WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ITAÚ UNIBANCO HOLDING v. Admin Admin Case No. D2009-1391 1. The Parties
The Complainant is ITAÚ UNIBANCO HOLDING of São Paulo, Brazil represented by Momsen, Leonardos & Cia. of Brazil.
The Respondent is Admin Admin of Rio de Janeiro, Brazil. 2. The Domain Names and Registrars
The disputed domain names ; ; and are registered with Key-Systems GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2009. On October 20, 2009, the Center transmitted by email to Key-Systems GmbH a request for registrar verification in connection with the disputed domain names. On October 22, 2009, Key-Systems GmbH 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 names and were set to expire on November 5, 2009 and the domain names and were set to expire on November 6, 2009, an e-mail was sent to Key-Systems GmbH on October 22, 2009, in order to request that the domain names remained in Registrar lock status until the UDRP proceedings were concluded. The Key-Systems GmbH Registrar confirmed on October 22, 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 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.
The Center appointed Rodrigo Azevedo, Alvaro Loureiro Oliveira and António L. De Sampaio as panelists in this matter on December 1, 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.
According 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 trademark 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. UNIBANCO trademark was first registered on January 25, 1980.
In addition to that, the Complainant and its subsidiaries own more than thousands of domain names and Internet keywords, most of them containing the trademarks ITAÚ and UNIBANCO, having a strong presence on the Internet.
The Respondent registered the disputed domain names and on November 5, 2008 and and on November 6, 2008.
However, the Respondent has not developed any active website hosted at the disputed domain names. When the Panel accessed the websites at the disputed domain names after receipt of the case file, it the Internet Explorer could not open the web pages. 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 by the expressions “itaú” and “unibanco”.
(ii) The disputed domain names are confusingly similar to the Complainant's trademarks, because they illegally reproduce the Complainant's and its controlled companies' trademarks ITAÚ and UNIBANCO.
(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. That is because the Respondent is not using the disputed domain names in connection with any services or products sold by its business; it has not been commonly known by the words “itaú” and “unibanco”; it is not making any use at all of the disputed domain names. The Complainant has never authorized the use of the trademarks ITAÚ and UNIBANCO by the Respondent.
(iv) The Respondent has registered and is using the disputed domain names in bad faith. By the time the domain names were 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 and the lack of use can constitute bad faith registration and use.
(v) The Complainant has sent a warning letter by e-mail on December 15, 2008, informing its rights over the marks ITAÚ and UNIBANCO. On the same date, the Respondent asked the warning letter agreeing to transfer the domain names. On December 18, 2008, the parties initiated proceedings to have the domain names transferred to the Complainant, but that action was not successfully concluded.
(vi) The Complainant refers that the Respondent's address informed to the Registrar is inaccurate and incomplete, which demonstrates that the Respondent is in conflict with the obligation of providing accurate information to the Registrar. 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, the 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 on submitting a formal reply, the Panel shall consider whether 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 Market, since 2003;
- the United States Patent and Trademark Office, since 1981;
- the Intellectual Property Office in the United Kingdom, since 2004;
- the Intellectual Property Department in Hong Kong, SAR of China, since 2006;
- the Intellectual Property Office of Singapore, since 2006;
- the Irish Patent Office in Ireland, since 2006; and
- the National Institute of Industrial Property 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 names.
Although (a) the disputed domain name is composed by the agglutination of both trademarks and (b) the domain name is composed by both trademarks with the word “e” between them (which means “and” in Portuguese language), this is not enough to refute the identity between the disputed domain names and the trademarks owned by the Complainant, required under paragraph 4(a)(i) of the Policy.
Furthermore, the domain name is the exact reproduction of the trademark UNIBANCO.
And, finally, the domain name encompasses the trademark “ITAÚ” together with a descriptive word “banco” (which means “bank” in Portuguese language), which is not sufficient to refute the similarity between the domain name and the Complainant's trademark. In a previous UDRP case, concerning the domain names and , the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, ltd.,WIPO Case No. D2008-0954).
In another 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).
Therefore, the Panel finds the disputed domain names to be the same as or confusingly similar to the Complainant's trademarks, satisfying the paragraph 4(a)(i) of the Policy. 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 any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the Respondent's default and on the prima facie evidence in the Complaint, it is inferred 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 names.
The Complainant has not licensed the trademark to the Respondent.
The Respondent is not commonly known by the domain names, which include two well known trademarks in Brazil.
The domain names have not been used at all, which cannot be considered to be legitimate in the circumstances of this case.
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, inter alia, on paragraph 4(b)(ii) have occurred in the present case.
The disputed domain names encompass at least one of 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 feasible that 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 develops its services.
So, the use of the trademarks as a domain name by some company that is not known by those expressions and has no rights or legitimate interests in them indicates the Respondent was trying to take unjustifiable advantage of that, characterizing bad faith.
Former decisions on the subject also consider that the lack of use of a domain name may indicate bad faith in some cases: “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) this is exactly the present case.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain names 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 names ; ; and be transferred to the Complainant.
Rodrigo Azevedo
Presiding Panelist
Alvaro Loureiro Oliveira
Panelist
António L. De Sampaio
Panelist
Dated: December 5, 2009
Full & Egal Universal Law Academy