WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco de Chile S.A. v. Adolfo Oviedo
Case No. D2001-0693
1. The Parties
The Complainant is Banco de Chile S.A., a banking company incorporated under the laws of the Republic of Chile, with its registered address and principal place of business at Ahumada 251, Santiago, Chile, represented in this administrative proceeding by Mr. Marino Porzio, Esq., of PORZIO, RIOS & ASSOCIATES, Santiago, Chile.
The Respondent is Mr. Adolfo Oviedo, with an address at A 535-2070, San José, SJ 2070, Costa Rica.
2. The Domain Name and Registrar
This dispute concerns the domain name <bancodechile.com>, registered with Network Solutions, Inc. (NSI), of Herndon, Virginia, U.S.A.
3. Procedural History
On May 23, 2001, a complaint concerning the domain name registration was electronically submitted to the WIPO Center. On May 29, 2001, the complaint was submitted in hardcopy. On May 28, 2001, the Center acknowledged receipt of the complaint’s electronic version.
On May 28, 2001, the Center requested verification of the registration data to the concerned registrar. On June 1, 2001, NSI replied to this request by informing that the domain name at issue was registered with it, that the registrant, administrative, technical and billing contact is Adolfo Oviedo, with an address at A. 535-2070, San José, SJ 2070, Costa Rica, that Network Solutions´5 Service Agreement is in effect, and that the domain name is currently "active".
On June 11, 2001, the Center reviewed the Complaint to verify whether it satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules, and sent its Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent. The last day for sending the Response to the Complainant and to the Center was June 30, 2001. In this communication the Center fully informed the Respondent about the consequences of a default. According to the tracking results of the FedEx courier company, the package containing the Center’s communication was delivered to Respondent on June 14, 2001. The notification of complaint and commencement of the administrative proceeding was also successfully transmitted via e-mail to Respondent on June 11, 2001. Having noticed that by the expiration of the deadline Respondent had not sent a response, on July 2, 2001, the Center sent by e-mail its Notification of Respondent Default to the Respondent . The Panel finds that the Center has discharged its responsibilities pursuant to Rules, Paragraph 2(a), in that it made all reasonable efforts to notify the complaint to the Respondent.
On July 3, 2001 an e-mail from Respondent was received by the Center.
On July 6, 2001, after having received Roberto A. Bianchi’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as sole panelist in this present Case No. D2001-0693. The deadline for the Panel to render a decision was July 19, 2001. The Panel independently finds that it has been properly constituted, that the complaint complied with all formal requirements, and that the fees have been paid.
On July 6, 2001, the electronic version of the case file was transmitted by the Center to the panelist.
On July 8, 2001, the Respondent Mr. Oviedo sent an e-mail to the Center, with copy to the Complainant. The Complainant forwarded the e-mail on to the Center.
There were no orders issued. There were no extensions.
The complaint has been submitted in English. The registration agreement is in English. The mutual jurisdiction, as selected by Complainant under Rules, Paragraph 3(b)(xiii), is the jurisdiction of the courts where the principal office of the concerned registrar is located, that is at Herndon, Virginia, U.S.A., an English-speaking country. This proceeding shall therefore continue in English (Rules, Paragraph 11).
4. Factual Background
The following uncontested facts are found by the Panel to be established as true:
BANCO DE CHILE is the main or largest bank in Chile with a total capital of approximately US$ 500 million.
Banco de Chile has its headquarters in Santiago, the capital city of Chile. It has 176 offices both in Santiago (61 offices) and in practically every city in Chile (115 offices). It has two subsidiaries in the United States, in New York and Miami, and agencies in Buenos Aires (Argentina), Mexico City (Mexico), Sao Paulo (Brazil) and Frankfurt (Germany). The name "Banco de Chile" appears in the documents of incorporation legally concluded on October 28, 1893. The Bank is the result of the merger of three banking institutions, namely, the Banco de Valparaiso (established in 1855), the Banco Nacional de Chile (established in 1865) and the Banco Agrícola (established in 1869). Banco de Chile can exhibit a public activity of almost 150 years. "Banco de Chile" or "Banco Chile", as it is also commonly called, is the trade name for over a century.
The Complainant has applied for and registered "Banco de Chile" as trademark and service mark in various classes, in Chile and in seven other countries.
The main Chilean marks on which the Complaint is based are: BANCO DE CHILE, applied for under Nr. 172.894, granted under Nr. 371.672 for ten years since
July 22, 1991 (renewal of registration Nr. 237.779), class 36 (covering "banking institution"). There are also other BANCO DE CHILE service mark registrations granted in Chile for classes 35, 16, all of them in effect. Furthermore Complainant holds service mark registrations of BANCO DE CHILE – FONOAGIL and BANCO DE CHILE – FONOSERVICIO, in classes 35, 36, 38, etc.
Complainant is the proprietor of 141 trademark or service mark registrations consisting of or containing the words "Banco de Chile". Moreover, the trademark "BANCO DE CHILE" is registered in Argentina, Brazil, Mexico, Peru, Panama, Venezuela and Italy.
The Complainant has also registered and is using the following domain names: <bancodechile.net>, <bancodechile.org>, <bancochile.org>, <bancochile.cc>, <bancochile.cl>, <bancochile-corporativa.cl>, <bancochile-credichile.cl>, <bancochile-empresas.cl>,<bancochile-inversiones.cl>, <bancochile-personas.cl>, <bancochileinversiones.cl>, <bancochilewap.cl>, <cclbancochile.cl>, <cicebancochile.cl>, <inversionesbancochile.cl>, <sirbancochile.cl>, <wapbancochile.cl>, <bancodechile.cl>, <bancodechilewap.cl>, <inversiones-bancodechile.cl>, <wapbancodechile.cl> and <banchilefactoring.cl>.
As sufficiently evidenced by Complainant, the Panel accepts that Banco de Chile is an extremely well known and highly reputed institution. "Banco de Chile" can be considered as a well-known trademark, at least in Chile.
Respondent registered the domain name <bancodechile.com> with NSI on March 23, 1999.
As provided by incorporation in NSI´s service agreement in effect (version 5.0), the applicable dispute resolution policy is the ICANN UDRP, which establishes this Panel’s jurisdiction in the instant case.
5. Parties’ Contentions
Complainant contends, inter alia, the following:
- The domain name <bancodechile.com> is identical or confusingly similar to the Complainant's trademarks Banco de Chile. It is also identical or confusingly similar to the Complainant's legal name and trading name Banco de Chile, which the Complainant has been using since 1893.
- The fact that the disputed domain name is identical to Complainant's trading name amounts to an erosion of the exclusive goodwill inherent to that trading name which is certainly to damage it.
- Respondent has no rights or legitimate interest in the domain name. The Respondent is an individual called Adolfo Oviedo. Mr. Oviedo does not operate any business or have any interest in any company using the name "Banco de Chile", specifically any business offering banking, financial or investment services.
- "The Respondent has no rights on the domain name, nor interest to this domain name as it does not correspond to its corporate name and that the Respondent does not own a corresponding trademark, at least to the knowledge of the Complainant" (Crédit Lyonnais v. Association Être Ensemble, Case D2000-1426). "The Respondent is not a licensee of the Complainant or in any other way authorized to use the Complainant's trademarks. Mere registration does not establish rights or legitimate interests in the disputed domain name" (Pharmacia & Upjohn Company v. Moreonline, Case D2000-0134, page 5) "The name does not reflect a name by which the Respondent is commonly known" (Banco General, S.A. v. Webmaster Ams/Uk Billing (Domain for Sale), National Arbitration Forum, Claim No. FA000600009493
- The existence of registered trademarks consisting of or containing the expressions "Banco de Chile", which as it has been discussed earlier in addition have the character of "well-known" trademarks, makes it illegal for anybody else using them. In fact, according to the Chilean Law on Industrial Property (No. 19.039 of 1991), the unauthorized use of a registered trademark constitutes a crime. According to the Chilean Law on banking activities (D.F.L. No. 3 of December 19, 1997), it is illegal to engage in banking activities without the prior authorization of the National Superintendence of Banks and Financial Institutions. Such permission can be obtained after prove of fulfilment of a number of complex requirements. Without such authorization nobody can use in any manner whatsoever the expression "Bank" for identification of activities. Infringement of these rules amounts to a crime which is liable to be sanctioned with jail penalties.
- In the registration and use of domain name bancodechile.com at least two circumstances of Paragraph 4, b) are present, namely those of subparagraphs ii) and iv).
- Paragraph 4, b) ii). The existence of domain name bancodechile.com in the name of Respondent made impossible to Complainant to register its own trading name and well-known trademark as a ".com" domain name, in addition to the national registrations ".cl" Complainant already owns. This situation is causing Complainant an important limitation in its legitimate access to Internet and a clear damage in its communication possibilities in this context.
- Paragraph 4, b) iv). The existence of domain name <bancodechile.com> in the name of Respondent clearly attracts clients or potential clients of the Chilean Bank, Banco de Chile to a wrong web site "...by creating a likelihood of confusion with the complainant's mark..." and in this case also to the Complainant's trading name. In fact, it is only natural that anybody willing to get in touch with the Chilean Bank via Internet may first attempt to try to use the presumed natural web site of Banco de Chile and will thus be directed to the Respondent's web site.
- The registration of a well-known trademark as a domain name equivalent to that trademark does constitute bad faith. (Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, Case D2000-0018). The same has been found in connection with a trading name registered as a domain name (Banca March, S.A. v. Digigrup.com, Case D2000-1341).
- It has also been found that the existence of an identical domain name to the Complainant’s trademark constitutes a block, prevents and makes impossible Complainant’s access to Internet in the category of ".com". In addition it leads Internet users, including Complainant's actual or potential clients to think that Complainant does not have a web site or it is not technically able to keep one (Corporación Industrial y Financiera Banesto, S.A. v. José Gregorio Hernández Quintero, Case D2000-1265).
- Moreover, a previous panel has equally found that when 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" (Pivotal Corporation v. Discovery Street Trading Co. Ltd, Case D2000-0648 and Unibanco. Uniao de Bancos Brasileiros S.A. v. Vendo Domain Sale, Case D2000-0671).
- A search made by Complainant has shown that Respondent has registered in Network Solutions an important number of domain names, many of which clearly correspond to the trading name of well-known Chilean banking institutions, or otherwise well-known public institutions. The most relevant are the following: <registronacional.com>, <costaricacenter.com>, <mondexcard.com>,<1money.com>, <bancopanamericano.com>, <banconacional.net>, <bancopan.com>, <nossacaixa.com>, <royalislandcasino.com>, <tatrabank.com>, <1creditcard.com>, <banconacional.com>, <sportsbooksoftware.com>, <bancomundial.com> and <bancodeportugal.com>. The names of "Banco Mundial" (the Spanish name of the World Bank) and Banco de Portugal are enough evidence of Respondent’s bad faith when registering bancodechile.com.
Respondent is in default.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant has established sound rights in the BANCO DE CHILE mark in classes 35 and 36, in Chile and elsewhere, pre-dating the domain name registration. A simple comparison shows that the domain name is practically identical to Complainant’s service mark.
The Panel finds that the requirement of the Policy, Paragraph 4(a)(i) is met.
Lack of Rights and Legitimate Interests
Complainant has denied that Respondent has any rights or legitimate interests in the domain name. Respondent is in default and has not alleged or evidenced any circumstances for a finding in its favor under the Policy, Paragraph 4(c).
On July 15, 2001, the Panel independently tried to establish an Internet connection with the web page under the corresponding <bancodechile.com> domain name, which resulted in that the connection was automatically re-directed to the www.bancochile.cl/webchile/institucional/default.htm. This means that the web site by itself is not being used, except by this re-direction, where Respondent refers all possible contents of its web site to any contents posted on the Complainant’s official web page. This prevents the Panel to infer that Respondent is making any bona fide use, or any fair and non-commercial use of the domain name. The re-direction also means that Respondent is not showing any real own interest, but instead recognizes that the only possible way for the domain name to exist is in immediate connection with Complainant’s mark, image and official web page. Respondent itself has recognized in its e-mail of July 8, 2001, that the mere existence on the disputed domain name represents "all the traffic, brand and names without problems for many years in the future".
The second prong of the Policy, Paragraph 4(a) is thus present.
Bad faith Registration and Use
Respondent’s name is Adolfo Oviedo, with an address in San José, Costa Rica.
It has been evidenced that Respondent registered, among others, at least two domain names evidently corresponding to third parties´ trademarks or names: "Banco Mundial" and "Banco de Portugal", which are well-known financial institutions. "Mondexcard" evidently refers to the well-known Mondex International company, specialized in e-payment solutions and smart cards. This means that Respondent has engaged in a "pattern of such conduct" as described in Policy, Paragraph 4(b)(ii), i.e. registering domain names corresponding to third parties’ marks. The Panel infers that the purpose of the bancodechile.com domain name registration was to prevent Banco de Chile to reflect its mark in a corresponding domain name. This is a bad faith circumstance under Policy, Paragraph 4(b)(ii).
As to the requirement of bad faith use, the e-mail of July 8, 2001 sent by Respondent to the Center and the Complainant is sufficiently revealing of Respondent’s purpose at the moment of registration. In the e-mail Mr. Oviedo offers to sell the domain name to Complainant for US$ 9,000.00, an amount that Respondent considers "representative" and "a more valuable marketing tool that (sic) the cost of a single ad or publication in a newspaper, TV or any other media, that have higher inversions (sic)". Such statement shows without any doubt that Respondent’s purpose at the moment of the domain name registration was to sell the domain name to Complainant at a substantial profit, a circumstance of bad faith registration and use according with Policy, Paragraph 4(b)(i). An offer to sell the domain name has been held as a bad faith use of the domain name (See WIPO Case D1999-0001 World Wrestling Federation v. Bosman).
Complainant has thus proved the requirement of the Policy, Paragraph 4(a)(iii).
The Panel finds that the domain name is practically identical to Complainant’s mark, that Respondent lacks rights and legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.
Accordingly and pursuant to the Policy, Paragraph 4(i) and the Rules, Paragraphs 14 and 15, the Administrative Panel requires that the domain name registration of <bancodechile.com> be transferred to the Complainant, Banco de Chile S.A.
Roberto A. Bianchi
Dated: July 17, 2001