WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco do Brasil S.A. v. Sync Technology
Case No. D2000-0727
1. The Parties
The Complainant is Banco do Brasil, S.A., a company based in Brasilia, Brazil (the "Complainant"), represented in this proceeding by Mr. Luis Fernando Matos, Jr., Esq. and Mr. Luis Fernando Matos, Esq., of Matos & Asociados, Rio de Janeiro, Brazil.
The Respondent is Sync Technology, an entity of an unknown nature, with address at ShinAn A 418-203, Changwoo dong, Hanam, KyungKi-do 465-120, Republic of Korea (the "Respondent").
2. Domain Name and Registrar
The domain name at issue is <bancodobrasil.com> registered with Network Solutions Inc., of Herndon, VA 20170, USA.
3. Procedural History
On July 3, 2000 a Complaint in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") was submitted by e-mail to the WIPO Arbitration and Mediation Center (the "Center"). On July 7, 2000 the Complaint was received in hardcopy.
On July 9, 2000 the Center sent an Acknowledgement of Complaint to the Parties. The communication was made to the Respondent by courier.
At the Centerīs request for verification, on July 14, 2000 NSI informed the Center inter alia that the Respondent is the current registrant, as well as administrative, technical, zone, and billing contact of the domain name at issue.
On July 19, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by courier at its address quoted above, and by facsimile at 82-347-7953-141. The reception thereof is recorded. Facsimile transmission and reception is recorded. Emails were transmitted to email@example.com, and firstname.lastname@example.org (complaint without attachments). The Center established August 7, 2000 as deadline for the submission of a Response to the WIPO Center and the Complainant.
As the Respondent failed to submit a Response, on August 17, 2000 the Center sent to the Respondent a Notification of Respondent Default by facsimile. Its transmission was successful according with the WIPO fax machine. The notification was also transmitted by email to the above referred email-addresses.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
After having received Roberto A. Bianchiīs Statement of Acceptance and Declaration of Impartiality and Independence, on August 22, 2000 the Center appointed him as a Sole Panelist. The scheduled decision date was September 4, 2000. Thus, the Administrative Panel finds that it has been properly constituted.
The Panel sharing the assessment of the Center of July 19, 2000, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at reasonably trying to notify the Complaint to the Respondent pursuant to Rules, Paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no other submissions of the Parties, nor were extensions granted or orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant and the Registrar. The Complainant has submitted its Complaint in English. Seeing the Panel no special circumstances to determine otherwise, as provided in Rules, Paragraph 11, the language of this proceeding is English.
4. Factual Background
Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainantīs allegations and documents enclosed with the Complaint have not been contested by the Respondent, the Panel finds following facts as having been sufficiently established:
The Complainant is a company founded in 1808, responsible with 2,820 branches in Brazil and 34 other branches in different countries of the world. It owns the registered mark "BANCO DO BRASIL" to identify services related to banking, credit evaluation, capital investments, financial consultancy, financial services, saving banks, financial affairs and monetary affairs businesses.
In particular Complainant owns the Brazilian BANCO DO BRASIL trademark registration No. 816 669 350, class 36, filed on April 23, 1992 and registered on November 16, 1993 for banking and financial affairs. It also owns the US trademark registration No. 2250738 filed on November 12, 1996 and registered on June 8, 1999. Complainant also has evidenced trademark registrations for the BANCO DO BRASIL mark in Argentina, Uruguay, Chile, Portugal, Spain and France. Complainant has continuously and extensively advertised and promoted its mark for many years in Brazil and other countries. Complainant also uses its BANCO DE BRASIL mark on its website <bancodobrasil.com.br>.
According with the WHOIS domain name records, the record of the domain name registration was created on December 31, 1997. The Respondent is the current registrant.
The applicable registration agreement (service agreement) between the Registrar and the registrant is version 5.0, which is in effect at the moment of the issuance of the present decision. The change of the former dispute resolution policy to the present policy was consented by the registrant-Respondent. Such a consent is inferred because the Respondent has not requested the cancellation of the domain name registration after the policys change by the registrar (the domain name is "active"). Thus, the policy now in effect is the existing ICANNīs Policy, under which these proceedings have been installed, with effect for the registrar NSI and the Respondent since January 1, 2000. By its default the Respondent has not contested the Panelīs jurisdiction.
5. Parties Contentions
A. The Complainant contends:
Complainant is the owner of the registered mark BANCO DO BRASIL ("the BB mark"), which has been used by Complainant in many different countries, to identify services related to banking, credit evaluation, capital investments, financial consultancy, financial services, saving banks, financial affairs and monetary affairs businesses. Respondent has registered the domain name <bancodobrasil.com> for the purpose of selling or renting it to Complainant or to third parties, and is not using the domain name for any legitimate purposes. The <bancodobrasil.com> domain name is identical, and therefore confusingly similar, to Complainants respective BANCO DO BRASIL mark. In addition, Respondent has no rights or legitimate interests in the <bancodobrasil.com> domain name, and Respondent has registered the <bancodobrasil.com> domain name in bad faith. By registering the domain name, Respondent is diverting consumers from the official site of Complainant, and making it difficult for Complainantīs customers and the general public to locate Complainantīs official website, thereby disrupting Complainantīs business. Respondents conduct is in violation of the ICANN Policy. Complainant requests that the <bancodobrasil.com> domain name be transferred to Complainant.
B. The Respondent has not submitted a response, is therefore in default and, after the Notification of Respondent Default, has not made any submissions whatsoever.
6. Discussion and Findings
6.1 Effects of Respondent Default
The specific allegations and contentions of the Complainant against the domain name registration bound the Respondent to respond specifically. According with Rules, Paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)". The Panel further notes that the Notification of Default by the Center clearly advised the Respondent about the consequences of its failing to submit a response. See 3 above.In case of a default, under Rules, Paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under Rules, Paragraph 14(b), the Panel "shall draw such inferences therefrom as it considers appropriate".Thus, the Respondents default would indicate that the Complainantīs assertions would be a ground for the Panel to proceed to a default decision in its favor. However the Policy does not allow to automatically extract such a consequence, because "the complainant must prove that each of these three elements are present". Policy, Paragraph 4(a), in fine. Panelīs emphasis.
6.2 Independent Connection with the Respondents Web Site
Among its powers under Rules, Paragraph 10(a), the Panel is allowed to independently visit the Internet in order to obtain additional light in this default proceeding.
On August 22, 2000 and September 1, 2000 the Panel tried to visit the www.bancodobrasil.com web site of the Respondent. On both occasions the connection resulted in an error message with a text stating that the Internet site cannot be accessed. A connection with the server could not be established. This means that the site is inactive for all practical purposes.
6.3 Identity or Confusing Similarity
Beyond any doubt the Complainant has rights on the mark BANCO DO BRASIL. The Panel finds that the domain name <bancodobrasil.com> is identical or, having in mind the addition of ".com", at least confusing similar to the Complainantīs mark.
6.4 Rights or Legitimate Interests
By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainantīs mark BANCO DO BRASIL.
Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name, as provided for in Policy, Paragraph 4(c). See 6.2. above. No other circumstance has been evidenced by Respondent that could reasonably support an inference in its favor.
The Panel thus finds that the Respondent has no rights or legitimate interests to the domain name at issue.
6.5 Registration in Bad Faith
By its default, Respondent has not responded to the very specific allegation of the Complainant that the Respondent registered the domain name primarily for the purpose of selling or renting the domain name to the Complainant for a consideration well in excess of documented out-of-pocket costs directly related to the domain name. That would be, if evidenced, a circumstance of bad faith registration under Policy, Paragraph 4(b)(i). However, there is no evidence on the record that reasonably proves such circumstance, apart from the nude assertion of the Complainant. In fact there is no evidence that the Respondent ever requested generally or specifically any amount of money for the transfer of the domain name.
On the other hand, Respondent has failed to establish any use whatsoever of the domain name; every effort to connect to its website results in a DNS error. See 6.2. above.
Absent any statement by the Respondent, due to its default, about its real purpose at registering the domain name, the Panel is authorized to draw any reasonable inference about that purpose from any available circumstance or fact.
Any effective use of the website by the Respondent would have been a useful element for a Panel to deduct which has really been the purpose of the registration.
In the instant case the Respondent has not any real Internet presence, which allows the Panel to conclude that the registration has most likely been made with the purpose to prevent the Complainant to reflect its mark in a corresponding domain name, in order to force the Complainant into transfer-for-price negotiations. That situation includes factors present in Policy, Paragraphs 4(b)(ii), 4(b)(iii) and 4(b)(iv), even if the Respondentīs conduct does not exactly fit precisely within anyone of such examples of bad faith. Prevention of reflecting the mark of the Complainant in a domain name is present, even if there is no evidence that Respondent has engaged in a "pattern of such conduct". Disruption of the business of the Complainant is also most likely present, even if it has not been alleged that Respondent is a "competitor" of Complainant. An intentional attempt to attraction of Internet users is most likely present. Together, these isolated elements of three (out of the four) Policyīs non-exhaustive examples indicate bad faith registration.
Absent "miraculous coincidences", the registration of a domain name identical or confusingly similar to the mark, trade-name and corporate name of a famous Brazilian financial institution by a registrant that has no rights or legitimate interests in the domain name, and who prefers not to submit any allegation in this proceedings, points at bad faith registration under Policy, Paragraph 4(a)(ii), and generally under Policy, Paragraph 4(b).
The Panel finds therefore that the domain name at issue has been registered in bad faith.
6.6. Use in Bad Faith
After the decision in WIPO Case D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows by the distinguished panelist Mr. Andrew F. Christie, (February 18, 2000), many WIPO panels have extensively used his reasoning to establish bad faith use when there is no positive action of the Respondent in relation to the domain name. In Telstra Mr. Christie said:
"7.8 Has the Complainant proved the additional requirement that the domain name "is being used in bad faith" by the Respondent? The domain name <telstra.org> does not resolve to a web site or other on-line presence. There is no evidence that a web site or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. Finally, there is no evidence that the Respondent has offered to sell, rent or otherwise transfer the domain name to the Complainant, a competitor of the Complainant, or any other person. In short, there is no positive action being undertaken by the Respondent in relation to the domain name."
"7.9 This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
In Telstra the Panel considered a number of circumstances that jointly led to a finding that there had been bad faith use. Similarly, in the instant case this Panel considers as relevant:
(a) That in registering the domain name Respondent slavishly copied the Complainantīs mark.
(b) That apart from the registration of its mark, Complainant has a reasonable claim that BANCO DO BRASIL is internationally known as corresponding to a financial institution.
(c) That Respondent was bound to this proceeding and renounced to present the Panel with any submission, documents, or communication whatsoever.
(d) That the effect of a subsisting registration of the domain name by the Respondent equals to deprive Complainant from legitimately reflecting its mark in the domain name at issue.
(e) That the inactivity of the website under the domain name at issue causes the public to believe inter alia that Complainant has not a website, and that Complainant is not technically able to maintain such a website.
The Panel considers such circumstances as revealing a bad faith use of the domain name at issue, and finds that Complainant has thus made out its case under Policy, Paragraph 4(a)(iii), that the domain name at issue is being used in bad faith.
For all the above reasons the Panel has found that the domain name <bancodobrasil.com> is identical, or at least confusingly similar, to the marks of the Complainant, that the Respondent has no rights or legitimate interests to the domain name, and that the domain name has been registered and is being used in bad faith.
Therefore, pursuant to Policy, Paragraph 4 (i), and Rules, Paragraph 15, the Panel requires that the domain name registration <bancodobrasil.com> be transferred to the Complainant, Banco do Brasil, S.A.
Roberto A. Bianchi
September 1, 2000