protection of such expression which included Internet usage.

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