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Domain Name Issues in Brazil
by Erica Aoki - March 2001       Email   Bio

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. This foundation was appointed in 1996 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 approved a new rule allowing 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. 

Since no statutory regulations regarding domain name disputes were enacted in Brazil, the policies and procedures to settle disputes involving domain names are still unclear. However, trademark owners are succeeding in obtaining preliminary injunctions, by mainly arguing bad faith and unfair competition. 

In case a trademark is being infringed by a domain name, it is advisable to obtain evidence that the the domain name was registered in bad faith. If the registrant is a cybersquatter, 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. 

Sending a cease and desist letter seeking immediate action from the infringer 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. 

The most 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 able to freeze the doamin name “aol.com.br” due to the decision of the appeal court of Rio de Janeiro (TJ-RJ). 

The arguments presented by America Online Inc. in this lawsuit were based on its 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 noted that the Brazilian Company was the first to apply for the registration of the domain name "aol.com.br," and was using it in Brazil before America Online showed any interest in using such an expression in Brazil. 

On March 29, 2000, the Appellate Court of Brazil 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 decision in the lower court was based on the fact that the defendant registered "ayrtonsenna.com.br" in bad faith. A preliminary injunction was granted to suspend the registration. The Court of Appeals decided to maintain the rights of the plaintiff over the domain name.  The judge held 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 as to the use in any means, including through the Internet. 

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 first Brazilian company to present a claim before the WIPO panel was EMBRATEL, a telecommunications company.  It claimed against the registration of the domain names “embratel.net” and “embratel.com” by a third party in the United States.  The panel granted Embratel the rights to its domain names.  The decision was based on the fact that Embratel is a well-known trademark worldwide.


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