WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Itau S.A. v. Webmedia
Case No. D2008-0531
1. The Parties
The Complainant is Banco Itau S.A., Sao Paulo, Sao Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is webmedia, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <itau.net> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCA.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2008, against SoftTech of Seoul, Republic of Korea (“SoftTech”), the then-current registrant of the disputed domain name. On April 8, 2008, the Center transmitted by email to Dotster, Inc. the then-current registrar of the disputed domain name for registrar verification. On the same day, Dotster, Inc. transmitted by email to the Center its verification response confirming that SoftTech was listed as the registrant, that the Policy was applicable to the disputed domain name and that the registration agreement had been made in English.
At some point, the registrar of the disputed domain name was changed from Dotster, Inc. to DomainCA.com and also the disputed domain name was transferred to Webmedia, the Respondent in this case. On April 17, 2008, the Center transmitted by e-mail to DomainCA.com for registrar verification and DomainCA.com informed the Center by e-mail that the registrant of the disputed domain name as of April 17, 2008 was Webmedia. DomainCA.com provided the Center with the contact details of Webmedia and also informed the Center that the registration agreement with Webmedia had been made in Korean.
On April 18, 2008, following receipt of the verification by DomainCA.com, the Center requested the Complainant to make amendments to the Complaint in accordance with the verification by DomainCA.com. On April 23, 2008, in response to such request, the Complainant filed with the Center the amended Complaint in English, designating Webmedia as the Respondent.
The Center verified on May 13, 2008 that the Complaint together with the amendment thereto 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 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2008.
The Center appointed Boh Young Hwang, Alvaro Loureiro Oliveira and Tony Willoughby as panelists in this matter on July 2, 2008. 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.
4. Factual Background
The Complainant is one of the major private financial institutions in Brazil with more than 60 years history from its establishment, having global branches and affiliates in New York, Cayman Islands, Tokyo, Argentina, Chile and Uruguay. The Complainant’s business covers most of Brazil and a large part of the global market, recording R$ 301.6 billion asset value and approximately 13 million active clients.
The Complainant and the Itausa Conglomerate, to which the Complainant belongs, registered and owns large number of trademarks which consist of “ITAU” or include the word “ITAU” in various countries and also registered and uses various domain names including the word “ITAU,” including but not limited to <itau.com>, <itau.info>, <itau.com.br> and <itaubank.com>.
The disputed domain name was registered by SoftTech on April 19, 2001 and SoftTech remained as the registrant when on April 7, 2008, the Complaint was filed with the Center and SoftTech was duly notified by e-mail. On the same day and promptly after the Complainant’s notice of its filing of the Complaint with the Center, SoftTech transferred the disputed domain name to the Respondent and also changed the registrar to DomainCA.com from Dotster, Inc., before Dotster, Inc. could lock the disputed domain name against any assignment.
The disputed domain name is not under actual operation or use as of the decision date, however, it was used before to show a webpage which allows page-links using the words such as “Banco Itau”, “Banco Itau Brazil”, “Finance” and “Itau.com.br”.
5. Parties’ Contentions
(a) The disputed domain name <itau.net> is identical or confusingly similar to the trademarks ITAU in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name, by (i) not running any business under the name “ITAU”, (ii) having never used such expressions to identify its product or service, (iii) not having any trademark application or registration on the word “ITAU”, and (iv) not using the disputed domain name in connection with any service rendered or products sold by the Respondent.
(c) The changes of the registrar and transfer of the domain name to the Respondent promptly after being notified by the Complainant about the Complainant’s initiation of the UDRP proceeding constitutes the typical “cyberflight,” which has been recognized through prior panel decisions as an indication of bad faith registration. The current Respondent also owns 386 other domain names as verified in the DomainTools website. Therefore, it is clear that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be language of the registration agreement, which is the Korean language in this case. Paragraph 11 of the Rules, however, also grants the Panel the authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
In this given case, the registration agreement between SoftTech, the original Respondent of this case, and Dotster, Inc., the original Registrar, was made in English. The circumstances surrounding the change in the registrar from Dotster, Inc. to DomainCA.com combined with the domain name transfer from SoftTech to Webmedia make it abundantly clear that those changes were made for the purpose of escaping the “domain name lock” and the jurisdiction of the US court. The changes also served to complicate this administrative proceeding. The change in the language of the registration agreement was no doubt intended to make life much more difficult for the Complainant, requiring translation of the Complaint into another language.
The Panel is satisfied that this case can be satisfactorily and fairly dealt with in the English language and without any prejudice being caused to the Respondent. The Panel notes that the Center’s case-related communications have been made to the parties in both Korean and English. The Panel also notes that the Respondent has failed to participate in the proceeding, and has been notified of its default.
Therefore, under Paragraph 11 of the Rules, this Panel decides English as the language of the proceeding.
A. Identical or Confusingly Similar
The disputed domain name incorporates, as the most prominent and only meaningful feature, the word “itau” which is identical to the Complainant’s trademark ITAU.
The Panel finds that the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
While it is for the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, once the Complainant has made out a prima facie case, the Respondent is required to answer that case.
The Complainant’s contentions, which are supported by the evidence, are that the Respondent has not used the word “ITAU” as its trademark, product name, service name or for any other reasonable business purpose, and thus, the Respondent has no rights or legitimate interests in respect of the disputed domain name in any aspect. The Panel is satisfied that the Complainant has done enough to make out the requisite prima facie case.
The Respondent has not provided any answer of any kind. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Under the circumstances pertaining here where (a) the Complainant has registered and owns a renowned trademark, (b) the disputed domain name is identical to the Complainant’s trademark, (c) the Respondent is using the disputed domain name to connect to a website featuring numerous references to the Complainant along with links to other entities having no connection with the Complainant and (d) the Respondent has elected not to respond to the very strong case made out by the Complainant, a finding of bad faith registration and use will ordinarily be the inevitable result.
In this case, however, the position is even stronger. The behaviour of the original registrant regarding the domain name and registrar changes following the filing of the Complainant’s original Complaint, as described in section 3 above was not the behaviour which one would expect of a registrant acting in good faith.
All these circumstances lead to the reasonable conclusion that the Respondent’s registration and use of the disputed domain name has been made in bad faith, at least to prevent the Complainant from registering the disputed domain name, to sell the disputed domain name for excessive price or to attract Internet users to the website which was operated and/or will be operated by the disputed domain name using the reputation of the Complainant’s trademark and likelihood of confusion with such trademark.
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 <itau.net> be transferred to the Complainant.
Boh Young Hwang
Alvaro Loureiro Oliveira
Dated: July 18, 2008