WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Itaú Unibanco Holding S.A. v. Renganathan Kumarasooriyar, R Kumarasooriyar Case No. D2009-1311 1. The Parties
The Complainant is Itaú Unibanco Holding S.A. of São Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Renganathan Kumarasooriyar, R Kumarasooriyar, of Surrey, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2009. On October 6, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On October 8, 2009, N LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 6, 2009.
The Center appointed Francine Tan, Alvaro Loureiro Oliveira and Nasser A. Khasawneh as panelists in this matter on December 10, 2009. 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. 4. Factual Background
The Complainant, a Brazilian financial institution with headquarters in the city of São Paulo, Brazil, is the controlling company of the Brazilian banking group, Itaú Unibanco, which comprises, inter alia, the companies Itaú Unibanco S.A.(hereinafter referred to as “Itaú”) and Unibanco - União dos Bancos Brasileiros S.A. (hereinafter referred to as “Unibanco”). On November 3, 2008, an announcement was made by the Complainant's controllers regarding the merger of Itaú and Unibanco. The merger resulted in the Complainant becoming one of the 20th largest financial institutions in the world by market capitalization and the most valuable bank in the Brazilian stock exchange.
Itaú was founded in 1943 and began operations in 1944 in Brazil. It is the owner of the trade mark ITAÚ which is well known in Brazil. According to Interbrand consultancy research in 2008, the trade mark ITAÚ was considered to be the most valuable mark in Latin America. Since the 1970's and especially during the last decade, the banking group has been expanding internationally with companies in Chile, Argentina, Uruguay, Paraguay, as well as several branches and other companies worldwide, including in Europe, the United States, Cayman Islands, China and Japan.
Unibanco has operated in the Brazilian financial market for more than 80 years.
The Complainant and other companies within the group have registered and have been using more than a thousand domain names and Internet keywords, most of them containing the trade marks ITAÚ and UNIBANCO. The domain names containing the trade marks ITAÚ and UNIBANCO which have been registered by the Complainant or by its controlled companies include , , , , , , and .
In Brazil, the Complainant and other companies that belong to the group have hundreds of trade mark registrations or applications for, or containing the words, ITAÚ and UNIBANCO. The UNIBANCO trade mark has been registered in the United States while the ITAÚ trade mark has been registered in the European Union, the United Kingdom (where the Respondent is located), Ireland, France, Portugal, the United States, Singapore and Hong Kong, SAR of China.
The disputed domain name was registered on November 3, 2008.
On December 11, 2008, Itaú and Unibanco sent a letter by email to the registrant then on record, informing of their rights over the trade marks ITAÚ and UNIBANCO. They requested that the registrant cease and desist from the use of the trade marks and to transfer the disputed domain name to Itaú.
On December 17, 2008, the Complainant received an email from N acknowledging receipt of the cease and desist letter and informing that it was not the registrant of the disputed domain name. It appeared that the registrant was using a Registrar WhoIs “Protection Service”. The Complainant was informed that the cease and desist letter had accordingly been forwarded to the actual registrant of the disputed domain name.
On December 22, 2008, Protective Domain Service sent an email to inform that the name of the actual registrant was Renga Kumar. On the same day, the Complainant received an email from Renga Kumar wherein he indicated the email address and telephone number at which he could be contacted regarding any issues relating to the disputed domain name. No further correspondence was received from Renga Kumar. 5. Parties' Contentions A. Complainant
The Complainant asserts that it was inevitable that the Complainant and its directly and indirectly controlled companies created an identity between the trade marks ITAÚ and UNIBANCO, generating the association of them to the Complainant's and its controlled companies' products and services. The trade marks ITAÚ and UNIBANCO are the distinctive part of the Complainant's trade name. The disputed domain name bears exactly the same trade marks and is therefore identical and confusingly similar to the Complainant's trade marks.
The trade mark ITAÚ has been recognized by the Brazilian Trade Marks Office in connection with an opposition case filed against the trade mark ITAÚPLAZA SHOPPING (Application No. 822.702.282) to be a mark of “high repute status”.
None of the circumstances considered in paragraph 4(c) of the Policy (which give rise to rights or legitimate interests on the part of the Respondent) arise in this case: (i) The Respondent does not run any business under the name ITAÚ or UNIBANCO and has never used such expressions to identify its products or services. (ii) As far as the Complainant is aware, the Respondent does not own any trade mark application or registration for the words ITAÚ and UNIBANCO or has commonly been known by the disputed domain name. (iii) The Complainant or any other company in the group has never authorized the use of its trade marks ITAÚ and UNIBANCO to the Respondent, especially to be part of a trade mark or a domain name. Since the Complainant and/or other companies of the group are the only companies entitled to use such trade marks in Brazil and in other countries, it is absolutely clear that the use of the trade marks ITAÚ and UNIBANCO by the Respondent, to compose the disputed domain name, is abusive and illegitimate. Further, none of the circumstances provided in paragraph 4(c) of the Policy which would demonstrate the Respondent's rights or legitimate interest have been demonstrated by the Respondent to exist in this case.
On the issue of bad faith use and registration, the Complainant asserted as follows. Whilst a registrant may have a legitimate reason to use a privacy service, it may do so in an attempt to evade contact in the event of a domain name dispute. Internet users accessing the website at the disputed domain name on October 5, 2009 would have seen sponsored links for computers, Internet, credit cards, stock market investing, money, personal finance, etc., as well as for “Banco Itau”. Considering the high repute of the Complainant's and its controlled companies' trade marks in Brazil and abroad, it is difficult to believe that the Respondent did not have actual knowledge of the Complainant's trade marks when he registered the disputed domain name on November 3, 2008, which was the same day of the announcement of the merger. As per paragraph 4 (b)(iv) of the Policy, the Respondent's bad faith is established by the fact that he has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his web site or location of a product or service on his website or location. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark or service mark;
(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. A. Identical or Confusingly Similar
The Panel is of the view that the disputed domain name is confusingly similar to the Complainant's trade marks. The disputed domain name comprises the two trade marks of the Complainant, UNIBANCO and ITAÚ (except for the accent).
The first criterion of paragraph 4(a) is therefore established. B. Rights or Legitimate Interests
The consensus view that has been established in prior panel decisions is that “a complainant is required to make out a 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 UDRP”. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In this case, the Panel is of the view that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent was given the opportunity to file a Response but did not proffer any evidence to refute the Complainant's assertions. In the absence of any evidence to the contrary which would show the Respondent's rights or legitimate interests in the domain name, the Panel is unable to make a different finding.
The second criterion of paragraph 4(a) is therefore established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the following circumstances which, if found by the Panel to be present, would be evidence of the registration and use of the domain name to be in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The above-mentioned circumstances are not exhaustive in nature. In this case, it is noteworthy that the disputed domain name consists of the two trade marks of repute which belong to the Complainant and its group of companies, and that registration of the disputed domain name took place on the same day that the merger of Itaú and Unibanco was announced. In this regard, the Panel finds the decision in Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 to be of particular relevance to the facts in this case. The Panel therein held as follows:
“The Panel considers that the Respondent has registered and used the domain name in ‘bad faith'. The expression ‘konicaminolta' is so obviously connected with two well-known multinationals that its very use by someone with no connection with either Complainant reeks of opportunistic bad faith. Particularly so, when the domain name registration was effected on the same day as the merger of the two Complainants had been announced. The inference from the Respondent's joinder of the names of Konica and Minolta shows that it was positioning itself to capitalize on the joinder of two multinational giants. Particularly so, when both Complainants owned trademarks and carried on business in the U.K., where the Respondent is domiciled.”
The following examples were given therein of cases which “show that opportunistic registration of the name or likely name of a new entity to be formed from the merger of two multinationals is a glaring example of bad faith registration and use”: (a) Pharmacia & Upjohn AB v. M.,WIPO Case No. D2000-0446; (b) ABB Asea Brown Boveri Limited v. Aseabrownboveri,WIPO Case No. D2001-0107; (c) SMS Demag AG v. Seung Gon, Kim,WIPO Case No. D2000-1434; and (d) A.P. Moller v. Web Society,WIPO Case No. D2000-0135.
The Panel is likewise inclined in this case to draw an inference that there has been opportunistic registration of the disputed domain name following the announcement of the merger of two very well-known entities, Itaú and Unibanco. In any event, it is difficult to believe that the Respondent did not have actual knowledge of the Complainant and of its trade marks when he registered the disputed domain name, especially in light of the fact that sponsored links on the Respondent's above-mentioned website included those for “Banco Itau”. No alternative explanation has been given by the Respondent as to how the disputed domain name which contains the very trade marks of a well-known financial institution came to be selected or adopted by him.
On the basis of the circumstances in this case, the Panel accepts the assertion by Complainant that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trade marks of the Complainant as to the source, sponsorship, affiliation or endorsement of the websites. These actions amount, in the Panel's view, to registration and use of the domain name in bad faith under the Policy.
The third criterion of paragraph 4(a) is therefore established. 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 domain name be transferred to the Complainant.
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