WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco de Chile S.A. v. Parkrose Investments Ltd.
Case No. D2001-0694
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 Parkrose Investments Ltd., with an address at Espronceda 539, Santiago, Chile.
2. The Domain Name and Registrar
This dispute concerns the domain name <bancochile.net> , 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 complaintís 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 and billing contact is Parkrose Investments Ltd., with an address at Espronceda 539, Santiago, Chile, that Network Solutionsī5 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 Canterís communication was delivered to Respondent on June 14, 2001. The notification of complaint and commencement of the administrative proceeding was also successfully transmitted to the Respondent on June 5, 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 6, 2001, after having received Roberto A. Bianchiís Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him a sole panelist in this present Case No. D2001-0694. 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.
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 Ė FONOAGIL and BANCO DE CHILE Ė 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.c>l, <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 <bancochile.net> with NSI on September 23, 2000.
As provided by incorporation in NSIīs service agreement in effect (version 5.0), the applicable dispute resolution policy is the ICANN UDRP, which establishes this Panelís jurisdiction in the instant case.
5. Partiesí Contentions
Complainant contends, inter alia, the following:
- The domain name bancochile.net 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 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 a company named Parkrose Investments Ltd., from Santiago, Chile. This company is not known in Chile as operator of any business or have any interest in any company using the name "Banco de Chile", specifically any business offering banking, financial or investment services. Respondent, being a Chilean Company could not ignore the existence and importance of Banco de Chile in Chile.
- "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 bancochile.net 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 bancochile.net in the name of Respondent made impossible to Complainant to register its own trading name and well-known trademark as bancochile.net 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 <bancochile.net> 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 Complainantís trademark constitutes a block, prevents and makes impossible Complainantís access to Internet in the category of ".net". 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 to our case are the following: <bancodeaedwards.net>, <casinolatino.net>, <bancodechileonline.com>, <casinoandino.com>, <bancoedwards.com>, <banconosur.com>. Banco de A. Edwards, which is probably the second most important Chilean bank, after Banco de Chile, is enough evidence of Respondentís bad faith when registering the domain name <bancochile.net>.
- The fact that the respondent is a company doing business in Chile is sufficient prove that its representatives already knew the existence of Banco de Chile, the most important and oldest bank in Chile, and the character of well-known of its trademarks. Therefore, this case constitutes not only a domain name hijacking but also a case of "trademark piracy".
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 Complainantīs mark. The absence of the Spanish preposition "de" (meaning "of" in English) in the domain name is not sufficient to distinguish it from Complainantís mark, specially considering that it has been evidenced that Complainant is also commonly known as "BANCO CHILE".
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 <bancochile.net> domain name, which delivered a web page with a text reading "Under Construction" in various languages. This means that the web site is not being used in any respect. It also means Respondent is not making any bona fide use, or any fair and non-commercial use of the domain name.
The second prong of the Policy, Paragraph 4(a) is thus present.
Bad faith Registration and Use
Respondentís name is "Parkrose Investments Ltd.", with an address at Santiago, Chile, the city and country where Complainant, a leading and well-known banking institution, is based. The Respondent, being an investment company based in Santiago, could not possibly ignore the previous existence of BANCO DE CHILE. Complainant is right that the domain name registration was in bad faith. The lack of any response or any other submission in Respondentís name prevents the Panel to find otherwise.
Additionally, it has been evidenced that Respondent registered at least two domain names evidently corresponding to the well-known name of Banco Edwards, the second largest Chilean financial institution. Respondent further registered <bancodechileonline.com> which also corresponds to Complainantís mark. 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 partiesí marks. The Panel infers that the purpose of the <bancochile.net< 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, Paragraphs 4(b)(ii).
As to the requirement of bad faith use, Complainant has evidenced that the inactivity of the www.bancochile.net and lack of use of the domain name amounts to positive bad faith action.
In this respect the Panel accepts the reasoning of the learned panelist who decided the WIPO Case D2000-0003 Telstra v. Nuclear Marshmallows. In the instant case a set of circumstances are present that strongly suggest bad faith action:
a) Respondent is in default.
b) Respondent is an investment company with residence in the same city and country where Complainant, the leading banking institution in Chile, is based.
c) It would be unthinkable that any use by Respondent of the domain name at issue would not be in violation of Complainantís trademark rights.
d) Under financial law in effect in Chile, which is applicable for both parties residing in Chile, any use by Respondent of the word "Banco Chile" and "bank" would be illegal.
e) The "under construction" text of Respondentīs web page leads Internet users, including Complainant's present or potential clients, to think that Complainant does not have a web site, or that it is not technically able to keep one.
Complainant has thus proved the requirement of the Policy, Paragraph 4(a)(iii).
The Panel finds that the domain name is practically identical to Complainantís 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 <bancochile.net> be transferred to the Complainant, Banco de Chile S.A.
Roberto A. Bianchi
Dated: July 17, 2001