WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caixa Economica Federal v. Menterprises - Web Development
Case No. D2003-0254
1. The Parties
The Complainant is Caixa Economica Federal - CEF, of Brasilia, Brazil, represented by Dannemann, Siemsen, Bigler & Ipanema Moreira of Rio de Janeiro, Brazil.
The Respondent is Menterprises - Web Development, of Van Nuys, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <caixaeconomica.com> (hereinafter the "domain name"). It is registered with Tucows, Inc., of Toronto, Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2003. On April 4, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name. On April 4, 2003, Tucows transmitted by email to the Center its verification response. In that Response, the Registrar did not confirm that the Respondent was listed as the registrant but provide contact details (for the administrative, billing, and technical contact.) which correspond to the Registrant. There may have been a typographical error involved. Further to an exchange of emails between the Registrar and the Center, Tucows confirmed on April 30, 2003, that the registrant was indeed "Menterprises Ė Web Development."
The Panel also noted that the Registrar indicated in its Response that "yes, a copy of the Complaint has not been received." Not having heard further from the Registrar, the Panel accepts the initial "yes" as the Registrarís answer to the Centerís question.
In response to a notification by the Center on April 11, 2003, that the Complaint was administratively deficient (because it failed to specify that a copy of the Complaint had been sent to the Respondent), the Complainant filed an amendment to the Complaint on April 14, 2003.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 26, 2003.
The Center appointed Daniel J. Gervais as the Sole Panelist in this matter on June 13, 2003, and set June 27, 2003, as the projected decision date. 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a Brazilian government-owned federal saving account bank, incorporated on January 12, 1861, in the city of Rio de Janeiro. The Complainantís initial mission was to grant loans and support public savings. During the year of 1874, the Complainant started its expansion throughout Brazil. In 1969, all the Complainantís offices were unified into a single group, thus trading as a single entity pattern. By 1986, the Complainant was perceived as a key development agency in Latin America, playing an important role in habitation development and urbanization-related social programs.
The Complainant supports the countryís culture and sports by sponsoring a wide range of Olympic sports events and other athletics and cultural events. The Brazilian National Basketball team, both masculine and feminine, were sponsored by the Complainant during the 1990ís. In several competitions attended by national teams, including the Basketball World Cup and several South American tournaments, the "CAIXA ECONOMICA" mark stood out on the players jerseys. In April 2001, the Complainant started sponsoring the Brazilian National Track and Field team, becoming its main sponsor.
Today, the Complainant operates financial institutions in 5,561 cities in Brazil, including 2,048 branch offices and service counters, 918 ATMs, 8,934 lottery houses and 2,008 accredited banking partners. It has a total staff of 118,000. The Brazilian Federal Lotteries started to operate under the Complainantís monopoly control in 1961.
As its main focus are habitation and urban infrastructure investments, the notoriety achieved by the "CAIXA ECONOMICA" and "CAIXA ECONOMICA FEDERAL" marks is significant in Brazil and well-known to all Brazilians.
The Complainant is the holder of several registrations for the mark "CAIXA ECONOMICA FEDERAL" in Brazil.
Currently, the domain name resolves to a general page offering a "Search the Web" line as well as links to various services (gambling, shopping, Internet-related services, etc.)
5. Partiesí Contentions
The first point mentioned in the Complaint is to the effect that the word "FEDERAL" in the Complainantís trademark Brazilian registrations indicates that the services identified by "CAIXA ECONOMICA FEDERAL" are offered by a (federal) government institution. The "operational" part of the mark is thus "CAIXA ECONOMICA," the name by which the Complainant is known in Brazil and other Latin American countries.
The Respondent has never used or demonstrated any intention of using the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The disputed domain was registered by the Respondent in November 2001 and, up to the present date, has never been put in use in connection with a bona fide offering of goods or services. In fact, it takes the potential client to a web page indicating a few links. At the bottom of the page, it is (or was at one point in time) indicated that the domain name is (or was) for sale.
It is clear that the way the domain name is used does not correspond to the bona fide offering of goods and services. This is a typical cybersquatting strategy, in which the unauthorized registrant of a domain name that corresponds to a well known trademark, puts a web page under the domain name in order to argue that it is being regularly in use. The Respondentís intention is to sell the domain name for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. In fact, the Respondent has tried to auction online the domain name, in which he indicated a minimum price of US$550.
The Complainantís trademark "CAIXA ECONOMICA" was not chosen by chance. Being a trademark of a famous financial group it is obvious that the Respondent seeks a good offer and deal for the domain name.
The Respondent has never been known by the expression "CAIXA ECONOMICA." The Respondent buys and sells domain names with the clear intention of profiting from the fame of other parties investment on publicity of their legitimate trademarks.
The Respondent is not making a legitimate noncommercial or fair use of the domain name.
The bad faith upon the registration of the domain name in reference is clear, as "CAIXA ECONOMICA" enjoys of fame and worldwide renown as Brazilís largest financial group and Latin Americaís biggest investment bank.
In light of the above, the Respondentís bad faith is clear upon the unauthorized registration of a famous trademark, and its use, i.e., with the sole intention of gaining illegal profit for its commercialization, which was clearly demonstrated and proven.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding and obtain the requested transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel must decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) Does the Complainant have rights in a trademark or service mark; and (2) Is the domain name identical or confusingly similar to such trademark or service mark.
The Complainant has shown that is has rights in the CAIXA ECONOMICA FEDERAL mark; and that it is known by the name CAIXA ECONOMICA. The Panel agrees with the Complainant that the domain name is confusingly similar with the CAIXA ECONOMICA FEDERAL mark, as the words CAIXA ECONOMICA are sufficient to identify the Complainant in the eyes of Brazilian and Latin American Internet users. The word "FEDERAL," which is not found in the domain name, may be considered as mere common term/descriptor. The reasoning used in cases where a descriptor was added to a domain name (e.g., Rusconi Editore S.P.A. v. Bestinfo, WIPO Case No. D2001-0656; (adding the word "online"); Siebel Systems, Inc. v. Implementation Services Group, Inc., WIPO Case No. D2002-1070 (adding the word "employment"); and Primedia Magazine Finance Inc. v. Yelena M. Wright, WIPO Case No. D2001-1007 (adding the word "magazine")) can be referred to here mutatis mutandis. Indeed, what matters, in this Panelís opinion, is the impact and likelihood of confusion of the average relevant Internet user. In addition, the evidence submitted would support the claim that the Complainant, which is known under the name "CAIXA ECONOMICA," has acquired common law protection of that name as a mark.
The Panel thus finds for the Complainant on this first question.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Respondent is in default and has not shown to the Panel any right or legitimate interest in the domain name. The Complainants has positively asserted that the Respondent never made a bona fide offering of goods or services, was never known under the domain name and never made a legitimate noncommercial use of the domain name.
The Panel thus finds for the Complainant on this second question.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product.
The Complainant must prove that the domain name was both registered and used in bad faith.
In the absence of any evidence provided by the Respondent, the chance that the domain name would have been registered by "accident" or happenstance by the Respondent seems extremely low, notably due to its use of the Brazilian/Portuguese language, which is not common in the United States. This, in itself, is sufficient evidence of bad faith registration. In addition, both because of its network of financial operations in many parts of Latin America and because of its numerous sports sponsorship programs at worldwide events, it is likely that the mark would be considered well-known even in the United States, where the Respondent is located.
As to bad faith use, the fact that the domain name was never actively used, according to the Complainantís assertions which were not contradicted, and that it was offered for sale (at an online auction) are all signs of bad faith. See Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001; Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; Reckitt Benckiser AG v. Nazim Oren, WIPO case No. D2002-0286; Heineken España Química Farmacéutica Bayer, S.A. v. Alejandro Cámara Acevedo, WIPO Case No. D2001-1351, to name but a few relevant decisions.
While the "for sale" notice seems to have been removed from the Respondentís page, the Panel is entitled to consider acts of bad faith that occurred between the date of registration and the receipt of a notification from the Complainant, independently of whether they were "corrected." On this point, see the reasoning in Valor Económico S.A. v. Daniel Allende, WIPO Case No. D2001-0523 ("the present interruption of a former bad faith use of a webiste does not mean that there is no bad faith use under Paragraph 4(a)(iii) of the Policy. The Policy should not be construed in such a manner that bad faith use should continue after the dispute has begun or that these proceedings have been commenced. To do that would amount to grant to any Respondent a protection against the Policyís consequences by simply allowing him to cease or cancel any posting of contents on the webiste, and leaving the site without any use for all practical effects. Such would be an absurd interpretation of the Policy."). Other relevant cases on point include Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren WIPO Case No. D2000-0021; Playboy Enterprises International, Inc. v. Victoriano Moreno Martín WIPO Case No. D2000-1679; Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295; and Yahoo! Inc. v. Casino Yahoo, Inc., Jon Maranda, WIPO Case No. D2000-0660.
It is also worth noting that several administrative decisions have recognized that non-use could amount to bad faith use even without offering a domain name for sale, starting with the oft-cited decision in Telstra, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). Other relevant cases include Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865 and Ladbroke Group Plc v. Sonoma International LDC, WIPO case No. D2002-0131.
Finally, and this forms the basis of many decisions under the Policy, the Panel fails to see how the public interest would be best served by leaving the domain name with the Respondent, with a likelihood of confusion, no evidence of a legitimate interest and evidence of registering an intent to sell. The Panel thus finds for the Complainant on this third question.
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 <caixaeconomica.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: June 20, 2003