Domain name grupofolhadecomunicacao.com.br does not violate the rights of the company Folha da Manhã, owner of the newspaper Folha de S. Paulo.
According to a decision issued by the 1st Chamber of Corporate Law of the State Court of São Paulo1, the registration of the domain name grupofolhadecomunicacao.com.br by Folha de Londrina does not constitute abusive conduct, as its content is in accordance with the services covered by its registration for the mark “Grupo Folha de Comunicação”, granted by the Brazilian Patent and Trademark Office (BPTO).
After an arbitration decision ordering the transfer of the domain name to Folha da Manhã, owner of the newspaper Folha de S. Paulo, Folha de Londrina filed a lawsuit alleging that the defendant did not have exclusive rights over the words “grupo” or “folha”, and that there would be no risk of consumer confusion because the parties are engaged in activities in different territories.
The Court applied the principle of “first come, first served”, which grants ownership of a domain name to the first registrant (in this case, Folha de Londrina), favoring the possibility of coexistence of the marks, as already assured by registrations granted by the BPTO.
1Lawsuit No. 1050842-02.2016.8.26.0100