WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unibanco Ė União de Bancos Brasileiros S.A. v. Vendo Domain Sale
Case No. D2000-0671
1. The Parties
Complainant is Unibanco Ė União de Bancos Brasileiros S.A., Avenida Eusebio Matoso 891, São Paolo, 05423-901, Brazil.
Respondent is Vendo Domain Sale, 18 Silverdale Ct.. St. Charles, Missouri, 63303, U.S.A.
2. The Domain Name and Registrar
The domain name at issue [hereinafter the Domain Name] is "unibanco.com".
The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.
3. Procedural History
On June 23, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated June 29, 2000. In a letter dated on the same date the Center informed the registrar, Network Solutions, Inc., that the Complaint had been submitted to the Center regarding the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 4, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated July 4, 2000 the Center informed the Respondent of the commencement of the proceedings as of July 4, 2000 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
On July 4, 2000 the Center received a reply from the Registrar confirming that the Domain Name was registered with the Registrar by the Respondent.
In a letter August 1, 2000 the Center informed the Respondent that he was in default pursuant to the Rules and Supplemental Rules and that an administrative panel would be appointed. The Panel is satisfied that it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On August 8, 2000 an e-mail was received by the Center in which the Respondent requested an extension to the delay in which he would be allowed to submit a response to the Complaint.
On August 9, 2000 an e-mail was received by the Center from the Complainant wherein the Complainant requested that the Respondentís request be denied and that the Panel issue a decision without the benefit of a response to the Complaint.
On August 10, 2000 the Respondent through his representative requested an extension until September 15, 2000. The Panel reviewed documentation provided by the Respondent and felt it would be equitable for both parties if the Respondent was allowed an extension to file a response. The Panel judged that 20 days from the date the Respondent first received notice would be equitable under the circumstances (see the discussion below under Procedural Issues). Therefore, the Panel extended the delay within which the Respondent could reply to the Complaint until August 23, 2000. On August 23, 2000 the center received an e-mail from the Respondent containing the Response.
On August 28, 2000 the Panel received, via the Center, a Reply to the Response [hereinafter the Reply] from the Complainant.
The Panel is obliged to issue a decision on or prior to September 1, 2000, in the English language and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Procedural Issues
The Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] does not provide a mechanism for determining whether or not a respondent should be allowed to file a response after the 20 day delay following notice has expired.
The Respondent provided some evidence that he had been out of the United States and returned only after the 20 day delay had expired in the form of an airline passenger itinerary. It is of note, however, that the itinerary corresponds to an airline ticket which does not provide any evidence as to whether or not Respondent was out of the United States since the date the Complaint was first served, only that the Respondent reentered the United States on August 3, 2000. However, the Panel has chosen to accept the Respondentís contention and, as an arbitration proceeding should not sacrifice equity and fairness for the sake of technicalities, has therefore decided that it would be fair and equitable under the circumstances to provide the Respondent with a further 20 days to file the Response from the day the Respondent claims that first had actual notice of the Complaint (i.e. the deadline to file the Response was extended until August 23, 2000).
In the same vein, the Panel has also chosen to include the Reply in its deliberations.
5. Factual Background
The Complainant is a legal person incorporated under the laws of Brazil. The Complainant was founded in 1924 and is engaged in businesses related to the banking sector.
UNIBANCO is a registered trademark of the Complainant in a number of countries including the United Kingdom, France, Brazil and Mexico and a number of other South and Central American and Caribbean countries. The Complainant has been offering a full range of financial services and products under the mark UNIBANCO for over 25 years. The Complainant has also been operating offices in the United States since the early 1980s.
The Complainant operates a number of web sites providing its corporate profile and offering a number of its banking services. Included among these is the Complainantís main site operating with the domain name "unibanco.com.br". These web sites prominently display the UNIBANCO mark. The Complainantís websites are all accessible via domain name addresses which have been derived from the UNIBANCO mark which they all contain as part of the domain name.
No information has been provided which indicates the nature of the activities of the Respondent. However, according to evidence submitted by the Respondent, the Respondent registered the name "Universal Banners Cooperative Ė UNIBANCO" with the Venezuelan authorities on January 1, 1998.
According to the Registrar the Domain Name was registered by the Respondent on or around November 2, 1998.
The Respondent when contacted by a representative of the Complainant offered to transfer the Domain Name for a sum in excess of $50,000 U.S.
6. Partiesí Contentions
At paragraph 14 to the Complaint, the Complainant maintains that approximately $US30 million is spent on various types of advertising over the last five years including print advertising in The Economist, Latin France and Fortune magazines. Additionally, at paragraph 15 to the Complaint the Complainant also alleges that the UNIBANCO mark has been the subject of extensive media coverage for at least the last five years. As a result, continues the Complainant at paragraph 16 to the Complaint, the UNIBANCO mark has come to be recognized as identifying the Complainant and its financial services.
At paragraph 18 to the Complainant the Complainant states that an inquiry made by e-mail into the possibility of purchasing the Domain Name the Respondent offered to sell it for $50,000 and claimed he had interested buyers in both Brazil and New York.
At paragraph 20 to the Complaint the Complainant maintains that the Respondent has not used and is not using the Domain Name in connection with a bona fide offering of services.
At paragraph 21 to the Complaint the Complainant summarizes and maintains that based on the above the Respondentís intention when registering the Domain Name was to capitalize on the value and goodwill of the UNIBANCO mark.
In the Response the Respondent maintains that he registered the Domain Name as part of his legitimate business activity for a company incorporated in Venezuela known as Universal Banners Cooperative Ė UNIBANCO.
The Respondent maintains that he did not register the name in bad faith as he had a legitimate business interest.
The Respondent continues by maintaining that he did not contact the Complainant and offer the Domain Name for sale but rather was contacted by a representative of the Complainant (who did not identify himself as such). The Respondent maintains that his offer to sell the Domain Name to the Complainant for $50,000 under the circumstances does not amount to an offer to sell in the context of the ICANN Policy.
The Respondent also maintains that his registration of the domain name mariaconchitas.com (not an object of this proceeding) does not show a pattern of cybersquatting but rather that if that had been the case he would have registered the domain name mariaconchitasalonso.com (which was free at the time) and in any case, Maria Conchitas is the name of a good friend of the Respondent.
7. Discussion and Findings
Pursuant to the ICANN Policy the Complainant must convince the Panel, on the balance of probabilities, of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the Complainant holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark UNIBANCO. Given that the Domain Name is for all intents and purposes identical to the registered trademark, the Panel is of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Legitimate Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in respect of the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate noncommercial or fair use of the domain name.
The Respondent maintains that he registered the Domain Name for use in conjunction with a legitimate business, Universal Banners Cooperative. The Respondent has provided evidence that he registered a company with the Venezuelan authorities with the name Universal Banners Cooperative Ė UNIBANCO prior to registering the Domain Name. However, the Respondent has failed to supply any evidence nor made any statement whatsoever regarding the area of business within which this company, Universal Banners Cooperative, is involved, nor the extent of their business.
While the Respondent has provided a number of affidavits from local businessmen attesting that the Respondentís business has been operating since at least November, 1998. However, again no mention is made as to the nature of the business nor as to the extent of the business of the Respondent or Universal Banners Cooperative.
The Panel is of the opinion that that it would have been simple for the Respondent, once confronted with the evidence of the complainant, to provide some indication and evidence of the areas and the extent of the business within which he is involved in, as this is a necessary element to meet the burden for establishing whether or not the business is bona fide (see this Panelís decision in the case of Pivotal Corporation v. Discovery Street Trading Co. Ltd., Case No. D2000-0648, for a discussion of the burden placed on a Respondent once confronted with an allegation of no legitimate right or interest). Therefore, the Panel concludes that the Respondent has failed to establish that the Domain Name was being used in connection with a bona fide offering of goods or services. The Panel is also of the opinion that the Respondent is not commonly known by the Domain Name nor that he has a legitimate noncommercial or fair use of the Domain Name.
Furthermore, the Panel finds that the argument to the effect that the Domain Name was registered for use in conjunction with Universal Banners Cooperative difficult to maintain given that the Domain Name was registered under the name VENDO DOMAIN SALE. It is also of note that the Respondent has not addressed this point in the Response.
Therefore, the Panel finds that that the Respondent has no legitimate rights or interests in that (i) Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the UNIBANCO mark; (ii) Complainant has prior rights in that trademark which precede Respondentís registration of the Domain Name; and (iii) the Respondent has not demonstrated to the Panelís satisfaction his rights or legitimate interests in the Domain Name. In this latter respect, it is noteworthy that the Respondent has made no use of the Domain Name. At this point in time it serves only as a terminating address for a place marker website.
Incidentally, the Respondentís argument to the effect that the domain name mariaconchitas.com was registered not to appropriate but rather as he had a good friend with this name, the Panel on one hand is unsure if this gives the Respondent a legitimate right or interest in the domain name and on the other hand is of the opinion that it would have been very simple for the Respondent to provide an affidavit from the friend to this effect. Therefore, the Panel has chosen not only to disregard the Respondentís statements regarding this domain name but is also of the opinion that such a simplistic denial lacks credibility.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy the Complainant is required to prove on the balance that the Respondent has registered and is using the Domain Name in bad faith.
The use of the name VENDO DOMAIN SALE as the name under which the Domain Name was registered provides some indication as to the Respondentís state of mind at the time of registration. Furthermore, the Panel has carried out some research propio motu which has revealed that the Respondent in his guise as VENDO DOMAIN SALE had registered at least 25 domain names that remain registered under this name at this time (it should be noted in this regard that the Panel is only aware of those domain names which remained registered under the name VENDO DOMAIN SALE at the time of research and points out that there may have been considerably more originally which have been transferred, abandoned or otherwise dealt with in the interim). Many of these domain names were registered around the time that the Domain Name was registered. Additionally, when contacted by the Complainantís representative the Respondent offered to transfer the registration to the Complainant on payment of a sum in excess of $50,000 (a sum substantially in excess of documented out-of-pocket costs directly related to the Domain Name) and that he had a number of other parties who where interested in the Domain Name. Although if taken separately none of the above might provide conclusive evidence to this effect, when taken together and on the balance the Panel is of the opinion that the Respondent is engaged in the business of registering domain names with the intent of selling them to the highest bidder.
Furthermore, the Panel is of the opinion that the evidence provided by the Complainant supports a finding that UNIBANCO is well known and associated with the Complainant, at least through out South America, and therefore the Panel is of the opinion that the Respondent as a Venezuelan national had notice of the Complainants trademark at the time of registration.
Therefore, the Panel is of the opinion that the terms of paragraph 4(b)(i) of the ICANN Policy have been filled, i.e. that the circumstances indicate that the Respondent registered the Domain Name primarily for the purpose of renting, selling or otherwise transferring the Domain Name registration to the Complainant or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name.
Furthermore, the Panel is of the opinion that the Domain Name is obviously connected with the Complainant and its products and therefore its very use by someone with no connection with the Complainant suggests opportunistic bad faith (again, see this Panelís decisions in see this Panelís decision in the case of Pivotal Corporation v. Discovery Street Trading Co. Ltd., Case No. D2000-0648).
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel requires that the registration of the domain name "unibanco.com" be transferred to the Complainant, and so directs Network Solutions, Inc., to do so forthwith.
Jacques A. Lťger, Q.C.
Dated: August 31, 2000