WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ITAÚ UNIBANCO S.A. (formerly named Banco Itaú S.A.) v. Fabio Gomes Case No. D2009-1456 1. The Parties
The Complainant is ITAÚ UNIBANCO S.A. (formerly named Banco Itaú S.A.) of São Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Fabio Gomes of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition. I, LLC d/b/a 000D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2009. On October 29, 2009, the Center transmitted by email to DSTR Acquisition. I, LLC d/b/a 000D a request for registrar verification in connection with the disputed domain name. On October 29, 2009, DSTR Acquisition, I, LLC d/b/a 000D 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” 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 November 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2009.
The Center appointed Rodrigo Azevedo, Alvaro Loureiro Oliveira and António L. De Sampaio as panelists in this matter on December 11, 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 is a part of the well-known banking conglomerate Itaú Unibanco.
According to the 2008 Interbrand research, ITAÚ is the most valuable trademark in that country and one of the most valuable marks in Latin America.
Not only in Brazil but also in other countries, the Complainant has hundreds of trademarks registrations or applications for the word “Itaú” (solely or composed by other words and logotypes). The trademark ITAÚ was first registered on July 25, 1975. ITOKEN ITAÚ trademark was first applied for in Brazil on March 25, 2008.
In addition to that, the Complainant and its subsidiaries own thousands of domain names, most of them containing the trademark ITAÚ, having a strong presence on the Internet.
The Respondent registered the disputed domain name on January 25, 2009.
The Respondent has not developed any active website hosted at the disputed domain name. When the Panel accessed the website at the disputed domain name the Internet Explorer could not open the web page. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The Complainant is part of the Brazilian banking conglomerate Itaú Unibanco – a renowned financial institution that owns several trademark registrations and trademark applications involving the expressions “itaú” and “itoken” registered or applied for not only in Brazil, but in other countries. The Complainant and its controller company Itaú Unibanco Holding S.A. is the owner of several other domain names composed by the expression “itaú”.
(ii) The disputed domain name is confusingly similar to the Complainant's trademarks, because it is constituted by exactly the same word “itaú” registered by the Complainant as a trademark and the expression “itoken” filed as a trademark application in Brazil prior to the registration of the disputed domain name.
(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 “itoken”; 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 “www.” and the lack of use and inaction can constitute bad faith registration and use.
(v) The Complainant has sent a warning letter by e-mail on March 3, 2009, informing its rights over the marks ITAÚ and ITOKEN and requesting the transfer of the disputed domain name, but the address related to the domain name available at the WhoIs database was incomplete. In an informal research, the Complainant could obtain the complete address, so that a warning letter was sent through the Registry of Titles and Documents of the State of São Paulo, on April 30, 2009. Several unsuccessful attempts to amicably settle the dispute over the domain name indicate bad faith. 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 whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
The Complainant's Exhibit 8 shows registrations of ITAÚ trademarks in Brazil since 1975.
Also, Exhibit 8.A 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 Industrial Property Institute in France, since 1991;
- the Irish Patents Office in Ireland, since 2006; and
- the National Institute of Industrial Property in Portugal, since 1988.
The Panel has no doubt that the ITAÚ trademark is connected with the Complainant and has reached a well-known status in Brazil.
Although the Complainant has not yet obtained the registration of the trademarks ITOKEN and ITOKEN ITAÚ, the Panel observed that the only applications containing those two expressions before the Brazilian Patent and Trademark Office (Instituto Nacional da Propriedade Industrial – INPI) are both from the Complainant.
Furthermore, a Google search using the word “itoken” on websites written in Portuguese – the official language of Brazil – indicates basically addresses related to a security apparatus provided by the Complainant to some of its clients, called “itoken itaú”.
Therefore, the Panel concludes that the addition of the word “itoken” in the domain name (and regardless of the fact that the word “itoken” is not yet registered in the Complainant's country) does not prevent a finding of confusing similarity between the disputed domain name and the ITAU trademarks owned by the Complainant, required under paragraph 4(a)(i) from the Policy. Indeed, the addition of “itoken” in fact serves to heighten such confusing similarity.
In a previous WIPO 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 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 trademarks to the Respondent.
The Respondent is not commonly known by the domain name, which includes at least one well known trademark in Brazil.
The domain name has not been used at all.
Consequently, the Panel is satisfied that the 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 disputed domain name encompasses the trademark of the traditional Brazilian bank ITAÚ together with a word usually related to the Complainant and its services in Brazil.
The trademark ITAÚ is widely known by the Brazilian customers, so that it is not feasible that the Respondent would have no awareness of the owner of those trademarks, of its reputation and of the business area in which the Complainant develops its services.
So, the use of both words together as a domain name by some person 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.
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).
The Panel finds such reasoning applicable to the circumstances of the present case. 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 28, 2009
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