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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco ItaГє S.A. , Banco ItaГє Chile v. Urislav Martinich

Case No. D2009-0910

1. The Parties

The Complainants are Banco ItaГє S.A., of São Paulo, São Paulo, Brazil and Banco ItaГє Chile, of Santiago, Chile, represented by Claro y CГ­a, Santiago, Chile.

The Respondent is Urislav Martinich, of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <banco-itau.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2009. On July 8, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 8, 2009, GoDaddy.com, Inc. 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 July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent`s default on August 5, 2009.

The Center appointed Enrique Ochoa de GonzГЎlez Argãelles, Alvaro Loureiro Oliveira and Rodrigo Velasco Santelices as panelists in this matter on August 26, 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 following information is summarized from information in the Complaint:

- The Complainants are part of the Brazilian banking conglomerate ItaГєsa, one of the largest and best-known financial conglomerates in its country of origin, as well as on an international level. The Complainant Banco ItaГє S.A. was founded in 1943 and started operating in 1944.

- The ItaГєsa conglomerate is well known within the financial sector, both in Brazil and abroad, including the country of Chile, where one of the Complainants Banco ItaГє Chile operates since 2007.

- The brand ITAГљ and related brands (including the alternate spelling "ITAU") are protected by many service marks, trademarks and domain name registrations owned by the Complainant Banco ItaГє S.A. and other companies that are part of the ItaГє conglomerate, including the following:

 

Trademark	Certificate Number	Class	Country
ITAU	691151	36 and 42	Chile
ITAГљ	771366	36	Chile
ITAU	778915	9	Chile
ITAU	785441	35 and 38	Chile
ITAГљ	778916	9 and16	Chile
ITAГљ	006.117.066	36:10-60-70	Brazil
ITAUBANCO	760.255.989	36:10	Brazil
ITAU	816.518.025	36:10-60-70	Brazil
ITAГљ	821.594.052	36	Brazil

 

- The Complainants are also the holders of several domain names, including:

- <bancoitau.cl>, owned by Complainant Banco ItaГє S.A. since May 15, 2006;

- <bancoitaГє.cl>, owned by Complainant Banco ItaГє S.A. since May 23, 2006;

- <itaubanco.cl>, owned by the related company Banco ItaГє Holding Financeira S.A. (now named ItaГє Unibanco Banco MГєltiplo S.A.) since May 23, 2006;

- <itaГєbanco.cl>, owned by the related company Banco ItaГє Holding Financeira S.A. (now named ItaГє Unibanco Banco MГєltiplo S.A.) since May 23, 2006;

- <itaubank.cl>, owned by the related company Banco ItaГє Holding Financeira S.A. (now named ItaГє Unibanco Banco MГєltiplo S.A.) since July 3, 2006;

- <itaГєbank.cl>, owned by the related company Banco ItaГє Holding Financeira S.A. (now named ItaГє Unibanco Banco MГєltiplo S.A.) since July 3, 2006;

- <banco-itau.net>, owned by Complainant Banco ItaГє S.A. since June 15, 2007. It is worth noting that this domain name is identical to the disputed domain name <banco-itau.com> (without considering the TLD);

- <banco-itau.org>, owned by Complainant Banco ItaГє S.A. since June 15, 2007. Again, this domain name is identical to the disputed domain name <banco-itau.com> (without considering the TLD);

- <bancoitau.com>, owned by Complainant Banco ItaГє S.A. since April 15, 2001. This domain name is virtually identical to the disputed domain name, including the TLD, the only difference being the lack of a hyphen;

- <bancoitau.com.br>, owned by Complainant Banco ItaГє S.A. since May 18, 1999;

- <bancoitau.info>, owned by Complainant Banco ItaГє S.A. since October 8, 2001;

- <bancoitau.mobi>, owned by Complainant Banco ItaГє S.A. since September 19, 2006;

- <bancoitau.net>, owned by Complainant Banco ItaГє S.A. since May 25, 1999;

- <bancoitau.org>, owned by Complainant Banco ItaГє S.A. since May 25, 1999;

- <itaubanco.com>, owned by Complainant Banco ItaГє S.A. since September 16, 1996;

- <itaubanco.com.br>, owned by Complainant Banco ItaГє S.A. since August 27, 1996;

- <itaubanco.mobi>, owned by Complainant Banco ItaГє S.A. since September 21, 2006;

- <itaubank.com>, owned by Complainant Banco ItaГє S.A. since October 13, 1996;

- <itaubank.mobi>, owned by Complainant Banco ItaГє S.A., since September 21, 2006.

- The Brazilian Patent and Trademark Office, in the Official Gazette No. 1973 of October 28, 2008, acknowledged the fame and high repute status of the trademark ITAГљ in the context of an opposition case filed against the trademark ITAГљPLAZA SHOPPING (Appln. No. 822.702.282).

- The Complainant Banco ItaГє S.A. and other companies of the ItaГє conglomerate are also the owners of many applications and registrations for the trademark ITAГљ in several other countries throughout the world.

- No Response was filed by the Respondent within the time specified in the Notification of Complaint and Commencement of Administrative Proceedings. As of the date of this decision, no Response has been filed by the Respondent. Consequently, this Panel will issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of a Response from Respondent (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy`s Antiques, WIPO Case No. D2000-0004).

- The disputed domain name, <banco-itau.com>, was registered on October 1, 2008.

5. Parties` Contentions

A. Complainant

The Complainants contend that they have obtained a remarkable reputation and image in the corporate field and with consumers in Brazil, Chile and worldwide.

In line with the abovementioned, the Complainants contend that they have developed a substantial goodwill and brand recognition in respect of the ITAГљ mark. Thus, the word and trademark ITAГљ are automatically associated with the Complainants, regardless of the field of activity concerned.

The Complainants contend that the disputed domain name, <banco-itau.com>, contains the very same words that also form the substance of both Complainants` names: "Banco ItaГє S.A." and "Banco ItaГє Chile".

The Complainants contend that the most distinctive portion of the domain name in question - namely, "ItaГє" - is identical to the famous and widely registered service mark and trademark ITAГљ and that the word "banco" that is also part of the disputed domain name is the Spanish term for "bank" and is therefore completely generic regarding the core services of Banco ItaГє S.A. and Banco ItaГє Chile, namely, banking and financial services in International Class 36.

The Complainants contend that since the domain name <banco-itau.com> incorporates the mark ITAГљ in its entirety, and since the mark ITAГљ is in fact used for a bank, the added word "banco" ("bank") does not avoid confusion as to source but rather heightens the possibility of confusion (see Forest Laboratories, Inc. v. Awad Kajouk, Section 6.A of the decision, WIPO Case No. D2007-1650); and consequently, the disputed domain name illegally reproduces the Complainant Banco ItaГє S.A.`s trademark ITAГљ and, therefore, is identical to -or, at the very least, confusingly similar to- the Complainant Banco ItaГє S.A.`s registered trademarks.

The Complainants contend that the word "itaГє" means "black stone" in the Tupi-Guarani language, but has no meaning whatsoever in Spanish, which is the language spoken by the Respondent, as well as the language used for the added word "banco" ("bank") and that the combination of words "banco-itaГє" makes no sense other than to refer to the Complainants` mark and business. It is thus very clear that "ItaГє" is not used as a descriptive word and that the Respondent has no interest in using it in its generic sense (see Sanofi-Aventis v. Direct Response Marketing aka DRM, Section 6.B of the Decision, WIPO Case No. D2005-0661.).

The Complainants contend that the Respondent is not commonly known by the disputed domain name and that his own name, as an individual, is not even remotely similar to the domain name. Moreover, the Respondent does not engage in the banking business, so the word "banco" ("bank") in the domain name has no connection at all with him.

The Complainants have not licensed or otherwise consented to the Respondent`s use or registration of a domain name comprising Banco ItaГє S.A.`s highly distinctive, well-known and widely registered mark ITAГљ.

The Complainants contend that the Respondent`s use of the domain name does not constitute a bona fide offering of goods or services, since the Respondent was a client of Banco ItaГє Chile who felt he was not treated adequately when the bank requested payment of a debt from him. The Complainant also state that as a consequence thereof, the Respondent registered the disputed domain name and set up a website that displays the following message:

"BANCO ITAГљ - Historias del Horror - PrГіximamente, sitio Web dedicado a contar las nefastas experiencias de diversos clientes, con el Banco ItaГє. Todas, respaldadas con documentos. SГіlo testimonios reales de personas y empresas con el Banco ItaГє. El sitio web serГЎ desarrollado por el comunicador, dj, arquitecto de informaciГіn y diseГ±ador, maestro Livercake y ocuparГЎ los primeros resultados en los buscadores por diversos términos, tales como Banco Itau y crédito Banco Itau, ya que serГЎ posicionado por el SEO Uri Martinich.

AsГ­ que, si has llegado a este sitio por accidente, espera... muy pronto, la primera web no-corporativa, dedicada al Banco ItaГє."

The Complainants contend that the Respondent had threatened to set up the website, to which the disputed domain name resolves, in an email message he sent to a debt-collector acting on behalf of the Complainant Banco ItaГє Chile and that there is no doubt that the Respondent is not making a legitimate non-commercial or fair use of the domain name, since (a) it is his express purpose to mislead consumers by making them think that the disputed domain name has a connection with the Complainants; and (b) upon luring consumers to his website, he tarnishes Banco ItaГє S.A.`s service marks and trademarks at issue.

The Complainants contend that it is the Respondent`s right, as a client of Banco ItaГє Chile, to complain if he felt inadequately treated. Nevertheless, it is certainly not the right of the Respondent to use such circumstance as an excuse for registering and using a domain name in which he has no legitimate interest and, as a direct and deliberate result, infringe the Complainants` trademark rights.

B. Respondent

The Respondent did not reply to the Complainant`s contentions.

6. Discussion and Findings

Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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. Policy Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the registrations cited by the Complainants and provided as Exhibits to this Complaint, the Panel is convinced that the Complainants have rights in the mark ITAU, ITAГљ and ITAUBANCO, among others.

The disputed domain name is <banco-itau.com>. It is well established that the gTLD suffix ".com" or similar, being an integral and necessary part of a domain name, may be disregarded in the determination of confusing similarity. (Empresa Brasileira de TelecomunicaçГµes S.A. - Embratel v. Gustavo Teles, WIPO Case No. D2000-0155).

Consequently, it is clear that the domain name <banco-itau.com> is confusingly similar to the trademarks registered and used by the Complainants.

B. Rights or Legitimate Interests

In accordance with prior decisions under the Policy, "a complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Accordingly, as a result of the Complainant`s supported allegations which have established its prima facie case and without any evidence of the Respondent`s rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Complainant has proven the second element of the Policy.

The Panel moreover notes that there is no evidence before it regarding any further use of the website since its registration beyond the statement presently posted on the website which in light of the circumstances, the Panel finds to be pretextual and an improper basis for a right or legitimate interest in this case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The Panel verified that the Respondent is a client of Banco ItaГє Chile and finds in its view it is not possible to escape the conclusion that the Respondent has knowingly incorporated the Complainant`s trademark in the domain name without authorization and without the intention to use the domain name as a criticism site but rather to trade on the good will of the Complainant`s mark under a pretextual use that does not satisfy this Panel as consistent with a fair use under the Policy.

See Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A Natwest Bank v. Personal and Pedro LГіpez, WIPO Case No. D2003-0166.

Therefore, the Panel is convinced of the existence of bad faith registration and use, and the Complainant has proven the third of the three elements required by 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 <banco-itau.com> be transferred to the Complainants.

Enrique Ochoa de GonzГЎlez Argãelles Presiding Panelist
Alvaro Loureiro Oliveira Panelist	Rodrigo Velasco Santelices Panelist

Dated: September 9, 2009