WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Espírito Santo S.A. v. Bancovic

Case No. D2004-0890

1. The Parties

The Complainant is Banco Espírito Santo S.A., Lisbon, Portugal, represented by Freshfields Bruckhaus Deringer, United States of America.

The Respondent is Bancovic, Alofi, Island of Niue, New Zealand, represented by himself.

2. The Domain Name and Registrar

The disputed domain name <bancoespiritosanto.com> is registered with Tucows Inc..

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on October 27, 2004, (electronic version) and on October 28, 2004, (hard copy). On October 29, 2004, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On October 29, 2004, Tucows Inc. transmitted by email to the Center its verification response and confirmed that it was the Registrar for the domain name at issue. Further, Tucows Inc. provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the domain name at issue. The Center verified that the Complaint satisfied the formal requirements of the Policy, 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”). The Complainant made the required payment to the Center.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2004. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 21, 2004. The Response was filed with the Center on November 21, 2004, (electronic version) and on December 2, 2004, (hard copy).

The Center appointed Markus S. Bonair as the sole panelist in this matter on December 2, 2004. 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 paragraph 7 of the Rules.

The language of the proceeding is English.

4. Factual Background

The Complainant is a financial services company incorporated in Portugal and founded in 1884. The Complainant has more than 600 branches in Portugal and is represented, either through branches, subsidiaries or representative offices, in 17 countries worldwide, inter alia, in Switzerland, France and USA. The Complainant’s holding company is listed on the stock exchange in Luxembourg, London and New York.

The Complainant owns a number of trademark registrations consisting of or incorporating the mark BANCO ESPÍRITO SANTO, inter alia;

Portuguese Trademark Registration No. 355.431 BANCO ESPÍRITO SANTO & Device in Classes 35, 36 and 38, registration date January 31, 2001.

Spanish Trademark Registration No. 1752423 BANCO ESPÍRITO SANTO in Class 36, registration date March 25, 1993.

Hong Kong SAR of China Trademark Registration No. 5038/94 BANCO ESPÍRITO SANTO in Class 36, registration date August 24, 1994.

International Trademark Registration No. 593.586 BANCO ESPÍRITO SANTO in Class 36, registration date August 7, 1992.

Community Trademark Registration No. 3181781 BANCO ESPIRITO SANTO & Device in Classes 9, 35 and 36, registration date October 22, 2004.

Singapore Trademark Registration No. 6899/92 BANCO ESPÍRITO SANTO in Class 36, registration date November 22, 1996.

Japanese Trademark Registration No. 3208310 BANCO ESPÍRITO SANTO in Class 36, registration date October 31, 1996.

Canadian Trademark Registration No. 491611 BANCO ESPÍRITO SANTO in Class 36, registration date March 19, 1998.

South African Trademark Registration No. 9508972 BANCO ESPÍRITO SANTO in Class 36, registration date September 4, 1998.

The Respondent’s personal name is Juan Bancovic Espirito Santo.

The domain name at issue was registered on August 27, 2003, according to a printout of the WHOIS database.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that, in addition to using the BANCO ESPIRITO SANTO trademark as part of its corporate name, it has registered the BANCO ESPIRITO SANTO trademark in various countries around the world. The earliest BANCO ESPIRITO SANTO trademark was applied for in Spain on May 3, 1989. The Complainant and its associated companies have invested substantial sums of money in developing and marketing their financial services under the BANCO ESPIRITO SANTO trademark and there is considerable goodwill in the trademark in respect of its banking and other services.

The Complainant’s rights in the BANCO ESPIRITO SANTO trademark predate the Respondent’s registration of the domain name at issue. The Respondent registered the disputed domain name on August 27, 2003.

The disputed domain name is identical to the Complainant’s trademark BANCO ESPIRITO SANTO.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no right or legitimate interest in respect of the domain name at issue. There is no relationship between the Respondent and the Complainant. The Complainant and its associated companies have not licensed or otherwise permitted the Respondent to use its name or the BANCO ESPIRITO SANTO trademark or register a domain name incorporating its name or trademark.

Neither has the Respondent made any legitimate non-commercial or fair use of the domain name at issue. On the website connected with the domain name at issue, the Respondent has indicated that his full name is “Juan Bancovic Espirito Santo”, and “Banco” among his friends. The Complainant submits that the Respondent’s true motives, as set out below, was that he saw the commercial benefit of using the famous mark BANCO ESPIRITO SANTO to drive traffic to this website for commercial gain.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered the domain name at issue in bad faith.

As of October 27, 2004, the domain name at issue was being used for a website advertising the services of call girls, quoting prices, and depicting nude and pornographic pictures of girls.

Given the extent of the Complainant’s promotion and advertising of the BANCO ESPIRITO SANTO trademark, it cannot reasonably be argued that a person registering the domain name at issue could have been unaware of the Complainant’s use of and trademark rights vested in BANCO ESPIRITO SANTO.

It is submitted that the primary purpose for which the Respondent has registered and used the domain name at issue is to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s BANCO ESPIRITO SANTO trademark as to the source, sponsorship, affiliation or endorsement of the Site or of a product or Service on the Site.

It is submitted that the Respondent has been taking free advantage of the goodwill and reputation of the Complainant’s trademark as part of a financially-driven attempt to draw Internet users to his website. As a result, the Complainant’s trademark BANCO ESPIRITO SANTO is being diluted and tarnished, and the goodwill that the Complainant has established to date is being damaged.

B. Respondent

Identical or Confusingly Similar

The Respondent states that the Complainant is not a worldwide well known company since it only has legal rights over the mark BANCO ESPIRITO SANTO in 17 countries, i.e. in less than 10 percent of all the countries in the world.

Further, the Respondent contends that the Complainant’s websites and/or domain names are not similar to the Respondent’s domain name.

Rights or Legitimate Interests

The Respondent contends that he has equal rights to the domain name at issue, compared with the Complainant, since the domain name <bancoespiritosanto.com> corresponds to his personal name.

Further, the Complainant, being not a famous or even worldwide placed company, has only registered its name and/or trademark in 17 countries, none of them being the country where the Respondent lives, the Island of Niue, nor the country where the Respondent was born, Uruguay, or where the Respondent’s passport is from, the Czech Republic. Accordingly, the Complainant can not claim any kind of rights over its name and/or trademarks.

The Respondent further contends that the Respondent’s website has, since it was created, always been one of the top ten most viewed Niue based websites. The reason for this is that it was originally a photography database and live cam site, intended to be an open door from Niue to the world through the Internet. In October, the Respondent decided to create a new call girl business service at the Island of Niue, and decided to use his fame as a Island of Niue resident, and the Internet traffic over his website, to promote the business. In the Island of Niue, call girl services are legally allowed.

The Respondent contends that he has been using the domain name at issue in a fair way more than a year before the Complainant filed its Complaint.

The services the Respondent promotes in its site are not diverting consumers from Complainant’s company business.

The Complainant does not prove that it has worldwide rights or legitimate interests in respect of the domain name at issue.

Registered and Used in Bad Faith

The Respondent refers to the Complaint and states that the Complainant currently advertises its activities on the websites “www.bes.pt”, “www.esfg.com” and “www.bic.com”. None of these domain names are similar to the Respondent’s domain name <bancoespiritosanto.com> and it can not reasonably be argued that a person registering the domain name at issue would be aware of Complainant’s use of the trademark BANCO ESPIRITO SANTO or trademark rights since the Complainant does not use its trademark in domain names.

The Respondent further states that he searched, after receiving the Complaint, WIPO’s website and found that Portuguese trademarks are not publicly visible.

The Respondent states that a simple search on the Internet results in only a few hits for the word “Bancoespiritosanto”, and none of these hits are connected with the Complainant’s company name or Complainant’s trademark. Accordingly, the Complainant can not assert that the Respondent’s website, “www.bancoespiritosanto.com”, has as a primary purpose to attract visitors, since the Complainant’s name is not known over the world or even on the Internet. Further, the Complainant does not even use its company name as a domain name.

The Respondent never tried to sell or rent the domain name at issue to the Complainant or to anybody else, or tried to contact or was contacted by the Complainant or anybody else regarding any issue in relation to the domain name at issue.

The Respondent’s location, the Island of Niue, is so distant from the Complainant’s country that it is not likely that the domain name at issue was registered and is being used in bad faith. Further, the Respondent and the Complainant are not even commercial competitors.

The Complainant does not prove that the domain name at issue was registered and is being used in bad faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

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

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Respondent contends that the Complainant’s websites and/or domain names are not similar to the Respondent’s domain name. However, this is not relevant in this proceeding due to the fact that the Panel shall determine whether or not the domain name at issue is identical or confusingly similar to the Complainant’s trademark and/or service mark according to paragraph 4(a)(i) of the Policy.

The Complainant contends that the domain name <bancoespiritosanto.com> is identical to the trademark and service mark BANCO ESPIRITO SANTO.

The Complainant has shown that it owns numerous trademark registrations for the mark BANCO ESPIRITO SANTO. The domain name at issue consists of the mark BANCO ESPIRITO SANTO and the gTLD “.com”. The gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark. Accordingly, the Panel finds that the domain name at issue is identical to the trademark and service mark BANCO ESPIRITO SANTO in which the Complainant has rights. The Complainant has thereby satisfied its burden on the first factor.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is 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 Complainant contends that there is no relationship between the Respondent and the Complainant. The Complainant and its associated companies have not licensed or otherwise permitted the Respondent to use the BANCO ESPIRITO SANTO trademark and service mark or register a domain name incorporating its name or trademark and service mark.

Further, the Complainant states that the Respondent has indicated on the website “www.bancoespiritosanto.com“ that his full name is “Juan Bancovic Espirito Santo”, and “Banco” among his friends. However, the Complainant contends that the Respondent’s true motives was that he saw the commercial benefit of using the famous mark BANCO ESPIRITO SANTO to drive traffic to his website for commercial gain.

A number of UDRP cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. In this case, the Panel deems that the Complainant has established a prima facie case that none of the three circumstances under paragraph 4(c) of the Policy applies and the burden of proof therefore shifts to the Respondent, who has to show that he has rights or legitimate interests in the domain name at issue.

The Respondent contends that he has rights and legitimate interests in the domain name at issue since the domain name <bancoespiritosanto.com> corresponds to his personal name. In this respect, the Respondent has filed a copy of an extract from his passport, where it is stated that his personal name is “Juan Bancovic Espirito Santo”, as evidence.

Paragraph 15(a) of the Rules stipulates that the Panel shall decide a Complaint on the basis of the statements and documents submitted. In this case, the Respondent has filed a copy of an extract from his passport, where it is stated that his personal name is “Juan Bancovic Espirito Santo”, to support that he has rights or legitimate interests in the domain name <bancoespiritosanto.com>. However, the Panel notes that the domain name at issue does not incorporate the Respondent’s surname “Bancovic Espirito Santo” as a whole. The Respondent has not contended nor proved that his personal name is “Banco Espirito Santo”, which is the name that corresponds to the domain name at issue. The Panel does not find that the Respondent’s personal name gives him rights or legitimate interests in the domain name at issue.

Further, the Respondent contends that he has used the domain name at issue in a fair way more than a year before the Complaint was filed. The domain name at issue was originally connected to a website with a photography database and live cam. The Respondent states that his website has always been one of the top ten most viewed Island of Niue based websites. Further, the Respondent contends that, in October, he launched a call girl service and decided to use his fame as a resident at the Island of Niue and the Internet traffic to his website to promote the call girl service. The Respondent has not filed any evidence to support his contentions.

If Respondent proves that he has “been commonly known by the domain name”, the Panel shall find that the Respondent has a legitimate interest according to paragraph 4(c)(ii) of the Policy.

Since a “legitimate interest” is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has “been commonly known” by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname “Red Bull” since childhood because Respondent did not provide any evidence to support contention. See also, e.g., DIMC, Inc. & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.

In this case, the Respondent has stated that his website has always been one of the top ten most viewed Island of Niue based websites and that he decided to use his fame as a resident at the Island of Niue to promote his business. However, the Respondent has not submitted any evidence to support that he is commonly known by the domain name at issue. The mere assertion of the Respondent, without any evidence, is not sufficient to counter the Complainant’s submissions. Accordingly, the Panel finds that the Respondent has failed to show that he is commonly known by the domain name at issue.

The next question is whether or not the Respondent, before any notice of the dispute, has used the domain name at issue in connection with a bona fide offering of goods or services and thereby has a legitimate interest in the domain name. The record shows that Respondent is offering call girl services at the website “www.bancoespiritosanto.com”. However, the mere use of a domain name in connection with the sale of goods or services prior to notice of the Complainant’s objections is not sufficient, since not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that it obviously contrary to the intent of the Policy”, see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

The Respondent’s contention that he registered the domain name as being his personal name is not quite persuasive since his whole surname, “Bancovic Espirito Santo”, does not correspond to the domain name at issue. The Respondent has not submitted any evidence to support that he is known by nickname “Banco”. The Complainant has filed a copy of a printout from the Respondent’s website where it is stated that the Respondent is called “Banco” among friends. However, the Respondent has not contended or provided evidence to support that he selected the domain name based on a nickname and parts of his surname.

The evidence before the Panel is not sufficient to support a conclusion that Respondent adopted and used the domain name <bancoespiritosanto.com> in good faith based on a nickname and part of his surname “Bancovic Espirito Santo”.

Further, in addition to the call girl services, the Respondent’s website contains different click-through advertising, in some cases linked to companies that compete with the Complainant’s services, e.g. “1Loans USA” and a search service provided by “Bravenet.com” which is related to financial services. Further, the Respondent’s website contains click-through advertising which links an Internet user to a website with the heading “100 Best Credit Card Merchant Accounts”. This indicates that the Respondent generates click-through advertising revenue for himself by means of Internet traffic, with much of the traffic consisting of users who would reasonably have the expectation of finding a website maintained by the Complainant.

The Panel concludes that the Respondent’s use, which trades on the mark of another, can not constitute a bona fide offering of goods or services or a legitimate fair use.

The Respondent has not filed sufficient evidence in order to show that he has rights or legitimate interests in the domain name at issue.

Based on the record before the Panel, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent contends that he registered the domain name at issue since it corresponds to his personal name. However, as discussed above, this contention is not persuasive since the domain name at issue does not correspond to the Respondent’s surname, “Bancovic Espirito Santo”, as a whole. The Respondent has not explained in his Response why he selected to register the domain name <bancoespiritosanto.com> instead of <bancovicespiritosanto.com> which corresponds to his surname.

The Complainant has shown that it owns numerous trademark registrations for the widely known mark BANCO ESPIRITO SANTO in several different countries and is represented in 17 countries worldwide.

The Respondent has not filed sufficient evidence in order to rebut the Complainant’s contentions that the Respondent did not unintentionally select the word “Banco” and parts of his surname “Bancovic Espirito Santo” when selecting the domain name at issue. The evidence before the Panel suggests that the Respondent was aware of the Complainant’s trademark and service mark BANCO ESPIRITO SANTO when registering the domain name at issue. The knowledge of the Complainant’s mark at the time of registration of the domain name suggests bad faith. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

In addition to the call girl services, the Respondent’s website contains different click-through advertising, in some cases to companies that compete with the Complainant’s services, e.g. “1Loans USA”, a search service provided by “Bravenet.com” which is related to financial services and a website with the heading “100 Best Credit Card Merchant Accounts”. This indicates that the Respondent generates click-through advertising revenue for himself by means of Internet traffic, with much of the traffic consisting of users who would reasonably have the expectation of finding a website maintained by the Complainant.

The Panel deems that the Respondent increases the number of “hits” to his website by using the Complainant’s mark as a domain name. That increases the commercial value of the Respondent’s website, but at the expense of misuse by the Respondent of the name in which the Complainants hold rights.

For the above reasons, the Panel finds that the domain name at issue has been registered and is being used in bad faith.

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, <bancoespiritosanto.com> be transferred to the Complainant.

Markus S. Bonair
Sole Panelist

Dated: December 16, 2004