World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Del Estado De Chile v. Private Whois bancoestadonline.com

Case No. D2011-1736

1. The Parties

The Complainant is Banco del Estado de Chile of Santiago, Chile, represented by Felipe Schuster and Andrea Dawson of Alessandri & Compañia Abogados, Chile.

The Respondent is Private Whois bancoestadonline.com of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <bancoestadonline.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2011. On October 13, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On October 14, 2011, Internet.bs Corp. 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 November 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 29, 2011. 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 large bank and financial institution in Chile established as an autonomous government company pursuant to the “Ley Organica of Banco del Estado de Chile”, Law Decree No. 2,079 of 1977. The Complainant is long-established in Chile and offers a large number of retail banking and other financial services throughout the country, including online services. The Complainant is the holder of dozens of Chilean trade and service marks and one United States of America trademark for BANCOESTADO or variations thereon, such as BANCOESTADO FONOCLIENTE. The Complainant also provides a list of numerous domain names used in connection with its offering of financial services, including <www.bancoestado.cl>, which also appears to be a registered Chilean service mark.

There is no information in the record concerning the identity of the Respondent, but Annex 10 to the Complaint is identified as a webpage to which the disputed domain name resolves. That Annex reveals that the website is seeking to sell a variety of goods online which are unrelated to banking or banking services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its trademarked name.

Secondly, the Complainant submits that it has not authorized the use of its trademarks by the Respondent, who is not commonly know by the name “BancoEstado”, and has no registered rights in such name or any legitimate interest in it acquired by a bona fide offering of goods or services. The Complainant accuses the Respondent of participating in a “phishing” scheme through the use of the disputed domain name, and in support of this accusation attaches a webpage warning that the disputed domain name has been denounced as a “phish attempt”. The Complaint further alleges that the Respondent clearly registered and used the disputed domain name in bad faith as it must have known of the Complainant’s reputation and name and is improperly seeking to trade on the goodwill of the same. The Complainant cites numerous UDRP decisions in support of its Complaint, including, notably, Banca Intessa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.

The Complainant accordingly requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Complainant has here submitted a well-documented Complaint that readily meets its burden of proof under paragraph 4(a) of the Policy; the Respondent has defaulted.

A. Identical or Confusingly Similar

The disputed domain name incorporates the entirety of the Complainant’s oft-registered trademark, and, in this Panel’s view, would lead an Internet user to assume that there was some connection between the disputed domain name and the trademark BANCOESTADO. The addition of the suffix “online” does little or nothing to diminish this evident confusion, and may even augment it ,as the Complainant offers substantial online services. The Banca Intessa decision, cited above, is particularly on point as the panel there found that the prefix “online” in the domain name also did not diminish confusing similarity. Thus, the Complainant has met its burden under paragraph 4(a)(1) of the Policy.

B. Rights or Legitimate Interests

The Complaint makes clear that the Complainant has not accorded the Respondent the right to use its trademarks in the disputed domain name and asserts that the Respondent is not commonly known by the name “BancoEstado”. There is, moreover, nothing in the record suggesting that the Respondent has legitimate rights or interests in the trademarked portion of the disputed domain name. Consequently, and in the absence of any Response from the Respondent, the Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s documented assertion that it is a well-known financial institution and that the Respondent must have been aware of its name, reputation and rights when it registered the disputed domain name. The use of the disputed domain name to attract Internet users and offer goods and services unrelated to and unauthorized by the Complainant must also here be considered to be a bad faith attempt to attract Internet users for financial gain by improperly trading on the Complainant’s goodwill, marks and reputation. The Panel finds this be clear bad faith use as described, under, inter alia, paragraph 4(b)(iv) of the Policy. .It is, accordingly, unnecessary to decide the Complainant’s further allegation of “phishing” (derived from the word “fishing” and meaning a genre of Internet fraud whereby a user “takes the bait” and provides identification, credit card or other data which is then used for nefarious activities), and the evidence on this point is not necessary conclusive; the Complainant has met its burden of showing bad faith use on the basis of the other evidence discussed above. .

It follows that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bancoestadoonline.com> be transferred to the Complainant.

Nicolas Ulmer
Sole Panelist
Dated: December 5, 2011

 

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