The Complainant is Itaú Unibanco Holding S.A. of Sao Paulo, Brazil, represented by Momsen, Leonardos e Cia, Brazil.
The Respondent is Nigel Sweet of Berkshire, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <itau-unibanco.com> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2009. On June 9, 2009, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 9, 2009, Wild West Domains, 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 June 16, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 7, 2009.
The Center appointed John Swinson, Alvaro Loureiro Oliveira and Andrew D. S. Lothian as panelists in this matter on July 31, 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.
The Complainant is the controlling company of the Brazilian banking group Itaú Unibanco, which comprises the companies Banco Itaú S.A. (hereinafter referred to as Itaú) and Unibanco - União dos Bancos Brasileiros S.A (hereinafter referred to as Unibanco). The financial operations of Itaú and Unibanco corporations were merged on November 3, 2008. This resulted in the Complainant becoming the 15th largest financial institution in the world by market capitalization, and the most valuable bank in the Brazilian stock exchange.
Prior to the merger, both Itaú and Unibanco had a longstanding history of providing financial goods and services in Brazil and overseas.
The Respondent is an individual residing in the United Kingdom.
The disputed domain name was registered on November 4, 2008. The disputed domain name did not have an operational website at the time of preparing this decision.
The Complainant makes the following contentions:
Banco Itaú S.A. is the owner of the most valuable trade mark in Brazil, being ITAÚ. According to the 2008 Interbrand research, the ITAÚ trade mark was the most valuable mark in Latin America in 2008.
Unibanco has operated in the Brazilian financial market for more than 80 years and is the owner of several UNIBANCO trade marks in Brazil, in the United States and several other countries in the American continent.
In November 2008, a merger was completed between Banco Itaú S.A. and Unibanco. The Complainant is the holding company of this newly formed conglomerate.
It was inevitable as a result of the merger that the Complainant would create an identity between the words and trade marks ITAÚ, UNIBANCO and ITAÚ UNIBANCO. The ITAÚ and UNIBANCO are trade marks which are familiar to consumers in Brazil and also worldwide. The Complainant and its group companies have been expanding internationally for many years, and the Complainant now has an international presence in Chile, Argentina, Uruguay, Paraguay, Europe (including the United Kingdom), United States of America, China and Japan.
The Complainant and other companies in the group have also registered more than 1,000 domain names and Internet keywords, the majority of which contain the trade marks ITAÚ and/or UNIBANCO, such as <itau.com>, <unibanco.com> and <itauunibanco.com>.
The Complainant has a remarkable reputation in ITAÚ and UNIBANCO due to long and extensive use of those terms as trade marks, and has developed substantial goodwill and brand recognition in those marks. Use of those marks is automatically linked to the Complainant and its group of companies, regardless of the activity concerned.
The Complainant (or its related entities) is the owner of:
- ITAÚ trade marks in Brazil, including the following: Registration No. 006.117.066 for ITAÚ word mark, granted on July 25, 1975; Registration No. 816,518,025 for ITAÚ word and device, granted on September 21, 1993; Registration No. 821.594.052 for ITAÚ word and device, granted May 18, 2004; Registration No. 828.525.935 for ITAÚ BANK word mark, granted on July 22, 2008; Registration No. 007.055.820 for the UNIBANCO word mark, granted on January 25, 1980; and Registration No. 007.055.943 for the UNIBANCO word and device, granted on January 25, 1980.
- ITAÚ trade mark in several other countries throughout the world, including the European Union (Trade Mark Registration No. 003514866 for ITAÚ word mark, granted October 31, 2003) the United States (Trade Mark Registration No. 1198257 for ITAÚ word mark, granted June 15, 1982) and the United Kingdom (Trade Mark Registration No. 1397672 for ITAÚ word mark, granted September 12, 1996).
- UNIBANCO trade marks in Brazil, the United States and several other countries in the American continent, including the following: United States Registration No. 2847172 for UNIBANCO word and device, granted June 1, 2004, and United States Registration No. 3055811 for UNIBANCO word mark, granted January 31, 2006.
The disputed domain name bears exactly the same words as the Complainant's trade marks, and is identical and confusingly similar to them.
None of the circumstances considered by paragraph 4(c) of the Policy (which give rise to rights or legitimate interests on the part of the Respondent) arise in this case.
The Respondent does not run a business under the name “itaú” or “unibanco”, and has never used such expressions to identify its products or services. The Respondent does not appear to own any trade mark application or registration for “itaú” and/or “unibanco”. The Complainant has never authorized the Respondent's use of its trade marks, whether as part of a trade mark or a domain name. Therefore the Respondent has not been commonly known by “itaú” and/or “unibanco”.
The Respondent is not using the disputed domain name to offer bona fide goods or services. In the past, the Respondent's website has stated that the disputed domain name was for sale, and has displayed sponsored links in Portuguese for credit cards and car insurance, which creates a likelihood of confusion amongst Internet users. For this reason, the Respondent cannot be making a legitimate use of the disputed domain name.
The Respondent has no real interest in using the disputed domain name. The Respondent registered the name a day after the announcement of the unification of Banco Itaú S.A. and Unibanco, obviously to obtain economical advantage and to prevent the Complainant from registering the domain name.
On March 5, 2009, the Complainant sent an email to the Respondent, warning of its trade mark rights, requesting that the Respondent cease use of its trade marks and transfer the disputed domain name to the Complainant. The Respondent replied on March 18, 2009 stating that the disputed domain name had not been registered in bad faith, but that the Respondent was willing to transfer it to the Complainant for £1,500. Further correspondence followed, with the Respondent insisting that it be paid for the transfer of the disputed domain name. This demonstrates that the Respondent has never intended to use the disputed domain name for any bona fide use, beyond the directory website that is currently displayed.
Previously, when users visited the disputed domain name and clicked on ITAÚ, they were directed to the website “www.itau.com.br/usoconsciente”, which is a link belonging to the Complainant. It is difficult to believe the Respondent did not have actual knowledge of the Complainant's trade marks at the time it registered the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
To succeed, the complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
The Complainant (or entities it controls) owns a large number of registered trade marks throughout the world which consist of or incorporate the terms ITAÚ and UNIBANCO. The bulk of these registrations are in Brazil where the Complainant's main operations are located, however registrations for ITAÚ and UNIBANCO have also been obtained in the United States, United Kingdom and the European Union (as well as various other countries).
The registrations for ITAÚ and UNIBANCO are longstanding, with the earliest ITAÚ mark being registered in 1975.
The Complainant clearly has registered trade mark rights in the terms ITAÚ and UNIBANCO. The disputed domain name combines both of these trade marks.
Domain names consisting of a mere combination of two trademarks can be considered as confusingly similar to such trade marks (Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118). This is particularly so where there has been a merger of two companies and their respective brands and trade marks (see for example, Framatome, Siemens Aktiengesellschaft and Framatome ANP v. Manu&Gil, WIPO Case No. D2001-1424; Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236; Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127).
The disputed domain name is identical to the Complainant's combined ITAÚ and UNIBANCO trade marks (except for the omission of the accent in the ITAÚ trade mark), and confusingly similar to each of those trade marks separately. The use of the hyphen in the disputed domain name is to be ignored for the purposes of comparison.
Accordingly, the first element under the Policy has been established.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are 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 or service mark at issue.”
The Complainant has put forward sufficient evidence to indicate that the Respondent is not commonly known by Itaú, Unibanco, Itaú Unibanco or any similar term, and has not been given any licence or other authorization to use the Complainant's trade marks in the disputed domain name.
The Complainant has provided evidence that the Respondent has used the disputed domain name to publish sponsored links for third party websites, where the links promote financial goods or services. The Complainant also alleges that at one stage the disputed domain name provided a link to the Complainant's own website. It is well established that this type of use of a domain name, which in effect trades off the Complainant's reputation and trade mark, and offers goods and services which compete with the Complainant, is not bona fide.
At the time of reviewing this case and preparing the decision, the website operating from the disputed domain name was unavailable, and contained no content. The Panel can comfortably infer from the evidence before it that the disputed domain name was chosen by the Respondent to trade off the well known reputation of the Complainant and its predecessors, with the purpose of attracting Internet users to the Respondent's website.
The Respondent, by defaulting in filing a response in the present proceedings, has not provided evidence of any circumstance which would convince the Panel otherwise.
Accordingly the second element has been met.
Paragraph 4(b) of the Policy enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Subparagraph (i) provides for the case where a respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the corresponding trade mark, or to a competitor of that complainant, for valuable consideration in excess of the respondent's out-of-pocket costs.
When approached by the Complainant and asked to cease using the Complainant's trade mark and to transfer the disputed domain name, the Respondent asserted that the disputed domain name was registered in good faith, but could be transferred to the Complainant for £1,500. This offer was reiterated in future correspondence.
The disputed domain name has only been registered for a short amount of time (less than a year), and accordingly registration fees would be minimal. There is no evidence that the website has been developed, or that any other costs have been expended in relation to it. Therefore, the request by the Respondent for £1,500 is, in the Panel's view, in excess of the Respondent's out-of-pocket costs of registering the disputed domain name.
This is evidence of bad faith.
In addition, Paragraph 4(b)(iv) refers to circumstances where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.
The Panel considers that such circumstances exist in this case, providing further evidence of bad faith.
The Panel finds it difficult to believe that the disputed domain name was registered in good faith, in light of the timing of registration. The disputed domain name was registered in close proximity to the announced merger of Itaú and Unibanco. It is not uncommon for cyber squatters to monitor the progress of potential mergers, and quickly register corresponding domain names in order to profit from them in the future. (See, for example, Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236 and the cases referred to in Schott Glas and Nec/Schott Components Corp. v. Necschott, WIPO Case No. D2001-0127).
In addition, “itaú” and “unibanco” are not common terms, and are likely to be in a language which is foreign to the Respondent. As such, the Panel finds it extremely unlikely that the Respondent would have chosen these terms to comprise its domain name in good faith, without any knowledge of the Complainant's rights in these terms. ITAÚ was also a registered trade mark in the United Kingdom (where the Respondent resides) and had been since 1996, well before the disputed domain name was registered.
By using the Complainant's marks in their entirety almost without modification, and using ITAU-UNIBANCO as a heading of that website, the Respondent has created a likelihood of confusion with the Complainant, and its trade marks and websites.
The Panel accepts that the Respondent was providing sponsored links from the disputed domain name, with an intention to receive commercial gain.
For the reasons set out above, the Panel finds that the third element of the Policy has been established, in that the Respondent registered and has used the disputed domain name in bad faith.
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, <itau-unibanco.com> be transferred to the Complainant.
John Swinson | |
Alvaro Loureiro Oliveira | Andrew D. S. Lothian |
Dated: August 14, 2009