Complainant is Banco Original do Agronegócio S.A. of São Paulo, Brazil, represented by Patricia Peck Pinheiro Advogados, Brazil.
Respondent is Domains By Proxy, LLC / Fernando Garcia of Scottsdale, Arizona, United States of America / Sao Paulo, Brazil. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 26, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 2013.
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 Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2013.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 9, 2014. The Panel finds that it was properly constituted. 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
Complainant is a Brazilian financial institution, commonly known as “banco original” since 2011.
Complainant is owner of several Brazilian trademark applications, including No. 903711567 BANCO ORIGINAL, filed on June, 3, 2011, and No. 904082938 BANCO ORIGINAL, filed on September 29, 2011, both in international class 36.
Complainant also owns a domain name , registered on June 14, 1999.
The disputed domain names, , , and , were all registered on April 30, 2013, by Respondent, Mr. Fernando Garcia. 5. Parties’ Contentions A. Complainant
Complainant alleges that its service mark, BANCO ORIGINAL, and domain name , are identical or confusingly similar to the disputed domain names. Thereby, Complainant claims that the fact that its service mark has been entirely incorporated into the disputed domain names is sufficient to establish that they are identical or confusingly similar to the Complainant’s registered mark, as per Quixtar Investments Inc v Dennis Hoffman, WIPO Case No. D2000-0253, and Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784.
Complainant also contends it has undeniable public knowledge worldwide, figuring as the 21st largest bank in Brazil and the 62nd in the Latin America, with over half a billion Reais (USD 250 million) worth of operations since 2011, and over 2 billion Reais (USD 1 billion) worth of assets, being not the first but the only business to be referred at google search results by the expression “banco original”.
Accordingly, Complainant states that, due to the length and amount of sales under the trademark previously mentioned, the nature and extent of advertising and media recognition, Complainant’s service mark has acquired “secondary meaning” status, extending its rights as for the purposes of common law trade mark rights for the purposes of Paragraphs 4(a) of the Policy.
Complainant further alleges that Respondent is a formal employee of Complainant, and it was never authorized to use Complainant’s trademark BANCO ORIGINAL, which leaves no doubts regarding the bad faith registration and absolute lack of fair use justification. Furthermore, Complainant points out that in previous UDRP decisions it has been decided that former employees who register domain names identical or confusingly similar to their company’s trademark and official domain name cannot ignore prior rights (see Bardón y Rufo 67, S.L. v. Marko Mattila, Auto Katti, S.L.,WIPO Case No. D2012-1192).
Complainant also argues that the disputed domain names have never been used with any website content since registered, and that Respondent has never been known by the disputed domain names. There is no evidence of Respondent’s use, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or any website content at all.
Lastly, Complainant claims that the fact that Respondent chose to use the anonymity services of the registrant, “Domains By Proxy, LLC”, indicates the intent of Respondent to hide itself from legal actions and direct communication from the Complainant. Therefore, it concludes that the lack of legitimate, or any, use, the similarity with Complainant’s service mark and domain name through which Complainant has been distinctively known for over two years, and anonymity of Respondent who is a former employee of the Complainant constitute proof of bad faith in the registration and use for the purposes of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
that the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
that Respondent has no rights or legitimate interests in respect of the disputed domain names; and
that the disputed domain names have been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark applications BANCO ORIGINAL, and that such trademark, which has also been used as a service mark for over two years, is entirely incorporated in the disputed domain names.
The Panel understands that Complainant has proven common law rights over the BANCO ORIGINAL service mark which has indeed become a distinctive identifier that has been widely used and recognized in the financial field.
The Panel therefore finds that Complainant holds rights in BANCO ORIGINAL for the purpose of this proceeding and the disputed domain names are identical to Complainant’s trademark BANCO ORIGINAL. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case, Complainant has provided sufficient prima facie evidence of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names , , and .
The Panel recognizes that Respondent is not commonly known as “banco original” and does not own any trademark bearing this expression, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that the its only intention when registering the disputed domain names was to create a false association with Complainant’s service and trademark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds it is highly unlikely that Respondent would not have known of Complainant’s company and rights in the trademark and service mark BANCO ORIGINAL at the time of registration of the disputed domain names, considering its status worldwide (Annex V of the Complaint) and especially the fact that Respondent is a former employee of Complainant.
In fact, Complainant’s allegation that Respondent is a former employee is corroborated by Annex VII of the Complaint, and, given the lack of response hereof, the Panel finds that such allegation is duly proved in this proceeding.
The Panel agrees that the fact that Respondent chose to hide itself with its Registrar’s privacy protection service indicates its attempt to prevent from being identified, evidencing Respondent’s objective when registering the disputed domain names: creating confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites.
The Panel additionally notes that the disputed domain names are not currently being used in connection with an online website. This is considered to be “passive holding” of the domain names, which does not avoid the finding of bad faith use, notably in the present case, in which Respondent is a former employee of Complainant. In this sense, the Panel recalls the consensus involving passive holding, found at paragraph 3.2 of the WIPO Overview 2.0, according to which “(…) panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.”
Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: January 23, 2014
Full & Egal Universal Law Academy