WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco de Chile S.A. v. Eric S. Bord, Esq.
Case No. D2001-0695
1. The Parties
The Complainant is Banco de Chile S.A. of Ahumada 251, Santiago, Chile, represented by Mr. Marino Porzio of Porzio, Rios & Associates of Santiago, Chile.
The Respondent is Eric S. Bord, Esq., c/o Berry, Appleman & Leiden, 1776 I Street, NW Ninth Floor, Washington, D.C. 20006, United States of America, represented by Jonathan Bender, Esq. of Law Office of Jonathan Bender, P.C., Washington, D.C.
2. The Domain Name and Registrar
This dispute concerns the domain name .
The Registrar is Network Solutions, Inc., of Herndon, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on May 23, 2001, and in hardcopy on May 31, 2001. The Complaint was acknowledged on May 28, 2001. That day registration details were sought from the Registrar. On June 1, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent and that the Registrar�s 5 Service Agreement (which incorporates the Policy) is in effect. On June 11, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements (including payment of the prescribed fee) and formally dispatched to the Respondent copies of the Complaint by post/courier (with enclosures) and by email (without attachments). The Center also included with the material dispatched to the Respondent a letter dated June 11, 2001, containing notification of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was June 30, 2001. A Response was filed on June 30, 2001, by email and on July 4, 2001, in hardcopy.
On July 30, 2001, the Complainant filed unsolicited additional material, namely copies of two domain name decisions dated July 17, 2001, concerning the domain names [1] and [2].
On August 1, 2001, the Respondent having sought the appointment of a three-member panel, the Center notified the parties of the appointment of the undersigned to serve as panelists, each having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day, the Center transmitted the case file to the panel and notified the parties of the projected decision date of August 15, 2001.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the Complaint�s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed within the time prescribed by the Rules and the administrative panel was properly constituted.
The language of the proceeding was English.
4. Factual Background (uncontested facts)
The Complainant and its activities
The Complainant was incorporated under the name "Banco de Chile" in 1893, the result of a merger between the Banco de Valparaíso (established in 1855), the Banco Nacional de Chile (established in 1865) and the Banco Agrícola (established in 1869).
It is the main and largest bank in Chile with a total capital of approximately US$500 million and 176 offices throughout that country. It has two subsidiaries in the United States, (in New York and Miami) and agencies in Buenos Aires (Argentina), Mexico City (Mexico), Sao Paulo (Brazil) and Frankfurt (Germany).
"Banco de Chile" or "Banco Chile", as it is also commonly called, has been the Complainant�s trade name for over a century.
The Complainant is the proprietor of 141 trademark or service mark registrations consisting of or containing the words "Banco de Chile". The trademark BANCO DE CHILE is registered in Argentina, Brazil, Mexico, Peru, Panama, Venezuela and Italy.
The Complainant has also registered and is using the domain names , , , , , , , , , , , , , , , , , , >, , and .
The Respondent and his activities
The Respondent is a lawyer and entrepreneur with long experience in Latin American business and public policy.
From 1985 to 1987, and from 1991 to 1994, the Respondent served as a senior adviser to former President Jimmy Carter and the Carter Center. In that capacity, among other things, he assisted President Carter and other members of President Carter's senior staff to develop and implement bipartisan U.S. foreign policy options for Latin America. Likewise, he accompanied President Carter on missions to Central America, Venezuela, and Mexico. In February 1986 at the Carter Center, the Respondent coordinated a major international conference about Latin America�s debt crisis, chaired by former Presidents Jimmy Carter and Gerald Ford. Participants included leading economists and finance ministers from throughout the Western Hemisphere, including Mexico, Chile, Venezuela, Brazil, and Argentina. The Respondent remained in contact with many of the participants throughout his employment at the Carter Center.
In May 1993, while serving as a full-time adviser to President Carter and the Carter Center in Atlanta, Georgia, the Respondent founded The MBI Group, Inc, (MBI) a Georgia Corporation chartered to do business in, among other things, international trade, sales, and marketing. The Respondent created MBI after the North American Free Trade Agreement (NAFTA) was enacted, and he saw a window of opportunity during which he could undersell Mexican manufacturers in the construction industry by purchasing certain material from providers in the U.S., Costa Rica, and Ecuador, and reselling it in Mexico. As president of MBI, the Respondent was able to raise capital from a variety of sources, and to use the capital to purchase inventory from these providers for sale and distribution in Mexico. MBI also actively explored marketing arrangements with the leading producer of coffee in the Mexican state of Oaxaca, as well as the feasibility of purchasing and expanding a sales network for medical supplies.
In August 1994, while the Respondent was in Mexico as an international election monitor with the Carter Center, he sensed that a major currency devaluation was on the horizon. Accordingly, he moved quickly to liquidate MBI's inventory and to pay its creditors. When the Mexican peso was devalued in December 1994, the business plan was no longer feasible. Nevertheless, MBI's volume of business during its existence totaled approximately $1.5 million dollars.
After dissolving MBI, the Respondent founded an immigration law firm, but never stopped thinking about business ventures that he might start in Latin America. In 1998, he heard a radio program that discussed the seemingly unlimited commercial potential of the Internet. One of the commentators on the program noted that domain names were already becoming scarce, and entrepreneurs would be wise to register any domain they think they might use in a business venture as soon as the idea for use entered their mind. The Respondent took this advice to heart, and registered a small series of generic words and phrases in Spanish that he thought he might one day use in a business venture. The domain names he registered included "financiar" ("to finance" in English), "preferido" (preferred), "tractores" (tractors), "vidrios" (glass/windows), "camionetas" (pickup trucks), and "telefonocelular" (cellular telephone).
Also included was the disputed domain name, which the Respondent registered on August 27, 1998 and has since renewed. He has made no active use of it.
5. Parties� Contentions
A. Complainant
Identity / confusing similarity
The disputed domain name is identical or confusingly similar to the Complainant's trademark BANCO DE CHILE.
Legitimacy
The Respondent has no right or legitimate interests in the domain name. The Respondent is an individual called Eric S. Bord, an Attorney at Law, from Silver Spring, United States. He does not operate any business or have any interest in any company using the name "Banco de Chile", specifically any business offering banking, financial or investment services.
The Respondent is not a licensee of the Complainant or in any other way authorized to use the Complainant's trademarks. Mere registration does not establish rights or legitimate interests in the disputed domain name.
Moreover, the existence of registered trademarks consisting of or containing the expressions "Banco de Chile", which have the character of "well-known" trademarks, makes it illegal for anybody else using them. In fact, according to the Chilean Law on Industrial Property [3], the unauthorized use of a registered trademark constitutes a crime.
Furthermore, according to the Chilean Law on Banking activities [4], it is illegal to engage in banking activities without the prior authorization of the National Superintendence of Banks and Financial Institutions. Such permission can be obtained after proof of fulfillment of a number of complex requirements. Without such authorization nobody can use in any manner whatsoever the expression "Bank" for identification of activities. Infringement of these rules amounts to a crime which is liable to be sanctioned with jail penalties.
Bad faith
The domain name has been registered and is being used in bad faith.
At least two circumstances of paragraph 4 (b) of the Policy are present, namely those of subparagraphs (ii) and (iv).
4 (b) (ii): the Respondent�s registration of the disputed domain name makes it impossible for the Complainant to register its own trading name and well-known trademark BANCO DE CHILE also as a ".com" domain name, in addition to the national registrations ".cl" which the Complainant already owns. This situation is causing the Complainant an important limitation in its legitimate access to the Internet and damages its communication possibilities in this context.
4 (b) iv): The registration of the disputed domain name in the name of the Respondent clearly attracts clients or potential clients of the Complainant to a wrong web site "...by creating a likelihood of confusion with the Complainant's mark..." and in this case also with the Complainant's trading name. In fact, it is only natural that anybody willing to get in touch with the Chilean Bank via the Internet may first attempt to try to use the presumed natural web site of Banco de Chile and will thus be directed to the Respondent's web site.
The registration of a well-known trademark as a domain name equivalent to that trademark does constitute bad faith [5]. The same has been found in connection with a trading name registered as a domain name [6].
It has also been found that the existence of an identical domain name to the Complainant�s trademark constitutes a block, prevents and makes impossible Complainant�s access to Internet in the category of ".com". In addition it leads Internet users, including Complainant's actual or potential clients to think that Complainant does not have a web site or it is not technically able to keep one [7].
Moreover, when a domain name is obviously connected with the Complainant and its products, its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" [8].
The Respondent has registered other domain names, many of which clearly correspond or are confusingly similar to the trading name of well-known banking institutions, or otherwise well-known public institutions and well-known trademarks, especially in Latin America. The most relevant are the following:
The appearance in the above search, among others, of names such as , the Spanish name for the Bank of Brazil, and , abbreviation of a well-known Mexican airline, is enough evidence of Respondent�s bad faith when registering the disputed domain name.
B. Respondent
The Respondent registered the generic domain name in 1998, along with a handful of other generic names such as "financiar" ("to finance" in English), "preferido" (preferred), and "tractores" (tractors), with the intention eventually to start one or more web-based businesses in Latin America. Because comparatively few Latin Americans had web access in 1998, he decided to wait until Latin America became sufficiently "wired" before developing any web-based businesses. He has prepared for the eventual launch of such ventures by closely monitoring trends in Latin American web access and use. He has never sold or tried to sell the disputed domain name, or any domain name, to anybody.
The Complainant's mark, "Banco de Chile," which translates to "Bank of Chile," is generic. Putting two generic terms together, such as "bank" and "Chile," does not make a mark distinctive. In Pet Warehouse v. Pets.Com, Inc [9]. the panel rejected the assertion that "Pet Warehouse" was distinctive. The panel noted that each of "pet" and "warehouse" is a generic term and that while it is possible for such a name to acquire distinctiveness,
"the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage." [10]
See also Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc [11]:
"Where the domain name and trademark in question are generic. . . the rights/interests inquiry is more likely to favor the domain name owner[;] [t]he ICANN Policy is very narrow in scope; it covers only clear cases of "cybersquatting" and "cyberpiracy," not every dispute that might arise over a domain name." [12]
The Complainant here seeks to do what the Pet Warehouse panel warned of: take two words of ordinary meaning out of common usage.
The Complainant offers no survey evidence to try to prove its bald allegation that it is inconceivable for anybody in Chile, from the general public, not to have heard of the name Banco de Chile and automatically identify it as a major banking institution it is, nor any affidavits from experts in relevant fields -- nor even affidavits from members of the bank. Indeed, the Complainant submits no affidavits from anybody, resting instead on the conclusory assertions of its lawyers [13].
Moreover, the Complainant demands not only that this panel accept that every single man, woman, and child in Chile associates the phrase "Banco De Chile" ("bank of Chile" or "Chilean bank" in English) with the Complainant and only the Complainant, but expects the panel to believe that the same is true "in economic and financial circles" throughout the world:
"In economic or financial circles, whether in Chile, Latin America, North America, Europe or Asia, this knowledge is absolute and beyond any doubt." [14] (emphasis added).
Again, the Complainant provides no surveys or affidavits -- nor any evidence, for that matter -- in support of this remarkable statement.
Numerous other banks doing business in Chile have names containing the words "banco" and "Chile," including Banco Del Estado De Chile, (in English, "Bank of the State of Chile" or "Bank of Chile"), Banco Central Del Chile ("Central Bank of Chile"), Banco Santander-Chile, and Banco Exterior De Chile ("Exterior Bank of Chile"). Additionally, some foreign banks append "Chile" to their names for their Chilean branches, e.g., "BankBoston Chile."
Legitimacy
The Complainant argues that the Respondent could have no legitimate interest in the domain name because "Mr. Bord, as an Attorney at Law, does not operate any business or have any interest in any company using the name 'Banco de Chile', specifically any business offering banking, financial or other investment services." The Complainant misapprehends both its burden to show that the Respondent lacks legitimate rights and interests in the domain name, and the Respondent�s ability to operate a business.
The Complainant argues, apparently, that if the Respondent does not currently run a banking business under the name "Banco de Chile," he could not have a legitimate interest in the domain name. Complainant misstates the law. The Policy states at Paragraph 4(b)(ii) that mere preparation to use the domain name in connection with a bona fide offering of goods and services constitutes a legitimate interest in the name. Indeed, it has been held that even the most minimal preparation to use a domain name constitutes a legitimate interest in the name. In Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc [15] for instance, the respondent "argue[d] that a mere idea for a bona fide business application is sufficient." The panel agreed, finding that "the admittedly perfunctory preparations made by [respondent] for use of the domain name in bona fide commerce are sufficient to demonstrate the rights or legitimate interests required by paragraph 4(a)(ii)."
The Complainant likewise appears to argue that the Respondent, "as an Attorney at Law," could have no interest in starting or running a business. In reality, of course, one�s status as an attorney hardly precludes one from engaging in other commercial activities. In what should be considered indicia of the Complainant's bad faith, the Complainant failed entirely to investigate the Respondent�s possible interest in the disputed domain name. Neither the Complainant nor its legal counsel ever contacted the Respondent to try to learn about his background or possible interest in the disputed domain name. Had the Complainant troubled itself to conduct the most basic pre-filing investigation, it would have learned that the Respondent has a rich history of involvement in Latin American business, diplomacy, and political reform.
The Respondent�s registration as domain names of such other generic names as is irrelevant because the Complainant claims no interest in these names. More to the point, however, the Complainant attempts to deceive this panel with respect to the domain names� meanings. For instance, the Complainant contends that is "the Spanish name for the Bank of Brazil." This is not true. The Spanish name for the Bank of Brazil would be "Banco De Brasil," not "BancoBras." Moreover, the Complainant fails to point out the obvious other meaning of "bancobras," that of a conflation of the terms "banco" and "obras," which means roughly "Work Bank." "Work Bank," a name that would fit well a bank focused on construction finance, is exactly what the Respondent intended when he registered that domain name.
One of the domain names registered by the Respondent was the disputed domain name , which the Respondent believed to be the most generic name possible for a Chilean Bank. His prior business experience involved arbitrage in Latin America, and banking seemed a natural extension of his interests and experience. Although the Respondent had never traveled to Chile, it is among the nations of Latin America that has long interested him. Moreover, Chile had recently liberalized its laws regulating entry into its banking industry.
In 1998, however, very few Latin Americans had access to the World Wide Web. Accordingly, there would have been no commercial sense in starting an Internet business at that point. Thus, the Respondent chose not to start the web-based venture in Latin America until a significant number of Latin Americans had Web access. Since August 1998, the Respondent has closely monitored the penetration of the web and Internet business in this region of the world. Only recently has he begun to see evidence that access is beginning to reach such levels. For instance, he noted with interest that the Cisneros Group launched AOL Latin America, a joint venture with America Online, last year. [While in Venezuela with President Carter, the Respondent had attended meetings with Gustavo Cisneros, president and CEO of the Cisneros Group]. The Respondent believes that this as an indication that Latin America�s connection to the Internet community, until now largely nonexistent, will begin to accelerate.
In short, the Respondent has prepared to use the domain name in the only commercially sensible manner given the relative lack of Web access in Latin America until very recently -- by watching and waiting. His preparation has included continual review of leading periodicals and journals addressing Latin American economic conditions, and of U.S. Department of State Country Commercial Guides on the developing economies in the region. Among the facts that have persuaded him that the time is not yet right to start a web-based business in Chile are that despite having Latin America�s most advanced economy, and the greatest Internet penetration in the region, Internet users are less than 17% of the population, and 76% of homes and 22% of small businesses do not have computers. Moreover, only 7% of those who are Internet users shop on-line. Finally, credit card penetration in Chile is only at 8-11% [16]. While Internet use is growing rapidly in Chile, these figures are still low compared to the U.S. where many Internet start-ups continue to have a difficult time making a profit.
The Complainant's allegations concerning the need to register with the Chilean government before opening a bank, and the Complainant's description of the alleged penalties for trademark infringement in Chile, do nothing to change the legitimacy of the Respondent�s interest in the domain. As noted earlier, the regulatory law that the Complainant cites in fact liberalized the requirements for obtaining permission to bank in Chile. That the Respondent might face bureaucratic obstacles to doing business does nothing to change the legitimacy of his interest in the domain.
The Complainant's contentions about possible violations of Chilean trademark law are likewise inapposite. As has already been noted, Complainant's mark is generic, and numerous other banks exist with extremely similar names. If the Respondent�s eventual use of the disputed domain name causes the Complainant to believe that its trademark is being infringed, the Complainant must look to the courts of Chile or other relevant national jurisdictions to adjudicate its claim.
Because the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name, the Complaint must be dismissed.
Bad faith
To justify transfer of the domain name, Complainant must show both bad faith registration and use: paragraph 4(b)(ii). The Complainant can show neither.
The Respondent registered the disputed domain name in good faith as a tool for a possible business venture, and his only "use" of the domain name has been to hold it until commercial use becomes viable. He was unaware of the existence of Banco De Chile when he registered the domain name. Moreover given the ultra-generic character of , he expected � and continues to expect -- that very little possibility existed that using would infringe any other company�s trademark.
By presenting no argument in support thereof, the Complainant concedes that two of the four factors listed in Paragraph 4(b) as evidence of bad faith do not apply to the respondent, 4(b)(i) and (iii).
As to 4(b)(ii), the Respondent did not register the disputed domain name to block the Complainant from reflecting its mark in a corresponding domain name, much less engage in a pattern of doing so.
The Complainant's mark is BANCO DE CHILE, not "Banco Chile." The Respondent has not registered and is not blocking the Complainant�s ability to reflect its mark in a domain name. As the panel in Jules I. Kendall v. Donald Mayer Re [17] noted in dismissing the complaint before it:
"Respondent is not engaged in a pattern of conduct that prevents the owners of trademarks from reflecting the mark as a domain name. Only one domain name was registered; there was no attempt to register multiple variations of the Complainant�s [mark] or to occupy all versions of the [mark] in multiple top level domains."
If some other party is blocking Banco De Chile's access to , the Complainant must look to that other party for relief -- not the Respondent.
Moreover, paragraph 4(b)(ii) requires that a party have registered the domain name "in order to" block a trademark owner's ability to reflect its mark in a domain name. The true ".com" variant of Complainant's "Banco De Chile" mark, , was registered by one Adolfo Oviedo of Costa Rica more than six months after the Respondent registered . Mr. Oviedo registered in March 1999. Any person who wanted to extort or otherwise harm the Complainant would surely have registered if the domain was available. That domain was, in fact, available to the Respondent when he registered the disputed domain name and it was available to him for many months thereafter -- yet the Respondent did not register . Indeed, he has registered no other domain name containing the words "banco" and "Chile."
In any event paragraph 4(b)(ii) requires that a party have engaged in a pattern of registering domains to prevent the complaining mark owner from reflecting its mark in a domain [18]. A single instance logically cannot constitute a pattern, and the Complainant alleges only a single instance of such behavior. Thus, the Complainant does not even allege -- much less prove -- facts sufficient to warrant a finding under Paragraph 4(b)(ii).
As to 4(b)(iv), the Respondent has not used the disputed domain name to attract consumers to a website or other location.
The Respondent has not yet used the disputed domain name to point to a website. Indeed, he has not used the domain name in any manner, including e-mail. Accordingly, the Complainant's claim under Paragraph 4(b)(iv) must fail. Moreover, because the Complainant could have learned that no website existed at the domain name by simply pointing a browser to the domain, the Complainant's misstatements must be seen as further evidence of its bad faith.
Because the Complainant has not shown that the Respondent has registered and used the domain name in bad faith, the Complaint must be dismissed.
Bad faith on the part of the Complainant
The Respondent respectfully asks this panel to declare in its decision, pursuant to Rule 15(e), that the Complaint was brought in bad faith. The Complainant presented no evidence that could lead to a finding of bad faith registration and use of the disputed domain name, and � viewed most charitably -- failed entirely to investigate whether the Respondent had rights or legitimate interests in the disputed domain name.
"The fact that [Complainant] filed the Complaint without any evidence of Respondent's bad faith registration or use of the domain name, and apparently without investigating whether Respondent had rights or legitimate interests in the domain name, is indicative of bad faith." [19]
Aggravating matters further, the Complainant has made several misrepresentations of material fact in its Complaint.
Had the Complainant taken the time to try to contact the Respondent before filing its Complaint, the Complaint might not -- and certainly should not -- have been filed. As it is, the Complainant has forced the Respondent to spend thousands of dollars in legal fees and arbitration costs to defend against a baseless Complaint. Accordingly, to deter other prospective Complainants from pursuing similarly reckless and destructive paths, this panel should declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Conclusion
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove (1) that its trademark is distinctive, (2) that the Respondent has no rights or legitimate interests in the disputed domain name, and (3) that the Respondent registered and is using the domain name in bad faith. If the Complainant fails to prove even a single factor, the complaint must be dismissed [20]. The Complainant has proved none. Indeed, with regard to bad faith, the Complainant, whether negligently or intentionally, has failed even to allege facts that, if proven, would fall within any of the factors listed in paragraph 4(b). Accordingly, this panel should dismiss the Complaint. Furthermore, because the Complainant has attempted to mislead this panel on several occasions in its Complaint and has failed to make an adequate pre-filing investigation, this panel should find that the Complaint was filed in bad faith.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Procedural issue
The panel has had regard to the supplementary material provided by the Complainant because the two decisions were not available when this Complaint was filed.
Substantive issues
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Rights
The words "banco de chile" are descriptive, meaning "bank of Chile". Descriptive words are nevertheless capable of becoming distinctive, as the Respondent acknowledges. Here, the Complainant has provided evidence in the form of advertising material and examples of its annual reports that those words have, through use by the Complainant for many years, become distinctive of the banking and other financial services provided by the Complainant, the main and largest bank in Chile. No other bank in Chile is known as Banco de Chile. BANCO DE CHILE is a trademark that has been registered by the Complainant in Chile and other countries.
In Federal Court of Canada v. [21] a three-member panel found the complainant to have common law trademark rights in the descriptive name Federal Court of Canada based on extensive and continuous use, that name having been conferred by statute and the court being the only one by that name in Canada.
The panel is satisfied that the Complainant has rights in the trademark BANCO DE CHILE.
The Complainant says it is commonly called banco chile but this does not establish that that name is used by the Complainant as a trademark. That name is incorporated in some of the Complainant�s domain names but there is no evidence that any of those domain names, even if they have become trademarks, were used as trademarks before the Respondent registered the disputed domain name.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy [22].
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark [23]. Here the disputed domain name incorporates the two most significant words of the Complainant�s trademark BANCO and CHILE, omitting the preposition DE, which is irrelevant, phonetically and intrinsically.
The panel finds the disputed domain name is virtually identical and confusingly similar to the Complainant�s trademark BANCO DE CHILE. The Complainant has established this element.
Illegitimacy
While the Complainant must prove the absence of rights or legitimate interests in the disputed domain name on the part of the Respondent, paragraph 4(c) of the Policy specifies circumstances, any of which, if proved, will demonstrate a Respondent�s rights or legitimate interests to the domain name in question. Those circumstances show that the kind of right or interest in a domain name which the Policy recognizes as legitimate is an interest of a proprietary nature, such as may be acquired by generating goodwill through use of the domain name. It is not necessary that a respondent have yet acquired such an interest: demonstrable preparations to use the domain name which would lead to the acquiring of such an interest are sufficient � paragraph 4(c)(i).
Mere registration and payment of the registration fee cannot give rise to a legitimate interest in a domain name as against the owner of a trademark to which the domain name is identical or confusingly similar, since registration of the domain name is subject to the Policy.
The Respondent is undoubtedly interested in Latin American affairs in the sense that he keeps abreast of economic and political developments affecting that region. He has had "a rich history of involvement in Latin American business, diplomacy and political reform" and he may possibly recommence one or more businesses there. He registered the disputed domain name in 1998 for possible use in the future in connection with a web-based banking business in Chile but he has not made any actual use of it at all. He is holding it while "watching and waiting" for a propitious time to use it.
The Respondent relies on the "admittedly perfunctory preparations" which were held sufficient to demonstrate rights or legitimate interests in Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc [24]. In that case the respondent had developed other web sites and had registered other, related domain names it intended to develop in conjunction with the domain name under consideration. It had also used the domain name to redirect Internet users to another site. The panel also took into account in that case when considering the issue of legitimacy that the rights/interests inquiry is more likely to favor the domain name owner where the domain name and the trademark in question are generic, "and in particular where they comprise no more than a single, short, common word".
Here the trademark is not generic. It is a combination of common words that has become a distinctive combination. The Respondent knew in 1998, when he registered the disputed domain name, that Chile had recently liberalized its laws regulating entry into its banking industry. He has nevertheless done nothing (on the material before the panel) towards satisfying those regulatory requirements, to put himself in a position to make use of the disputed domain name in connection with a lawful web-based banking business in Chile as soon as he judges the country to be sufficiently "wired". The panel finds no "demonstrable preparations to use" the disputed domain name, as required by paragraph 4(c)(i).
Even if, contrary to this finding, watching and waiting could amount to demonstrable preparations to use, the panel does not accept that the Respondent could use the disputed domain name in connection with any offering of services in Chile (as he has stated he intends to do) without either infringing the Complainant�s mark (if the business involves banking) or misleading the public (if the business does not involve banking) or both. Such an offering would not be bona fide.
The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The name of the Respondent is not and does not include any part of the disputed domain name.
The panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
The Complainant must prove both bad faith registration and bad faith use: paragraph 4(a)(iii). Paragraph 4(b) sets out (expressly without limitation) four sets of circumstances, any one of which, if proved, shall be evidence of both bad faith registration and use. It is open to a complainant to satisfy paragraph 4(a)(iii) in other ways.
The Complainant submits "at least" two elements of paragraph 4(b) are present, namely 4(b)(ii) and 4(b)(iv).
As to 4(b)(ii), the Complainant on July 17, 2001, obtained a ruling from another panel that the domain name be transferred to it [25]. Subject to any litigation that might overturn that ruling, the Complainant will be able to reflect its trademark in the dot com domain. The Respondent�s registration of the disputed domain name cannot and could never have prevented the Complainant from reflecting its trademark BANCO DE CHILE in the dot com domain. This element is not present.
As to 4(b)(iv), the Respondent has no web site and has made no active use of the disputed domain name. This element is not present.
A finding of bad faith may nevertheless be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name [26]. In light of the extensive experiences of the Respondent in relation to Latin American affairs, his long interest in Chile and his knowledge in 1998 that the regulation of banking in Chile had recently been liberalized, even though he has never been to Chile, it is difficult to accept his claim that he did not know of the trademark BANCO DE CHILE before he registered the disputed domain name.
Even if his claim to lack of actual knowledge were accepted, the question remains whether the Respondent should have known of the trademark. The nature of the industry is such that there are very few suppliers of banking services. As the Respondent himself submits, many of those operating in Latin America in general and in Chile in particular have names which incorporate the word BANCO and the name of the country. The descriptive nature of the disputed domain name requires that it be used, if it is to be used fairly and without any misleading connotations, in connection with banking and in connection with Chile. That is in fact the kind of business the Respondent had in mind.
The Respondent, an attorney, admits to some, albeit little, knowledge of trademark law. It would have been elementary for someone with even little knowledge of trademark law contemplating operating a possible web-based banking business in Chile to have conducted a registered trademark search in that country before selecting for registration a domain name which incorporates the words BANCO and CHILE. Had he troubled himself to conduct this most elementary investigation, he would have learned of the registered trademark BANCO DE CHILE.
The panel accordingly finds that the Respondent should have known of the trademark BANCO DE CHILE before registering the disputed domain name. Hence the panel finds the disputed domain name has been registered in bad faith.
The �use� requirement has been found not to require positive action, inaction being within the concept in certain circumstances [27]. The leading case on passive use [28] emphasized that all the circumstances of the case must be considered. In that case passive holding was held to amount to acting in bad faith where:
(i) the Complainant�s trademark had a strong reputation and was widely known;
(ii) the Respondent provided no evidence of any actual or contemplated good faith use by it of the domain name;
(iii) the Respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name;
(iv) the Respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant�s rights under trademark law.
Here there is no question of any false contact information or concealment. However, the Complainant�s trademark is distinctive and well-known in Chile, where the Respondent proposes to conduct a banking business, and elsewhere. The descriptive nature of the disputed domain name is such that, as the panel has found, it cannot be used in relation to banking in Chile without infringing the Complainant�s rights nor can it be used in Chile in connection with non-banking related services without misleading the public. The Respondent has been watching and waiting, in circumstances in which he cannot legitimately use the disputed domain name for the purpose for which he says he registered it. Since he registered the disputed domain name in 1998 he has taken no steps to obtain the necessary regulatory approval to operate a bank in Chile. Under these circumstances the panel finds his passive use is in bad faith.
More generally, the panel finds the Respondent to have acted in bad faith in that, having the knowledge that he had of Latin America, he registered a domain name having the same structure as the names of most of the banks that he must have seen on his trips, knowing at the time that those countries were insufficiently developed in the Internet, in order to obtain an advantage from the domain name once those countries reached a critical level of Internet development. The fact that Banco de Chile has branches in the United States, makes his behaviour all the more unacceptable.
The Complainant has established this element. The panel finds the Respondent registered and is using the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Paragraph 15(e). To prevail on such a claim, a respondent must show that the complainant knew of the respondent�s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith [29]. Since the Complainant has succeeded in establishing the elements entitling it to relief under the Policy, this claim must be rejected.
7. Decision
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name be transferred to the Complainant.
Alan L. Limbury
Presiding Panelist
Luis de Larramendi, Esq.
Panelist
Dated: August 14, 2001
Dissent
This majority opinion compounds some of the most egregious errors committed in the name of the UDRP.
The clear statement of Section 4(a)(iii) is that the Complainant must prove both bad faith registration and bad faith use. This distinction was not casually made by the UDRP drafters. It contrasts with the terms of US Anticybersquatting Consumer Protection Act (which was being enacted at the same time as the UDRP), which allows a claim based on either bad faith use or bad faith registration. Twisting this very clear requirement on its head, the majority says "non-use" can equal "use."
The majority cites Telstra for its position on passive holding. In the first case, Telstra was an Australian case involving Australian parties. The Respondent defaulted presenting no defense at all. The panelist believed that because the mark was famous in Australia, there was no possible legitimate use to which the domain could be put. This is totally contradictory to US law, which should at least apply to the American Respondent here. There are many legitimate uses to which a mark can be put by other parties, including criticism, non-competing commercial use, non-commercial use, reporting, and product comparison. Nor does the Respondent here show any of the other suspicious elements of Telstra�s domain holder (such as false contact information).
IMHO, the majority misunderstands the nature of a trademark. A trademark does not give the owner exclusive title to some verbal territory from which all trespassers can be barred. In fact, US trademark law allows for many, many multiple users and a search of almost any common word in the USPTO database will reveal this. There are over 100 marks that include the word "chile." A mark owner has no right to exclude the world at large, only to prevent commercial use that is likely to confuse consumers as to the source or origin of goods or services. Knowledge of an existing mark is nothing more than knowledge of the claim of use in a particular location and for a particular purpose�it is not a bar to other legitimate uses. I cannot agree that constructive notice prohibits any other legitimate uses of a similar name.
The Respondent has made no use at all of this domain name, therefore the 4(a)(iii) requirement to prove bad faith registration and use has not been met. He does not define his intentions in this regard with much precision. If he does begin banking services in Chile, perhaps there will be a cause of action, but not yet. I can imagine many possible banking-related enterprises, such as a site that compares and evaluates various Chilean banking rates and services. The Respondent�s business may operate from the US for US clients. The specific type of banking or investment services he provides may or may not require permissions from Chilean banking officials. Whether Respondent�s proposed enterprise, should it ever be established, runs afoul of such regulations is a complex legal question more properly addressed to the Chilean judiciary. It is not a judgment within the purview of this tribunal.
None of the 4(b) bad faith examples have been shown in this case. Respondent is not yet a competitor of the mark owner, he is not disrupting the mark owner's business, he isn't offering it for sale, and he isn't using it to mislead consumers. He has registered a number of other domains, some of which correspond to some well-known Latin American marks, but he has not blocked any of them from acquiring corresponding domain names. The majority suggests that this pattern of registering well-known marks is an example of bad faith as described in 4(b)(ii):
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
Here, there is no evidence of any specific intent to prevent the mark owner from reflecting its mark in a corresponding domain name. To derive evidence of intent from the simple fact of registration is to ignore the requirement of finding intent. To apply 4(b)(ii) in cases where, as here, the mark owner already has numerous domains corresponding to its mark is illogical. The mark owner has no right to every possible variation on its theme�it has a right to use its mark in some corresponding domain name, not all of them. Again, cybersquatting is an act that shows particular harm to the mark owner, not some general disadvantage.
Since I don't find bad faith, it is not necessary to address legitimate use. If the Respondent puts material on a website or engages in other actual use of the domain name, then the Complainant may have a valid complaint. This one is premature and the domain registration should remain with the Respondent.
I agree with the majority that this is not a case of reverse domain name hijacking. The majority has cited numerous UDRP opinions that give comfort and support to such claimants. I find that unfortunate, but also a defense to the accusation of RDNH.
Diane Cabell, Esq.
Panelist
Footnotes:
1. Banco de Chile S.A. v. Adolfo Oviedo (WIPO Case D2001-0693).
2. Banco de Chile S.A. v. Parkrose Investments Ltd. (WIPO Case D2001-0694).
3. No. 19.039 of 1991.
4. D.F.L. No. 3 of December 19, 1997.
5. Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, (WIPO Case D2000-0018).
6. Banca March, S.A. v. D (WIPO Case D2000-1341).
7. Corporación Industrial y Financiera Banesto, S.A. v. José Gregorio Hernández Quintero (WIPO Case D2000-1265).
8. Pivotal Corporation v. Discovery Street Trading Co. Ltd, (WIPO Case D2000-0648) and Unibanco. Uniao de Bancos Brasileiros S.A. v. Vendo Domain Sale (WIPO Case D2000-0671).
9. WIPO Case D2000-0105.
10. Id.
11. eResolution Case AF-0104.
12. citing Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), para. 4.1(c).
13. See inc. v. Sand WebNames (WIPO Case D2001-0076) (disregarding proffered facts that were "simply alleged by the Complainant's attorney and not even by an officer or employee of the Complainant who might have at least a degree of personal knowledge.").
14. Complaint at 7.
15. eResolution Case AF-0104.
16. Source: U.S. Department of State FY2001 Country Commercial Guide: Chile.
17. WIPO Case No. D2000-0868.
18. See Macmillan USA, Inc. v N (NAF Case: FA0009000095559) in which the 3-arbitrator panel made the following finding before dismissing the complaint:
There is no evidence that Respondent has acted in bad faith under Section 4(b) (ii) as alleged in the complaint. Complainant has registered the domains ", , , and (its full and actual mark) complete." Complainant clearly has the ability to reflect its marks online. . . .. Although Respondent has registered a number of domain names [including ], there is no evidence that this was done in a pattern of registration targeted to prevent the Complainant from reflecting its mark online.
19. Loblaws, Inc. v. Presidentchoice.Inc/Presidentchoice.Com, eResolution Cases AF-0170a; AF-0170b; AF-0170c (3-arbitrator panel).
20. See Video Networks Limited v. Larry Joe King (WIPO Case D2000-0487): "[T]he Policy makes it clear that the Complainant must prove all three elements of Paragraph 4(a)." (emphasis in original) (3-arbitrator panel).
21. eResolution Case AF-0563.
22. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case D2000-0802) and Nokia Corporation v. N a.k.a IBCC (WIPO Case D2000-0102). For a typical US case see Sporty�s Farm L.L.C. v. Sportsman�s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty�s" and the domain name � specifically, an apostrophe in the trademark and the addition of .com in the domain name � are "inconsequential," such that the domain name is "indistinguishable" from and "certainly �confusingly similar� to the protected mark").
23. AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. P, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO Case D2001-0004) and Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case D2001-0491).
24. eResolution Case AF-0104.
25. Banco de Chile v. Adolfo Oviedo (WIPO Case D2001-0693). Likewise the domain name : Banco de Chile v. Parkrose Investments Ltd. (WIPO Case D2001-0694).
26. SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. E (NAF Case No. FA0095037).
27. See Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barney�s, Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468).
28. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003).
29. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd. (WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151).
Full & Egal Universal Law Academy