WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Itaú S.A. v. F. Nazar
Case No. D2003-0454
1. The Parties
The Complainant is Banco Itaú S.A., São Paulo, and Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is F. Nazar, Ciudad de Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name is registered with BulkR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 12, 2003. On June 16, 2003, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain name at issue. On June 16, 2003, BulkR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on June 26, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 16, 2003. The Response was filed with the Center on July 17, 2003.
The Center appointed Dennis A. Foster, Alvaro Loureiro Oliveira and Roberto Bianchi as panelists in this proceeding on August 11, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
This Decision is due on August 25, 2003.
4. Factual Background
The Complainant is a large Brazilian bank that began doing business in the 1940�s. The Complainant now is one of Brazil�s largest banks and operates international branches in various parts of the world, including Argentina, the Cayman Islands, New York, and Portugal. The Complainant owns over 200 domain name registrations that contain some form of its "ITAÚ" trademark.
The Respondent registered the disputed domain name on October 5, 2001.
5. The Parties� Summarized Contentions
A. Complainant
The Complainant is the owner of several trademark registrations duly issued in Brazil and in several countries for the expressions "Itaú�", which is the distinctive part of the Complainant�s trade name, and "Banco Itaú".
The disputed domain name is exactly the same expression--"Itau"�as the Complainant�s registered trademarks. Thus, there is no doubt that the domain name at issue is identical to the Complainant�s mark. Therefore, the requirement of the Policy, paragraph 4(a)(i) is fully met.
The Respondent does not run any business under the name "Itau" as part of a trademark or a domain name. Since the Complainant is the only financial institution entitled to use the referenced expression in Brazil and in other countries, it is clear that the use of "Itau" by the Respondent is illegitimate.
The Respondent registered the disputed domain name but is not using it in connection with any active web site. By keying in the address , the Internet user repeatedly views the message that the corresponding page can not be displayed (Complaint Exhibit 7). As a result, it can be inferred that the Respondent has no real interest in using the web site to promote its business activities and that the registration of the domain name was merely to prevent the Complainant from registering it.
In fact, if it were the Respondent�s intention to use the disputed domain name, it could have started using it a long time ago since it was registered on October 5, 2001.
The Respondent has not been commonly known by the expression "Itau".
By the time the Respondent registered the disputed domain name, it was impossible for the Respondent to be unaware of the Complainant�s trademark.
It is quite obvious that the reputation of the Complainant�s trademark lured the Respondent�s greed, proving the Respondent�s intention to profit from the registration of the disputed domain name because: he does not run any business under the name of "Itau"; he does not own any trademark registration or application for the expression "Itau"; the expression "Itau" is automatically and inevitably associated with the Complainant�s goods and services.
Thus, there is no doubt that the Respondent registered the disputed domain name in order to prevent the Complainant from doing so, and to take some financial advantage from selling his domain name to the Complainant.
When the Complainant contacted the Respondent on February 14, 2003, seeking to acquire the disputed domain name for U.S. $ 500 (five hundred), the Respondent replied with a counter offer suggesting figures ranging from U.S.$ 5,000 (five thousand) up to U.S.$ 15,000 (fifteen thousand) (Complaint Exhibit 8). This violates the Policy at paragraph 4(b)(iv): the Respondent�s asking price is much greater than his expenses incurred in registering the disputed domain name, which are approximately U.S. $60 (sixty).
By registering the disputed domain name in the ".info" top level domain, the Respondent knew that this would prevent the Complainant from reflecting its trademark in a corresponding domain name and would provoke a negotiation in order to sell and transfer the domain name to the Complainant.
The Respondent�s bad faith also shows in that, by registering the disputed domain name, the Respondent caused confusion amongst the Complainant�s customers. They might type (the disputed domain name) under the impression that this would lead to the Complainant.
The disputed domain name should be transferred to the Complainant.
B. Respondent
The legal systems of Brazil, Paraguay, Argentina and Bolivia would not allow using the word "Itaú" as a trademark because it is a common Guarani language word meaning "black stone". Therefore, using the name "Itau" in a domain name does not imply misappropriation of the Complainant�s trademark.
Not surprisingly, there are hundreds of businesses using the name or brand "Itau" located in these countries, but none have been challenged by the Complainant.
The disputed domain name has no reference to a financial service (banking, insurance), which is the Complainant�s business. Therefore, there is no conflict of interest.
The Complainant showed no interest in registering the now disputed domain name during the .info waiting period where any organization had 30 days to claim any .info domain. This lack of interest is also shown in the dispute initiation nearly 2 years after the domain name was registered on October 5, 2001.
With the exception of Brazil, the Complainant has no trademark in the word "Itau" (with accent) in 90% of the classes in any country.
More than half of the domain names presented as belonging to the Complainant were registered after the registration of the disputed domain name by the Respondent. More than half of the domain names presented as belonging to the Complainant are not registered in its name but in the names of other organizations, some of which belong to third parties.
Some of the Complainant�s trademarks were not renewed. Many trademarks were registered after the registration of by the Respondent.
Prior to this dispute, the Complainant offered the Respondent U.S.$500 to buy the disputed domain name, which proves the Complainant believes the Respondent has the right to use the disputed domain name.
The Respondent believes the word "Itaú" has strong value in representing the countries influenced by the Guarani culture (Mercosul countries plus Uruguay and Bolivia), and therefore the Respondent would not have given up the disputed domain name to the Complainant or any other entity.
The Respondent was and is planning to make a legitimate, fair use of the domain name, without intent to divert consumers or to tarnish the trademark.
As of October 2001, when the disputed domain name was registered, the Respondent was preparing a start-up organization to provide goods and services. The Respondent can provide a detailed business plan on the start-up dated prior to the dispute.
The December 2001, Argentine currency devaluation delayed the Respondent�s efforts to launch its business using the disputed domain name. This Policy proceeding also is delaying the Respondent�s efforts to launch its business.
The Respondent can prove with notarized documents that it had made demonstrable preparations to use the disputed domain name before it was notified of this dispute.
The Respondent has never offered the disputed domain name for sale.
The Complainant and the Respondent are not competitors, nor did the Respondent register the disputed domain name primarily to disrupt the Complainant�s business.
The Panel should make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, , transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant is a Brazilian bank with an international presence. Other than in Brazil, it has branches in New York, the Cayman Islands, Portugal and in Buenos Aires, Argentina ("Banco Itaú"), where the Respondent resides per the domain name registration data.
The Complainant has shown that it has rights in the ITAÚ mark through numerous trade- and service mark registrations in many countries. Furthermore, the Complainant presents registration certificates of three registrations in Argentina, where the Respondent resides, as follows:
Class
Mark (design)
Reg. Number
Reg. date
Valid until
09
ITAÚ �
BANCO
ITAÚ S.A.
1.788.504
February 28, 1990
Renewed �
Valid until April 13, 2010
16
ITAÚ �
BANCO
ITAÚ S.A.
1.788.505
February 28, 1990
Renewed �
Valid until April 13, 2010
24
ITAÚ �
BANCO
ITAÚ S.A.
1.788.506
February 28, 1990
Renewed �
Valid until April 13, 2010
"ITAÚ" is the distinctive part of the Complainant�s trademark registrations. The addition of "BANCO" refers simply to Complainant�s main activities (financial and banking services).
The Panel finds that the disputed domain name is identical to the Complainant�s ITAÚ mark and accordingly that the requirement of the Policy, paragraph 4(a)(i) is met. It is immaterial that the domain name lacks the accent "�" as in "ITAÚ", because it is common knowledge that accents cannot be included in a domain name registration.
B. Rights or Legitimate Interests
ITAÚ may well mean "blackstone" in an indigenous Brazilian Indian language as alleged by Respondent (whether in the Guarani language as the Respondent claims, or in the Tupy Language as the Brazilian member of the Panel suggests). More important is the fact that ITAÚ is a trade and service mark in which the Complainant has rights in connection with financial and banking services.
The Respondent does not allege to have been commonly known by the disputed domain name (the Policy, paragraph 4(c)(ii)). Nor is the Panel convinced that the Respondent was planning to make a legitimate fair use of the domain name. The Respondent itself states that "the domain name was not used" (Response, section III-C). This absolves the Panel from considering whether the Respondent was "making a legitimate noncommercial or fair use of the domain name" (the Policy, paragraph 4(c)(iii)).
As for a planned use, the Respondent declares that it had a project using the disputed domain name in a start-up for exporting goods and services primarily from Mercosul countries to the USA (Response, section III-B). The Respondent states its associated investors decided to pull out of the project because of Argentina�s currency devaluation in December 2001 (Response).
It is common knowledge that Argentina suffered a serious financial crisis with a currency devaluation in 2001/2002. The Panel accepts that many projects may have been affected by the devaluation, although many other projects � particularly export projects, have been developed since December 2001, precisely to benefit from the Argentine currency devaluation.
The Panel however cannot accept that by just mentioning the financial crisis the Respondent should be relieved of the burden to prove that he was developing an export project. Pursuant to the Policy, paragraph 4(c)(i), such projects must consist of using, or of demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
Respondent fails to prove such use or any preparations to use the domain name. Under the Rules, paragraph (5)(b) the response shall: "(i) respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name". As regards the burden of proof, the response shall "(ix) annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents."..). Under this Rule, a respondent cannot be excused if it decides not to present evidence, allegedly sufficient to make his case, because postage or courier expenses are high or unaffordable.
In this proceeding, the Respondent has sent his Response in electronic format ("pdf" file). The Panel believes that the Respondent might at least have sent a transcript of the contents of documents allegedly sufficient to prove the start-up project or demonstrable preparations to use the disputed domain name. On the other hand, the Respondent states that "unfortunately, due to a non-disclosure agreement, the Respondent cannot provide more information at the time". The Panel believes this is self-contradictory, because on the one hand the Respondent states that he has convincing evidence, but on the other hand he declares that it is impossible to present the evidence due to postage costs and he is not allowed to send the evidence because of a confidentiality agreement. From this blatant contradiction the Panel concludes that the Respondent has failed to prove the existence of the alleged start-up.
All this leads the Panel to find that Respondent lacks any rights or legitimate interests in the disputed domain name (the Policy, paragraphs 4(a)(ii)).
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the disputed domain name in bad faith. The Complainant presents as evidence for the bad faith registration a fax sent on February 14, 2003, by Itaú Bank to the Respondent, and two emails of February 2, 2003, and March 20, 2003, apparently sent in response to the fax (Complaint Exhibit 8).
In the fax, the Complainant�s attorneys Leonardos and Menezes, based on their tradename and trademark rights in "Banco Itaú S.A" and "Itaú", asked the Respondent to transfer the disputed domain name to the Complainant for US$ 500, a sum reasonably intended to compensate the Respondent for his costs of registering and transferring the domain name. The Panel does not believe the US$ 500 amount supports the Respondent's contention that the offer "proves the Complainant believes that the Respondent has the right to use the disputed domain" (Response, section II-B).
As to the emails, the first one was sent on February 21, 2003. It was addressed to Gabriel Francisco Leonardos and Simone Bittencourt de Menezes, that is the Complainant�s attorneys who signed the fax. The email is signed "Dr. Julio García Cano � O�farrell and Asoc. Lawyers". Its subject reads "F010463". Its text contains a mix of offers to Complainant�s counsel: either to donate US$ 15,000 to a non-profit organization, or to donate US$ 10,000 to an organization that provides recordings for blind people, or to purchase two digital monitors from "" priced at US$ 7,500, or to purchase a translation software, "Power Translator Pro", priced US$ 5,000, or to "return"over US$ 1,000,000 to Itaú credit card holders for allegedly unauthorized charges, plus a press release apologizing for such errors and the delay in handling complaints. The second email is dated March 20, 2003. It reads "Take a zero of each figure of the previous message: e.g. 15,000 turns into 1,500".
The Respondent states that the emails presented by the Complainant are false, and suggests that "WIPO should ask for unquestionable proof". He adds that he does not know Mr. García Cano or the law firm, and states that "there is a possibility that these people are opportunists". Respondent also says that "there seems to be some public information or leakage about domain disputes".
However, the Panel is inclined to believe that the emails should be considered as the Respondent�s refusal to transfer the domain name on the Complainant�s terms, i.e,. for a price of US$ 500. The electronic address from which "García Cano" sent his email is identical to where the Complainant�s counsel sent the above mentioned two emails, a domain name at which the Respondent also has his email address.
Absolute certainty is not the standard to be used by a panel to evaluate evidence. Under Rule 10(d), "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Under this Rule, the Panel has a reasonable belief that both emails were sent from an address under the control of Respondent and that he was most likely the author.
In fact, both emails suggest that the real intention of the Respondent was to demand a much higher price from the Complainant than the Respondent paid and that the Respondent had registered the domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name (the Policy, paragraph. 4(b)(i)), a circumstance of bad faith registration.
The whole conduct of Respondent in this proceeding reinforces the impression that by not using the domain name as a web site, and by undertaking to sell the domain name to the Complainant for excessive profit, the Respondent used the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant, Banco Itaú S.A.
Dennis A. Foster
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
Roberto Bianchi
Panelist
Dated: August 25, 2003
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