1. Domain Name Issues in Brazil
Brazi/ has a we//-deve/oped system for the registration of domain names
and the reso/ution of disputes invo/ving domain names
Erica Aoki domain name disputes have been enacted in
Moreira Lima Royster& Ohno, Brazil Brazil, the policies and procedures to settle
disputes involving domain names are still
I n Brazil, domain names are registered with
the São Paulo State Foundation for Academic
Research (FAPESP), a non-profitable
unclear. Disputes related to domain name
registration can be resolved only through
settlement between the parties or litigation.
In Brazil, some conflicts involving domain
organisation located in the city of São Paulo. This name disputes were taken to Federal Courts,
foundation was appointed in 1996 by the Comitê based on trademark infringement and unfair
Gestor da Internet (CGI), the Brazilian Internet competition claims. The Superior Court of Justice
Administration Committee, to be the agency in has already decided that the State's Civil Courts
charge of the registration and management of ali have the jurisdiction to decide cases arising out
.br Top Levei Domains. of domain name disputes.
Resolutions 00 I and 002 of the CGI are the Incase a trademark is being infringed by a
main mies for the registration of domain names domain name registered by a Brazilian resident, it
in Brazil. Domain name registration bearing M. is advisable to obtain ali the relevant information
BR, ART.BR, BR, COM.BR, ESP.BR, FM.BR, about the infringer in order to determine whether
G12.BR, IND.BR, INF.BR, MIL.BR, NET.BR, the domain name was registered in bad faith. If
ORG.BR, PSI.BR, REC.BR, TMP.BR, TVR.BR, the registrant is a cybersquatter, the prior
TV.BR and ETC.BR Top Levei Domains is trademark owner may have reasonable chances to
granted only to entites registered with the succeed in a possible lawsuit to recover the
Brazilian Ministry of Finance's Corporate domain name. The chances may increase if the
Taxpayer Registry (CNPJ). The maximum trademark is registered in Brazil with the
registration allowed are 10 (ten) domains per Brazilian Patent and Trademark Office (Instituto
each CNPJ number. The CGI is working on a Nacional da Propriedade Industrial, or INPI).
resolution to allow foreign entities to register the Before starting a lawsuit against the infringer,
domain name without the CNPJ number provided it is advisable to send a cease-and-desist letter
that a local representative is appointed. requesting immediate action to stop the use of the
Individuais may register a domain name infringing expression. The cease-and-desist letter
provided that the Brazilian Ministry of Finance's may also request the voluntary cancellation,
Individual Taxpayer Registry (CPFIMF) number assignment or redirection of the traffic to a
is presented. The Top Levei Domains available specific Internet Protocol address of the
for individuaIs are ADM.BR, ADV.BR, ARQ.BR, trademark owner.
BIO.BR, CNG.BR, CNT.BR, ECN.BR, ENG.BR,
The mose famous domain name infringement
ETI.BR, FOT.BR, FST.BR, JOR.BR, LEL.BR,
case in Brazil involves the Internet provider
MED.BR, NTR.BR, ODO.BR, PPG.BR, PRO. America Online Inc. versus America On Line
BR, PSC.BR, SLG.BR, VET.BR, ZLG.BR and Telecommunicações Ltda., a local provider that
NOM.BR.
registered the domain name "aol.com.br" in 1998.
In Brazil, domain names are granted on a first- The decision is still pending, due to a dispute
come-first-served basis. FAPESP will refuse over the competent jurisdiction.
applications for domain names already registered This case has primarily been presented to a
or which contain certain reserved expressions, Federal Court, which granted a prelirninary
composed mainly by well-known trademarks. injunction on behalf of the V.S. company. The
Since no statutory regulations regarding arguments used by America Online Inc. in this
IPBA Journal
I Dec2000

2. lawsuit were based on their prior trademark rights Formula One racer Ayrton Senna, sought to
over the expression "AOL", and also on the bad restrain Laboratorio de Aprendizagem Men
faith of the Brazilian provider who should have Cantinho Ltda., a school from using the domain
had knowledge about the existence of the "aol. name "ayrtonsenna.com.br". The decision in
com" domain name. lower court was based on the fact that the
The Federal Court of Appeals reversed the defendant registered "ayrtonsenna.com.br" in bad
faith. A preliminary injunction was granted to
decision. The argument of the Federal Court was
that there could be no confusion between domain suspend the registration. The Court of Appeals
names and trademarks. The Court noted that the decided to maintain the right of the plaintiff over
Brazilian company was the first to apply for the the domain name. The judge held that the fact
registration of the domain name "aol.com.br", that the plaintiff had registered with the INPI the
and was using it in Brazil before America Online trademark Ayrton Senna, guaranteed the
showed any interest in using such a domain name protection of the use of such expression
in Brazil. against the use by any means, including the
Internet.
On 25 February 2000, the Superior Court of
Another method of resolving domain name
Justice decided that domain name disputes should
disputes is by presenting a claim before the panel
only be examined by a State's Civil Court. No
final decision was rendered. of the Internet Corporation for Assigned Names
and Numbers (ICANN), an administrative
Most companies have taken their cases directly organisation under the World Intellectual
to the Civil Courts and succeeded in obtaining a Property Organization (WIPO).
preliminary injunction, using arguments which
In Brazil, the first company to present a claim
were essentially based on bad faith and unfair before the WIPO was Embratel, a
competition claims.
telecommunication company, in response to the
On 29 March 2000, the Appellate Court of registration of the domain names "embratel.net"
Brazil rendered a decision granting to the and "embratel.com" by a third party in the United
trademark owner the title to a domain name States. Recently, the pane! granted to Embratel
registered by a third party in bad faith. In that the rights to its domain names. The decision was
case, Ayrton Senna Promoções, represented by based on the fact that Embratel is a well-known
the heirs and successors of the late Brazilian trademark worldwide.