The Complainant is Nu Pagamentos S.A, Brazil, represented by K&L Gates LLP, United States of America (“United States”).
The Respondent is Dan Hudson, Nubank, United States.
The disputed domain name <nubank.com> is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020. On January 17, 2020, the Center received an informal communication from the Respondent.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 29, 2020. 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.
On February 12 and 14, 2020, the Center received a number of unsolicited communications from the Respondent and from the Complainant. The Panel has determined that it is neither necessary nor appropriate for these communications to be considered.
The Complainant is a company registered in Brazil. It is a provider of banking and financial services.
The Complainant is the owner of numerous trademark registrations in Latin America for the marks NUBANK and NU BANK. While the Complainant has failed to provide full particulars of those marks, including their dates of registration, it appears to the Panel that the earliest such trademark was registered in 2014.
The disputed domain name was first registered on April 23, 1997.
The disputed domain name has resolved to a “parking page” offering links to banking and other financial services.
The Complainant submits that the disputed domain name is identical or confusingly similar to its NUBANK and NU BANK trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It denies in particular that the Respondent has any intellectual property rights in the disputed domain name or that he has commonly been known by that name. The Complainant denies that the use of the disputed domain name for the “parking page” referred to above constitutes any bona fide offering of goods or services and submits, on the contrary, that the Respondent is using the disputed domain name misleadingly to divert Internet users to providers of services competing with those of the Complainant.
The Complainant contends that the disputed domain name was registered and has been used in bad faith. It states that the Respondent has constructive knowledge of its NUBANK and NU BANK trademarks and must in any event be presumed to know of those marks because of the virtual identity of the disputed domain name with them. The Complainant states that, in addition to its trademark registrations, it has used the domain name <nubank.br> for over five years. The Complainant states that it has corresponded with the Respondent concerning its “superior rights” to the disputed domain name (this correspondence is not exhibited) but that the Respondent has “consistently refused to participate in good-faith negotiations regarding a purchase or transfer of the domain and has, instead, demanded unreasonably high sums from Complainant”. The Complainant states that the Respondent has also failed to take steps to prevent confusion between the disputed domain name and the Complainant’s trademarks such as including a disclaimer on his website. The Complainant submits in the circumstances that the Respondent is affirmatively seeking to leverage customer confusion with the Complainant’s trademarks and business to his advantage and in bad faith.
The Respondent did not substantively reply to the Complainant’s contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case where no Response has been filed, the Complainant must still establish that each of the three above elements is present.
The Complainant has established that it is the owner of various trademark registrations for NUBANK and NU BANK. The Panel finds the disputed domain name to be identical or confusingly similar to the Complainant’s trademarks, ignoring the generic Top-Level Domain (“gTLD”) “.com” which is to be disregarded for the purpose of comparison. The date of registration of these trademarks is irrelevant to the test under paragraph 4(a)(i) of the Policy, which is designed only to establish the Complainant’s standing to bring these proceedings.
In the light of the Panel’s findings concerning bad faith, below, it is unnecessary to consider whether the Respondent’s use of the disputed domain name for the purpose of the “parking page” described above gives rise to rights or legitimate interests in the disputed domain name.
Under paragraph 4(a)(iii) of the Policy, the Complainant must establish both that the disputed domain name was registered in bad faith and that it has been used in bad faith (the so-called “conjunctive requirement”).
The disputed domain name was first registered on April 23, 1997. The Complainant does not assert that the disputed domain name was acquired by the Respondent on any later date, and there is no evidence in the Registrar’s responses to the Center or elsewhere within the case file which points to any such later acquisition by the Respondent. The Complainant’s earliest trademark registration is dated 2014 and it provides no evidence of any commercial activity under the NUBANK or NU BANK marks prior to that date. The Panel therefore concludes, on the available evidence, that the Respondent registered the disputed domain name some 17 years prior to the Complainant’s first use of its trademarks in question.
In these circumstances, even if the disputed domain name is currently being used in bad faith (about which the Panel makes no finding), there can be no finding that the disputed domain name was registered in bad faith. The Respondent cannot have been aware of the Complainant’s trademark when he registered the disputed domain name as it did not exist at that date. While panels under the UDRP have historically explored the concepts of retrospective bad faith implied by a respondent’s present conduct, or a breach of the terms and conditions of registration, these approaches have not been followed in subsequent cases (see e.g. section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Complainant has failed to establish that the disputed domain name was registered in bad faith.
Under paragraph 15(e) of the Rules:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Complainant is professionally represented in this matter and, in the opinion of the Panel, knew or ought to have known that it had no reasonable chance of prevailing in this proceeding for the reasons set out above, including in particular the fact that the disputed domain name had been registered many years before the Complainant began using the trademarks in question. Further, the Complainant’s admission that it has tried but failed to purchase the disputed domain name from the Respondent suggests to the Panel that this proceeding represents a fallback, in circumstances where the Complainant has failed to secure the disputed domain name by commercial negotiation. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons the Complaint is denied.
Steven A. Maier
Date: February 14, 2020