The Complainant is Banco Itaú S.A. of Sao Paulo, Brazil.
The Respondent is Telecom Tech Corp. of Panama City, Panama.
The disputed domain name <planodesaudeitau.com> is registered with Name.net LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2009. On February 16, 2009, the Center transmitted by email to Name.net LLC a request for registrar verification in connection with the disputed domain name. On February 17, 2009, Name.net LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2009.
The Center appointed M. Scott Donahey, Alvaro Loureiro Oliveira and Francisco Castillo-Chacón as panelists in this matter on April 15, 2009. 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.
Complainant, founded in 1943, is one of Brazil's largest private financial institutions. Complainant's net worth is R$ 11.8 billion. (USD 1.00 equals R$ 2.1975). Complainant's total assets are R$ 333.2 billion. Complainant has more than 14 million active clients in Brazil and other countries. Complainant is the 50th largest bank in the world by net worth according to the July, 2008 edition of The Banker Top 100 magazine.
Complainant has registered Brazilian trademarks for the ITAÚ mark which date back to July 25, 1975. “Itau” is a word from the dialect of the Tupi, a people indigenous to Brazil, which means “black stone.” It is unlikely that anyone outside Brazil, other than a few linguistic scholars, would be aware of this fact. Complainant has trademark registrations in numerous Latin American countries, including a registered trademark in Panama, where Respondent resides, which was issued on July 16, 1986. Complaint, Annex 8. Complainant has spent considerable sums in the promotion and advertisement of its marks. Complaint, Annex 6. According to a recent Interbrand study of trademarks in 2008, ITAÚ was the most valuable mark in all of Latin America. Complaint, Annex 5.
“Plano de saude” is the Portuguese phrase translating to “health insurance,” “health plan,” or “health benefit plan.” Complainant maintains a health benefit plan exclusively for its employees entitled “Itaú Health Insurance” (Plano de saude Itaú). The health insurance plan covers 116,844 employees and includes more than 13,000 medical providers. Complainant has secured a number of domain names that resolve or link to a web site, so that the members of its health plan can access health services online. Complainant's domain names include <planosaudeitau.com.br>, <planodesaudeitau.com.br>, and others.
Respondent registered the domain name at issue on March 25, 2008. Complaint, Annex 2. Complainant has never authorized Respondent to use its trademark in any respect. Respondent has offered the domain name for sale on its web site. Respondent also utilizes the domain name at issue to resolve to a web site where different types of insurance is offered by links provided thereon, including links to some of Complainant's competitors. Upon learning of Respondent's use of the domain name at issue, in August and September 2008, Complainant sent Respondent a series of letters and emails demanding that Respondent cease and desist from its use of the domain name at issue. Complaint, Annexes 10 and 11. Complainant received no response to these letters.
Complainant conducted a search using Domain Tools and found that Respondent had registered more than 63,000 other domain names. Complaint, Annex 12. A search of WIPO decisions showed that Respondent had been involved as a party respondent in six decisions, all of which ordered that the domain name at issue be transferred to the complainant.
Complainant alleges that the domain name at issue is confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
1) that 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,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The domain name at issue combines Complainant's well-known ITAÚ mark and the descriptive phrase “plano de saude” which is the Portuguese equivalent of the English “health plan.” It corresponds to the name of the health plan that Complainant provides to its employees.
Panels have found that a domain name is confusingly similar to a mark where a common descriptive term has been appended to the mark as part of the domain name. Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123 (<buyserta.com> and <buyaserta.com> held confusingly similar to the SERTA trademark). Accordingly, the panel finds that the domain name at issue is confusingly similar to Complainant's ITAÚ service marks and trademarks.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Complainant's mark is well known throughout Latin America and has long been a registered mark in Panama, in which Respondent resides. In the Panel's view, it is difficult to believe that Respondent did not know of Complainant at the time it registered the domain name at issue. Moreover, use of the Complainant's mark on a web site which provides links to services related to those provided by Complainant, but in reality offered in some cases by competitors of Complainant, is further evidence that Respondent registered the domain name with full knowledge of Complainant and it s business.
Respondent's use of Complainant's ITAÚ mark in its domain name was done for the purpose of attracting Internet users to the site. Once there a user finds to insurance services wholly unrelated to those provided by Complainant. This conduct constitutes bad faith registration and use per the example set out in paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
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 <planodessaudeitau.com> be transferred to the Complainant.
M. Scott Donahey
Alvaro Loureiro Oliveira
Dated: May 5, 2009