WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banco Ita S.A. v. Fernanda Ap. Hidalgo da Silva

Case No. D2006-0939

 

1. The Parties

The Complainant is Banco Ita S.A., So Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.

The Respondent is Fernanda Ap. Hidalgo da Silva, So Paulo, Brazil.

 

2. The Domain Names and Registrar

The disputed domain names <bancoita.com> and <itapersonnalit.com>, (the ACE encoding for which being <xn--bancoita-v5a.com> and <xn--itapersonnalit-okb4x.com>) respectively, are registered with Enom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2006. On July 26, 2006, the Center transmitted by email to Enom.com a request for registrar verification in connection with the domain names at issue. On July 27, 2006, Enom.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that 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 this proceeding began on July28,2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was August16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2006.

The Center appointed Jos Pio Tamassia Santos, Alvaro Loureiro Oliveira and Erica Aoki as panelists in this matter on September 12, 2006. The Panel finds that it was properly constituted. Each member of 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. This Decision is due on September 26, 2006.

 

4. Factual Background

The Complainant, Banco Ita S.A., was founded in 1943 and started its operation in 1944. Presently it is considered as one of the largest Brazilian banks.

The Complainant’s international presence and strength are shown by its wide network outside of Brazil: New York, Cayman Island and Tokyo branches, representative offices in Miami and Shangai, the Banco Ita Buen Ayre in Argentina, the subsidiary Itaubank in Cayman Island, its brokerage company Ita Securities in New York and Hong Kong SAR of China and, further, Banco Ita Europe and Banco Ita Europe Luxemburg (these last two controlled by Itasa – Investimentos Ita S.A.).

In order to develop its commercial activity on the Internet, the Complainant and other companies of the Ita financial conglomerate (“Conglomerate”) registered and use several domain names, having registered approximately 449 domain names, 277 of them containing the expression “ITAU”.

Particularly, we mention two registered domain names <bancoitau.com> and <itaupersonnalite.com> which are identical to the currently disputed domain names <bancoita.com> and <itapersonnalit.com> the only difference being the fact that the disputed domain names were registered with accent using the ACE encoding.

This encoding is a string of characters resulting from a particular algorithm for transforming multilingual character information into an ASCII based alphanumeric form acceptable by the existing DNS.

The Complainant registered the domain names <bancoitau.com> and <itaupersonnalite.com> on April 15, 2001 and September 27, 2000, respectively.

The Respondent registered the disputed domain names on May 12, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of several trademark registrations duly issued in Brazil and in several countries for the expressions “Ita”, which is the distinctive part of the Complainant’s trade names “Ita”, “Banco Ita” and “Ita Personnalit”.

These trademarks ITA; BANCO ITA and ITA PERSONNALIT are familiar to consumers in Brazil and outside, since several advertising campaigns containing such expressions have been released on a regular basis.

In view of the above, the Complainant has achieved a remarkable reputation and renown within both the corporate field and with Brazilian consumers. As a consequence, based on its long and extensive use of the trademark ITA, the Complainant has developed substantial goodwill and brand recognition with regards to this mark.

The disputed domain name <bancoita.com> includes the trademark ITA and is identical to the trademark BANCO ITA both registered by the Complainant. Moreover, the disputed domain name <itapersonnalit.com> also includes the trademark ITA and is identical to the trademark ITA PERSONNALIT of the Complainant.

In view of the above, there is no doubt that the domain names in question reproduce the Complainant’s trademarks ITA, BANCO ITA and ITA PERSONNALIT and, therefore, are identical to the Complainant’s trademarks. Thus, the requirement of the Policy, paragraph 4 (a)(i) is fully met.

The Respondent does not run any business under the names “Ita”, “Banco Ita” or “Ita Personnalit” and has never used such expressions to identify products or services.

In addition, the Respondent does not own any trademark application or registration for the expressions “Ita”, “Banco Ita” or “Ita Personnalit” in Brazil or elsewhere.

The Complainant has never authorized the use of the expression “ITA”, “Banco Ita” or “Ita Personnalit” as part of a trademark or a domain name by the Respondent. Since the Complainant and/or other companies of the Conglomerate are the only companies entitled to use the referred expressions in Brazil and in other countries, it is absolutely clear that the use of ITA, BANCO ITA and ITA PERSONNALIT marks by the Respondent is abusive and illegitimate.

The Respondent registered the disputed domain names and is not using them in connection with any active website.

The Complainant presented documents showing that by entering the addresses “www.bancoita.com” and www.itapersonnalit.com” Internet users are directed to other websites that display that the domain names are for sale, however, at present, this condition could not be confirmed by this Panel.

Furthermore, the Complainant conducted a search on the Whois database system at the Network Solutions’ website for the domain names <bancoita.com> and <itapersonnalit.com> using the ACE encoding for these domains, and, as a result of the search, in addition to the Respondent's contact details, there also appears a message informing that the domain names in question are for sale. This information was independently confirmed by this Panel.

Thus the Complainant contends that, it can be inferred that the Respondent's interest in using the disputed domain names is to direct users to a site where Respondent is trying to sell the disputed domain names and that the registration of the disputed domain names was also to prevent the Complainant from registering them. The lack of Respondent’s reply in these proceedings, demonstrates that the disputed domain names were registered and are being used in bad faith.

The Complainant points out that it should be noted that, at the time such domain names were registered, it was impossible that the Respondent could have no knowledge of the Complainant’s activities and trademarks, especially taking into account that the Respondent (Fernanda Ap. Hidalgo da Silva) resides in Brazil, in the State of So Paulo, which is also the state where the Complainant has its headquarters.

Besides, on April 15, 2006, the Complainant received an e-mail from Mr.RodolfoFerreira, who was until June 2006, the contact person for the company E-Tech Sol. Em Internet Ltda., former Registrant of the domain names <bancoita.com> and <itapersonnalit.com>, as shown in the printouts of the Whois database attached to the Complaint as EXHIBIT-7A.

In his e-mail, Mr. Ferreira stressed that he was concerned with the undue use of such domain names by third parties and the consequent damages to Banco Ita’s reputation, and that was the reason for having registered the domain names.

In addition, Mr. Ferreira also mentioned that he had incurred some expenses with the registration of the domain names, and was willing to transfer such domain names to the Complainant in exchange for the amount spent.

Mr. Ferreira’s e-mail message and a free translation of the same are attached to the Complaint as EXHIBIT-7A.

Following the receipt of Mr. Ferreira’s e-mail, the Complainant states that it contacted him by telephone and requested a written offer for the transfer of the domain names.

Mr. Ferreira sent on May 09, 2006, a second e-mail (original and free translation also attached as EXHIBIT-7A) with his offer for transferring the domain names.

Mr. Ferreira requested R$50.000,00 for transferring each domain name (approximately US$25,000.00) and an Ita Personnalit bank account in his name, free of banking charges for 10 years.

The Complainant contends that the amount requested by Mr. Ferreira of approximately US$25,000.00 for the transfer of each disputed domain name was substantially higher than the expenses incurred for the registration of such domain names (generally, such expenses do not exceed US$60.00 for each domain name). It is clear that the sole intent of Mr. Ferreira was to profit from registering the domain names, which doubtlessly reproduce and infringe third party trademarks.

The Complainant also observes that concerning the Respondent (Fernanda Ap. Hidalgo da Silva) and the former Registrant of the domain names (E-Tech Sol. Em Internet Ltda.), although the name and address for the current Registrant have changed, both Respondent and former Registrant reside in the city of Sorocaba, in the state of So Paulo and also have exactly the same contact information (same telephone and fax numbers). Such coincidence leads the Complainant to infer that both the Respondent and former Registrant are somehow related.

This Panel independently from the Complainant contentions also conducted a search in the telephone directory of the city of Sorocaba, where both the Respondent and the former Registrant reside, and found out that both have the same registered address and the same family name (Silva), indicating that they are, most probably, residing at the same address.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is a Brazilian bank with a national and international presence. The Complainant has proved that it has rights in various marks through numerous trademark and service mark registrations in Brazil and in many countries.

Particularly the trademarks ITA, ITABANCO, BANCO ITA and ITA PERSONNALIT have been registered under the following numbers and classes:

- Registration 006.117.066, for word mark ITA, renewed on July 25, 1995, for ten years, in Brazilian class 36.10/60/70;

- Registration 816.518.025, for composite mark, issued on September21,1993, in international class 36. The renewal of such trademark was duly applied for, for another ten-year period;

- Application 826.095.631, for the composite mark, filed on November27,2003, in international class 36;

- Registration 760.255.989, for word mark ITAUBANCO, renewed on July8,2004, for ten years, in Brazilian class 36.10;

- The Complainant's trademark BANCO ITA in foreign countries is registered as follows.

Country

Class

Registration no.

Granting date

Valid until

Argentina

09

1.788.504

February 28, 1990

April 13, 2010.

Argentina

16

1.788.505

February 28, 1990

April 13, 2010.

Argentina

24

1.788.506

February 28, 1990

April 13, 2010.

Paraguay

36

201.777

March 31, 1998

March 31, 2008.

Spain

36

1.116.343

June 28, 1988

June 28, 2008.

- Registration 819.956.465, for the word mark PERSONNALIT, issued on September21, 1999, in Brazilian class 36.10/60/70;

- Application 825.803.861, for the composite mark, filed on August6,2003, in international class 36;

- Application 825.803.853, for the word mark “ITA PERSONNALIT” filed on August 6, 2003, in international class 36.

The Panel finds that the disputed domain names <bancoita.com> and <itapersonnalit.com> are identical to the corresponding Complainant’s registered trademarks and that the requirement of the Policy, paragraph 4(a)(i) is met.

B. Rights or Legitimate Interests

The Respondent does not run any business under the name “Ita”, “Banco Ita” or “Ita Personnalit” and has never used such expression to identify products or services. In addition, the Respondent does not own any trademark application or registration for the expressions “Ita”, “Banco Ita” or “Ita Personnalit”.

The Complainant has never authorized the use by the Respondent of the expressions “Ita”, “Banco Ita” or “Ita Personnalit” as part of a trademark or a domain name, considering that the Complainant and/or other companies of the Conglomerate are the only companies entitled to use the referred expressions in Brazil and in other countries.

The search on the Whois database at the Network Solutions’ website for the domain names <bancoita.com> and <itapersonnalit.com> using the ACE encoding for these domains, conducted by the Complainant and confirmed by this Panel, resulted in a message stating that the domain names in question were for sale.

Thus, it can be inferred that the Respondent has no real interest in using such websites to promote its business activities.

All this leads the Panel to find that Respondent lacks any rights or legitimate interests in the disputed domain names, thus fulfilling the requirement of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith.

The Complainant presents as evidence of bad faith an e-mail from Mr. Rodolfo Ferreira, who was until June 2006, the contact person for the company E-Tech Sol. Em Internet Ltda., former Registrant of the domain names <bancoita.com> and <itapersonnalit.com>, as shown in the printouts of a Whois database attached to the Complaint as EXHIBIT-7A. As stated before, both the Respondent and Mr. Ferreira appear to reside at the same address.

In this e-mail, Mr. Rodolfo Ferreira said that he was willing to transfer the mentioned domain names to the Complainant in exchange for the amount spent.

In a second message also attached to the Complaint, Mr. Ferreira asked for an amount of R$50.000,00 (approximately US$25,000.00) for transferring each domain name, and an Ita Personnalit bank account in his name, free of banking charges for 10 years.

This amount is clearly substantially higher than the expenses normally incurred for the registration of such domain names.

In these circumstances it stretches the bounds of credibility to believe that such an offer was made by the prior registrant and probable co-habitant of the current registrant and Respondent in these proceedings without the person's prior knowledge and consent. If the current registrant and Respondent had no relationship to the previous registrant or knowledge of the offer of sale detailed in the Complaint, or had some other good faith basis for acquiring the domain names in dispute, then why was this not addressed in the Response? The logical inference that flows from this in the circumstances is that the Respondent's acquisition and intended use of the dispute domain name was probably not in good faith.

All this leads the Panel to find that the Respondent registered and is using the domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain names (the Policy, paragraph. 4(b)(i)), a circumstance of bad faith registration, thus fulfilling the requirement of the Policy, paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <bancoita.com> and <itapersonnalit.com>, ACE encoding <xn--bancoita-v5a.com> and <xn--itapersonnalit-okb4x.com>, be transferred to the Complainant, Banco Ita S.A.


Jos Pio Tamassia Santos
Presiding Panelist


Alvaro Loureiro Oliveira
Panelist


Erica Aoki
Panelist

Dated: September 26, 2006.