The Complainant is Banco BTG Pactual S/A of Rio de Janeiro, Brazil, represented by Dannemann Siemsen, Brazil.
The Respondents are Vagner Jose Chaves de Lima and Pactual Associação de Benefícios Mútuos d/b/a Pactual Benefícios of Nova Iguaçu, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 6, 2017. 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
The Complainant is Banco BTG Pactual S/A, a Brazilian investment bank founded in 1983, as a brokerage firm under the name PACTUAL, currently with offices in three continents and ten countries.
In addition to the investment area, the Complainant became engaged in other fields of banking services, including “insurances”.
The Complainant had a net profit of BRL 503 million in 2017.
The Complainant owns several Brazilian trademark registrations for the mark PACTUAL covering banking, financial and other related services, among which are: No. 816619700, for PACTUAL, in national class 36‑10/70, registered on November 3, 1993; No. 830443584, for PACTUAL, in international class 36, registered on April 16, 2013 and No. 840164203, for BTG PACTUAL, in international class 36, registered on June 30, 2015.
The disputed domain name was registered on August 18, 2016 by Vagner Jose Chaves de Lima (First Respondent) and is being used by Pactual Associação de Benefícios Mútuos (Second Respondent) to host a website offering insurance services. The First Respondent acts as administrative director of the Second Respondent. The Respondents will be collectively referred to as “the Respondent”, unless there is the need to individualize their conduct. 5. Parties’ Contentions A. Complainant
The Complainant states that it owns trademark registrations in Brazil for PACTUAL, which have been used for more than thirty years and that the distinctive part of the disputed domain name is identical and confusingly similar to its trademarks. According to the Complainant, the word “pactual” derives from the word “covenant” in Portuguese and is totally arbitrary in connection with banks.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name and it has not acquired any trademark rights related to the disputed domain name.
In addition, the Complainant alleges that the use of the PACTUAL mark as a domain name will mislead consumers to believe that the webpage “www.” is one of the Complainant’s official websites and that the situation is worsened by the fact that the Respondent provides insurance services and products, which are also offered by the Complainant.
The Complainant asserts that due to the notable renown of the PACTUAL mark and the particular circumstances of this case, it is clear that the Respondent knew its marks and registered the disputed domain name in bad faith.
The Complainant also sent a cease-and-desist letter to the Respondent on June 30, 2017, asking the interruption of the use of PACTUAL mark and the transfer of the disputed domain name. The Respondent replied to the letter insisting on the use of the mark, alleging that the Respondent is engaged in a different field of the market than that of the Complainant.
The Complainant concludes that the Respondent is trying to benefit from the fame of the Complainant’s trademarks and requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark PACTUAL. Therefore, the Panel finds that the Complainant has trademark rights for purposes of the Policy.
The distinctive part of the disputed domain name is identical to the Complainant’s trademarks.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is identical to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademark PACTUAL.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute, the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent does not own any trademark application or registration before the Brazilian Trademark and Patent Office (“BPTO”) comprising the term “Pactual”.
The Panel notes, however, that the Respondent appears to be doing business under the name(s) “Pactual Associação de Benefícios Mútuos” and/or “Pactual Benefícios”. The Respondent has not filed a Response to the Complaint, but has alleged in its reply to the Complainant’s cease-and-desist letter that its services did not compete with those offered by the Complainant.
The Panel finds, however, that the Respondent’s services are competing with the Complainant’s, which also offers insurance services. The Panel finds that the use of a domain name that reproduces the Complainant’s exact trademark to offer competing services does not amount to a bona fide offer of products and services under the Policy.
Moreover, as expressed in section 2.5.1 of the WIPO Overview 3.0 “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation”.
Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which reproduces the Complainant’s trademarks and strongly suggests an association with the Complainant, does not correspond to a bona fide use under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademark PACTUAL is well known in its field of activity, is registered by the Complainant and has been used for decades.
The distinctive part of the disputed domain name is identical to the Complainant’s trademarks, and the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, it seems logical that the Respondent uses the disputed domain name to suggest some kind of association with the Complainant.
The Respondent obviously knew of the Complainant’s marks when it registered the disputed domain name. There seems to be no other reason why the Respondent would choose the term “Pactual”, but to take undue advantage of the Complainant’s trademarks.
The Complainant showed evidence that in 2013 (at least three years before the Respondent’s incorporation) it started activities also in the field of insurances and, therefore, if the Respondent provides insurance services and products under the disputed domain name, consumers will likely be misled to believe that the Respondent’s website belongs to or is associated with the Complainant.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: November 17, 2017
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