Complainant is Banco Losango S.A. - Banco Múltiplo of Rio de Janeiro, Brazil, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.
Respondent is Domain Protection Services Inc. of Denver, Colorado, United States of America / Abedellatif Shatila of Beirut, Lebanon. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2018. On December 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an informal email communication from Respondent on January 2, 2019. Complainant filed an amended Complaint on January 3, 2019. Respondent sent an email communication to the Center on January 4, 2019.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties that would proceed to panel appointment on January 31, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 13, 2019. 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 bank in Brazil. Since December 21, 1982, Complainant has held the Brazilian trademark registration No. 800242181 for the mark LOSANGO in connection with “banking, credit services, financing and investment.” Complainant holds 38 other Brazilian trademark registrations including the mark LOSANGO.
The Domain Name was registered on July 21, 1999. It is not known from the record whether Respondent is the original registrant or, if he is not, when he acquired the Domain Name. The Domain Name resolves to a website containing several hyperlinks, such as “Losango Visa Credit” and “Losango Check Account.” These hyperlinks direct the user to other web pages pertaining to financial services unrelated to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s actual contentions. Rather, in two emails, Respondent states that he checked and the Domain Name “is not trade mark,” and the word “losango” is generic (“means diamond in English”). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark LOSANGO through registration and use. The Panel also finds the Domain Name to be identical to the mark.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has have not come forward to explain why he registered the Domain Name. Respondent states that “losango” means “diamond” in English, but the website to which the Domain Name resolves features content related not to diamonds but to banking services – Complainant’s business. The record is undisputed that Complainant never authorized Respondent to use the LOSANGO mark in any manner.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s LOSANGO mark in mind when registering the Domain Name. Complainant asserts that the LOSANGO mark is well known, but Complainant presents no evidence of this in the Complaint or annexes thereto. Nonetheless, the fact that Respondent’s website features banking services being the Domain Name identical to the LOSANGO mark would lead to a finding of registration and use in bad faith. Furthermore, the mentioned circumstances coupled with Respondent’s failure (in two emails) to deny knowledge of the Complainant when he registered the Domain Name nor to provide any relevant evidence of a bona fide purpose or reasonable explanation, suffices to persuade the Panel on a balance of probabilities that Respondent targeted Complainant’s LOSANGO mark when registering the Domain Name.
The Panel also finds, on this record and on a balance of probabilities, that Respondent has used the Domain Name in bad faith, specifically within the meaning of the above-quoted Policy paragraph 4(b)(iv). It appears that Respondent is making commercial use of the Domain Name by diverting Internet users to his website by means of consumer confusion between the Domain Name and Complainant’s trademark.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: February 14, 2019
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