WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Itau S.A. v. Laercio Teixeira
Case No. D2007-0912
1. The Parties
The Complainant is Banco Itau S.A., Sao Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Laercio Teixeira, Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2007. On June 22, 2007, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On the same date, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the proceedings commenced on June 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2007. On June 25, 2007, the Respondent sent an e-mail to the Center, claiming that he did not understand what was happening. On June 29, 2007, the Respondent sent an e-mail containing a list of some of the trademarks owned by the Complainant and including a number of arguments relating to the Complaint. On July 2, 2007, the Center acknowledged receipt of the emails of June 25, 2007 and June 29, 2007, indicating that the contentions contained therein would be forwarded to the Panel for consideration on appointment. The Respondent sent two e-mails to the Center on July 5, 2007, one e-mail on July 10, 2007, another on July 16, 2007 and finally one on July 17, 2007, all containing incomprehensible messages. No further messages were sent, and no formal response was submitted by the Respondent to the Center until the specified deadline. Accordingly, the Center notified the Respondent’s default on July 17, 2007.
The Center appointed Luiz E. Montaury Pimenta, Alvaro Loureiro Oliveira and Erica Aoki as panelists in this matter on July 31, 2007. 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.
The Panel has received no further submission from either party since its appointment.
4. Language of Proceeding
According to paragraph 11(a) of the Rules, unless agreed by the parties, the language of the registration agreement shall be the language of the proceedings, subject to the authority of the Panel to determine otherwise. According to the information provided by the concerned Registrar, the language of the registration agreement for the disputed domain name is English.
5. Factual Background
The Complainant, Banco Ita� S.A., was founded in 1943 and started operating in 1944. The Complainant is one of Brazil’s largest commercial banks. The Complainant’s controller, Banco Ita� Holding Financeira S.A., is the 94th largest bank in the world by net worth, according to the July/2005 edition of “The Banker” magazine and, with market capitalization of R$86.3 billion (March/2007), it is one of the most valuable banks in the Brazilian stock exchange.
The Complainant and its affiliates, have registered numerous domain names worldwide containing the ITAU trademark.
The Complainant has filed prior complaints before the Center, regarding the trademark ITAU so as to obtain the transfer of the contentious domain names (Banco Ita� S.A. v. F. Nazar, WIPO Case No. D2003-0454, ).
Trademarks ITA� and BANCO ITA� are familiar to consumers in Brazil and in several other countries, since several advertising campaigns that contain such trademarks have been released on a regular basis.
The Complainant owns a large number of ITAU trademarks in several countries.
6. Parties’ Contentions
A. Complainant
The Complainant submits that it has conquered a remarkable reputation and renown as a consequence of its long and extensive use of the trade name Banco Ita� and also of the trademark ITA� and has developed substantial goodwill and brand recognition of its trademark ITA�.
The Complainant states that the domain name in dispute is identical to its trademarks ITA� and ITAUSHOPPING.
According to the Complainant, the Respondent does not run any business under the name “Ita�” or “Banco Ita�” and has never used such expressions to identify products or services. In addition, the Complainant states that the Respondent does not own any trademark application or registration for the expressions “Ita�”, “Banco Ita�” or “Ita�shopping”.
The Complainant has never authorized the use of the expression “Ita�”, “Banco Ita�” or “Ita�shopping” as part of a trademark or a domain name by the Respondent.
The Complainant also contents that the Respondent registered the disputed domain name and is not using it in connection with any active website. By keying the address a message appears saying that this domain name belongs to a client of Terra Empresas, which is an Internet service provider in Brazil. Additionally, three other messages are shown in the mentioned page saying that (i) if more information is needed regarding hosting of domain names access, the website Terra Empresas, (ii) or access the website sales centre via a chart, and (iii) to manage an account access control panel Terra Empresas.
By the time this decision was rendered, the domain name still resolved to the same webpage described by the Complainant.
The Complainant affirms that the Respondent is not using the currently disputed domain name in connection with any services rendered or products sold by its business, but threatened the Complainant to use it for a sex shop website.
According to the Complainant, the Respondent has not been commonly known by the expression “Ita�” or “Ita�shopping”.
The Complainant affirms that it was impossible that the Respondent ignored the Complainant’s activities and trademarks, especially taking into account that the Respondent’s residency is in Brazil, in the State of S�o Paulo, which is also the state where the Complainant has its headquarters. By registering the disputed domain name in the most common and desirable generic top level domain “.com”, the Respondent knew that his conduct was violating the Complainant trademark rights.
According to the Complainant, one of the strongest indicators of the Respondent’s bad faith is that, on May 16, 2007, the same date in which the domain name was created, the Respondent e-mailed the Complainant offering for sale the disputed domain name and informed that if the Complainant did not purchase it, then the Respondent would use such domain name to set up a website of a sex shop. The Respondent claimed that before starting the sex shop business he decided to offer the domain name to the Complainant and also informed that his intention was to sell products over the Internet to consumers in Brazil and abroad. At the end of such message the Respondent requested a reply from the Complainant until May 20, 2007, in case the Complainant was interested in the purchase of the disputed domain name.
On May 21, 2007, the Complainant sent an e-mail to the Respondent asking him to inform the price for the transfer the disputed domain name to the Complainant.
The Respondent replied to the Complainant requesting R$ 50,000 (Fifty thousand Brazilian reais) for the disputed domain name; an amount equivalent to approximately US$25,000 (Twenty five thousand US dollars).
The Complainant requests that the disputed domain name be transferred to it.
B. Respondent
As indicated in the Procedural History, the Respondent has not formally presented its response fulfilling the requirements set out by the Policy, the Rules and the Supplemental Rules. The Respondent has only sent several e-mails in Portuguese, basically claiming rights in the disputed domain name, but not presenting any basis for the defense.
7. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, , is identical to the Complainant’s ITAUSHOPPING trademark and also, that it is confusingly similar to the Complainant’s trademark ITA� with the addition of the generic word “shopping”.
The Panel finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Respondent sent an email to the Complainant, threatening the Complainant by the use of disputed domain names as sex shop website in case the Complainant did not agree to pay for the disputed domain name. The Panel finds that this constitutes bad faith and does not constitute as preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, on the evidence before the Panel, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the disputed domain name provided, in part, links to websites that were in direct competition with the Complainant.
Moreover, the disputed domain name as of the date of this decision still resolves to a webpage that displays a message saying that this disputed domain name belongs to a client of Terra Empresas, which is an Internet service provider in Brazil and three other messages on the webpage state: (i) if more information is needed regarding hosting of disputed domain names, the Internet user should access the website Terra Empresas, (ii) or the Internet user should access the website sales center via a chart, and (iii) to manage an account the Internet user should access control panel Terra Empresas. The Panel concludes that there is no bona fide use of the disputed domain name.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the Complainant has met its burden and in the absence of evidence to the contrary established the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has used and registered a disputed domain name in bad faith if, inter alia, the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant (Policy, paragraph 4(b)(i)).
The Panel finds that the Respondent registered the disputed domain name in bad faith.
The Complainant’s allegations of bad faith are not contested. The trademark registrations of record confirm Complainant’s allegations that it had long been using its ITAU trademarks when the disputed domain name subjected to this Complaint was registered. The Panel finds persuasive the Complainant’s allegation that the Respondent must have been aware of the Complainant’s rights in the trademark ITAU and, further that the Respondent knowingly infringed the Complainant’s trademark when he registered the disputed domain name, with the intention to sell to the Complainant the disputed domain name by threatening the Complainant.
This indicates that in all likelihood, the Respondent registered or acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name to the Complainant for a considerable amount of money.
The Panel finds that the Complainant has established the third element of the Policy.
8. 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 domain name be transferred to the Complainant.
Luiz E. Montaury Pimenta
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
Erica Aoki
Panelist
Dated: August 20, 2007
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