WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME Case No. D2009-1335 1. The Parties
The Complainant is Itaú Unibanco Holding S. A. of São Paulo, Brazil, represented by Momsem, Leonardos & Cia., Brazil.
The Respondent is Valdery Dos Santos Decorações ME of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 9, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 9, 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. As the Center noticed that the disputed domain name was set to expire on November 3, 2009, an e-mail was sent to eNom, Inc. on October 19, 2009, in order to request that the domain name remained in Registrar lock status until the UDRP proceedings were concluded. The Registrar confirmed on October 21, 2009 that they were going to deal with the requirement as asked. The Center verified that the 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 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2009.
The Center appointed Rodrigo Azevedo, Alvaro Loureiro de Oliveira and Antonio L. de Sampaio as panelists in this matter on November 25, 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 is one of Brazil's largest private financial institutions that nowadays controls the well-known banking conglomerate Itaú Unibanco.
Accordingly to the 2008 Interbrand research, Itaú Unibanco S.A. is the owner of the most valuable trademark in that country and one of the most valuable marks in Latin America (ITAÚ).
Not only in Brazil but also in other countries, the Complainant has hundreds of trademarks registrations or applications for the words “Itaú” and “Unibanco” (solely or composed by other words and logotypes). The trademark ITAÚ was first registered on July 25, 1975. The UNIBANCO trademark was first registered on January 25, 1980.
In addition to that, the Complainant and its subsidiaries own more than a thousand domain names, most of them containing the trademarks ITAÚ and UNIBANCO, having a strong presence on the Internet.
The Respondent registered the disputed domain name on November 3, 2008.
Valdery dos Santos Decorações ME does not appear to have developed any active website hosted at the disputed domain name. When the Panel accessed the website at the disputed domain name it showed just a page where a message was written: “This is the placeholder for domain . If you see this page after uploading site content you probably have not replaced the index.html file. This page has been automatically generated by Plesk”. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The Complainant is the controlling company of the Brazilian banking conglomerate Itaú Unibanco – a renowned financial institution, that owns several trademarks involving the expressions “itaú” and “unibanco” registered not only in Brazil, but in other countries. The Complainant is the owner of several other domain names composed of the expressions “itaú” and “unibanco”.
(ii) The disputed domain name is confusingly similar to the Complainant's trademarks, because it is constituted by the combination of the terms registered by the Complainant as trademarks.
(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. That is because the Respondent is not using the disputed domain name in connection with any services or products; it has not been commonly known by the words “itaú” and “unibanco”; it is not making any use at all of the disputed domain name.
(iv) The Respondent has registered and is using the disputed domain name in bad faith. By the time the domain name was registered, it was impossible that the Respondent could ignore the Complainant's activities and trademarks, because both the Complainant's and the Respondent's headquarters are in Brazil. The Respondent has not developed any active website at and the lack of use can constitute bad faith registration and use. The Complainant sent a warning letter on December 11, 2008 declaring its rights over the marks ITAÚ and UNIBANCO, but the Respondent did not show any interest in transferring the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(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.
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider the requirements of the Policy have been met. A. Identical or Confusingly Similar
The Complainant's Exhibit 8 shows registrations of ITAÚ and UNIBANCO trademarks in Brazil since 1975.
The Complainant's Exhibit 8.A shows registrations of the UNIBANCO trademark in The United States since 2001.
Also, Exhibit 8.B shows the following registrations of the ITAÚ trademark at:
- the European OHIM – Office for Harmonization in the Internal Marketing, since 2003;
- the United States Patent and Trademark Office, since 1981;
- the Great Britain and Northern Ireland Trade Marks Registry, since 2004;
- the Hong Kong Trade Marks Registry, since 2006;
- the Intellectual Property Office of Singapore, since 2006;
- the Patents Office in Ireland, since 2006; and
- the Industrial Property Institute in Portugal, since 1988.
The Panel has no doubt that the ITAÚ and the UNIBANCO trademarks are connected with the Complainant and have reached a well-known status in Brazil.
The trademarks ITAÚ and UNIBANCO are wholly encompassed within the disputed domain name.
Although the disputed domain name is composed by the combination of both trademarks, it is not enough to refute the confusing similarity between the disputed domain name and the trademarks owned by the Complainant, required under paragraph 4(a)(i) from the Policy.
In a previous UDRP case, concerning the domain names , , and , the Panel stressed that
Although the combination of the two signs is not registered or used as a trademark, the contested domain names must nevertheless be considered confusingly similar to the marks in which the Complainant has rights. This is in particular true as far as the mark NESTLE is concerned since this mark is included in its entirety as the first and dominant part of the domain names. (Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118).
Furthermore, in another UDRP case, regarding the domain names and , the Panel referred that “The disputed domain names combine the identical trademarks CIC and FILBANQUE. Domain names consisting of a mere combination of two trademarks must be considered as confusingly similar to such trademarks” (Credit Industriel et Commercial S.A. v. Richard J.,WIPO Case No. D2005-0569)
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent.
The Respondent is not commonly known by the domain name, which includes two well-known trademarks in Brazil.
The domain name has not been used at all.
Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel has concluded that the circumstances referred to in paragraph 4(b)(ii) have occurred in the present case.
The disputed domain name encompasses the trademarks of the traditional Brazilian banks ITAÚ and UNIBANCO, that have merged in 2008 creating the biggest bank in the Country.
The merger of these financial institutions was widely published by the press, especially in Brazil, so that it was not likely that in the circumstances the Respondent would have no awareness of the transaction involving the previous owner of those trademarks, of its reputation and of the business area in which the Complainant develop its services.
So, the use of both trademarks together as a domain name by some company that is not commonly known by those expressions and has no rights or legitimate interests on them in this case indicates the Respondent was trying to take unjustifiable advantage of that, characterizing bad faith.
For reference on the subject, it is important to point out that
The registration of this domain name by someone with no connection with the Complainant, suggests opportunistic bad faith if no legitimate interest is clearly proven . . . The lack of use of the domain name must also be reexamined under the perspective of good or bad faith. The lack of use by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy. (LACER,S.A. v Constanti Gómez Marzo,WIPO Case No. D2001-0177)
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain name in bad faith, satisfying the third element of the Policy. 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.
Rodrigo Azevedo
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
António L. De Sampaio
Panelist
Dated: December 10, 2009
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