WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Original do Agronegócio S.A. v. Private Registration
Case No. D2013-2037
1. The Parties
The Complainant is Banco Original do Agronegócio S.A. of São Paulo, Brazil, represented by Patricia Peck Pinheiro Advogados, Brazil.
The Respondent is Private Registration of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bancooriginal.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. According to the Registrar, the registrant and contact information for the Disputed Domain Name were as follows:
Registrant: Private Registration
Registrant/Administrative/Technical Address: […], Denver, CO […], United States of America
Registrant/Administrative/Technical Email: […]@whoisproxy.com
The Center sent an email communication to the Complainant on November 29, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 4, 2013.
The Center verified that the Complaint together with the amended 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 (see paragraph 4 below), and the proceedings commenced on December 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2013, which was subsequently extended to January 3, 2014.
No formal Response has been filed by the Respondent with the Center. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on January 6, 2013.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 13, 2014. 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. Preliminary Issue
On December 16, 2013, December 21, 2013 and January 4, 2014, an individual named “A. Reberry” on behalf of “TurnCommerce Inc.” sent email communications to the Center, stating that it had received the notification from the Center of the Complaint, but that it had no connection with and is not the owner of the Disputed Domain Name. According to the email communications, the domain name <whoisbyproxy.com> is owned by TurnCommerce Inc. It therefore received the notification sent by the Center to the Respondent at “[…]@whoisproxy.com”. The contact number and address identified by the Registrar as the contact details for the Respondent, were also stated by Mr. Reberry to be the phone number and address of his company, TurnCommerce Inc. Mr. Reberry explained that NamesHereLLC, which the Panel understands is associated with TurnCommerce Inc, used to be the registrar of the Disputed Domain Name before it was transferred to the current Registrar (GoDaddy.com, LLC). When the Disputed Domain Name was transferred to the current Registrar, the same contact details that were previously used (i.e. the contact details related to WhoisByProxy.com) were retained by the Registrar as the contact details of the Respondent. Mr. Reberry therefore stated that the registrant information displayed on the publicly available WhoIs of the Disputed Domain Name is false and invalid, and that neither TurnCommerce Inc. nor NamesHereLLC are the owners of the Disputed Domain Name.
Based on the above and the information provided by the Registrar, the Panel accepts: (i) that the Respondent (i.e. Private Registration) is the registrant of the Disputed Domain Name, and not TurnCommerce Inc. or NamesHereLLC; and (ii) that the Respondent has either failed to update or has provided false contact information to the Registrar. For the avoidance of doubt, any reference to the Respondent in this decision is to Private Registration (the name of the registrant as provided by the Registrar), and is not a reference to TurnCommerce Inc. or NamesHereLLC.
As the contact details held by the Registrar (and as shown on the WhoIs register) are incorrect, there is possibility that the Respondent never received a notification of the Complaint. However, while actual delivery may not have occurred, the Panel is satisfied that the Center did “employ reasonably available means calculated to achieve actual notice to Respondent”, as required by paragraph 2(a) of the Rules, since it relied on the contact information provided by the Registrar for the Respondent. Any failure to achieve actual notice resulted from the Respondent’s failure to update or provide accurate contact information to the Registrar. As stated in Francesco Totti v. Jello Master, WIPO Case No. D2002-0134, “a respondent cannot hide behind the provision to the Registrar of either an incomplete physical address or an email address which cannot be accessed.”
5. Factual Background
The Complainant is a financial institution established and based in Brazil, and originally known as JBS Bank. In 2011, the Complainant established the bank Banco Matone, which has since its incorporation been operating under Banco Original. The Complainant has been using the BANCO ORIGINAL mark since 2011. It applied for trade mark registration of its BANCO ORIGINAL mark in Brazil on June 1, 2011, which is still pending registration. The Complainant also owns the domain name <bancooriginal.com.br>.
The Respondent registered the Disputed Domain Name on November 21, 2012. The Disputed Domain Name is currently inactive.
6. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Disputed Domain Name is identical or confusingly similar to the Complainant’s unregistered BANCO ORIGINAL mark. Under the UDRP, the Complainant can rely on unregistered trade mark rights in order to satisfy the first limb.
The Complainant's BANCO ORIGINAL mark is well-known; it is the 21st biggest bank in Brazil and the 62nd biggest bank in Latin America. The Respondent must have been aware of the Complainant's mark at the time it registered the Disputed Domain Name, which was over 1 year after the Complainant first started using the BANCO ORIGINAL mark in Brazil.
The Disputed Domain Name has been inactive since it was first registered. There is therefore no evidence that the Respondent is using, or has made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent is also not known by the Disputed Domain Name, and the Complainant has never authorised the Respondent’s use of its BANCO ORIGINAL mark.
The Respondent has registered the Disputed Domain Name in bad faith as a proxy service provider was used to try and hide the identity of the true registrant; the Disputed Domain Name is identical to the Complainant’s BANCO ORIGINAL mark; the Registrant has not been authorized to use the Complainant's BANCO ORIGINAL mark; the Disputed Domain Name was registered over 1 year after the Complainant applied for trade mark registration of BANCO ORIGINAL in Brazil; and the Respondent has not used the Disputed Domain Name since it was registered.
The Complainant also filed a separate UDRP action against a former employee of the Complainant who registered <bancooriginal.org>, <bancooriginal.net> and <bancooriginal.info> via a proxy service provider. The Complainant contends that there is a possibility that the same individual has registered the Disputed Domain Name via the Respondent.
The Respondent submitted no reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant applied for trade mark registration of the mark BANCO ORIGINAL in Brazil on 1 June 2011. The application is still pending. The Complainant contends that it has unregistered rights in the mark BANCO ORIGINAL by virtue of its use of the mark since 2011 in connection with the provision of services in the banking and financial industry.
It is well established that the Policy protects rights in unregistered marks (see Seek America Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131; Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322). Having considered the evidence submitted by the Complainant, the Panel accepts that the Complainant can claim rights in BANCO ORIGINAL as an unregistered common law trade mark, which has been in existence since 2011.
The Disputed Domain Name incorporates the Complainant's unregistered trade mark in its entirety. It is a well-established principle that in making an enquiry as to whether or not a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case <.com>, should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant's mark, and the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s BANCO ORIGINAL mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the BANCO ORIGINAL trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
The Disputed Domain Name is currently inactive and resolves to a page that states that the website is “coming soon”. According to the Complaint and the evidence provided in support, the Disputed Domain Name has been inactive since its registration in November 2012. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, or that it is making legitimate, noncommercial or fair use of the Disputed Domain Name, without the intent to misleadingly divert Internet users from the Complainant’s website and/or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Although use of a privacy registration service is not in itself an indication of bad faith, it will depend on the circumstances of each case. In this case, not only has a proxy service provider been used to register the Disputed Domain Name, but the Respondent has provided inaccurate contact information.
The Panel notes that providing false or inaccurate contact information when registering a domain name can be evidence of bad faith registration and use (see Association Robert Mazars v. INTEG Kumaran, WIPO Case No. D2009-1679; and A. H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336). As further detailed in paragraph 4 above, it appears that the contact information for the Respondent currently held by the Registrar is inaccurate. The Panel believes that there is a possibility that the Respondent provided false contact information to the Registrar or purposefully chose not to update its contact information to conceal the true identity of the underlying registrant.
Under the totality of the circumstances and on the balance of probabilities, given the absence of use of the Disputed Domain Name and the lack of Response to address the Complainant’s reasonable allegations, the Panel is prepared to find that the Respondent has registered and used the Disputed Domain Name in bad faith (see WIPO Overview 2.0, paragraph 3.2).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <bancooriginal.com> be transferred to the Complainant.
Date: January 27, 2014