WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novo Banco S.A. v. Whois privacy services, provided by Domain Protect LLC and Manuel Gallo
Case No. D2015-0310
1. The Parties
The Complainant is Novo Banco S.A. of Lisbon, Portugal represented by Linklaters, Portugal.
The Respondents are Whois privacy services, provided by Domain Protect LLC of Saint-Petersburg, Russian Federation and Manuel Gallo of Lisbon, Portugal.
2. The Domain Name and Registrar
The disputed domain name <novobanco.com> 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 February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the First Respondent, Whois privacy services, provided by Domain Protect LLC, 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").
On March 5, 2015 the Center received an email communication from the Second Respondent, Manuel Gallo, informing he did not own the disputed domain name.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. The Respondents did not submit any formal response. Accordingly, the Center notified the Respondents of the commencement of the panel appointment process on March 27, 2015.
On March 30, 2015 the Center received an email communication from the First Respondent, Whois privacy services, provided by Domain Protect LLC, informing the registrant of the disputed domain name was not its customer and that it did not have any relation to the disputed domain name.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 2, 2015. 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 Portuguese corporation incorporated on August 3, 2014 as per a resolution issued by the Bank of Portugal to transfer the assets of Banco Espírito Santo S.A ("BES") to a new bank called Novo Banco S.A. in view of the financial difficulties faced by BES and so as to protect the Portuguese market.
The trademark NOVO BANCO has been used since the incorporation of the Complainant on August 3, 2014 in connection with banking activities in Portugal, Cabo Verde, Italy, Andorra, France, Macau, Special Administrative Region of the People's Republic of China, Mozambique, South Africa, the People's Republic of China, Mexico, Switzerland, the United States of America, the British Overseas Territory of Cayman Islands, Spain, Luxembourg, the United Kingdom of Great Britain and Northern Ireland and the Bolivarian Republic of Venezuela.
The Complainant is the owner, among others, of the following trademark applications before the Office for Harmonization in the Internal Market ("OHIM"):
- 013228796, word mark NOVO BANCO in international classes 35, 36 and 38;
- 013293022, label mark NOVO BANCO in international classes 35, 36 and 38.
OHIM has recognized that the trademarks NOVO BANCO have acquired distinctive character through use.
The disputed domain name was created on January 13, 2000.
The First Respondent is Whois privacy services, provided by Domain Protect LLC, listed as the registrant of the disputed domain name in the public available WhoIs records and confirmed by the Registrar.
The Second Respondent, Manuel Gallo, is believed to have acquired the disputed domain name on August 18, 2014 and has offered it for sale to the Complainant on August 20, 2014.
Currently, a simple page that merely displays the expression "SMILE!" and a contact email address is made available through the disputed domain name.
5. Parties' Contentions
The Complainant asserts that it was incorporated following a resolution issued by the Bank of Portugal to transfer the assets of BES, which used to be one of the major Portuguese banks and faced severe financial difficulties that could threaten the Portuguese market. Its constitution was heavily followed by the Portuguese population, being on the news daily (Annex 5 to the Complaint).
The Complainant further asserts that it has been using its NOVO BANCO trademark since its incorporation on August 3, 2014 in connection with services rendered in Portugal, Cabo Verde, Italy, Andorra, France, Macau, Special Administrative Region of the People's Republic of China, Mozambique, South Africa, the People's Republic of China, Mexico, Switzerland, the United States of America, the British Overseas Territory of Cayman Islands, Spain, Luxembourg, the United Kingdom of Great Britain and Northern Ireland and the Bolivarian Republic of Venezuela, having largely invested in its corporate image in its agencies and branches (632 in Portugal, as well as international branches, associated banks and representation offices in other 17 countries) as well as in advertisement campaigns.
As a result the Complainant concludes that the trademark NOVO BANCO already became well-established in the Portuguese market as well as in other markets where the Complainant renders its services, having acquired distinctive character as recognized by OHIM (Annex 7 to the Complaint).
According to the Complainant, the Second Respondent appears to have acquired the disputed domain name on August 18, 2014, 15 days after the incorporation of Complainant, solely for the purposes of selling it to the Complainant, which is evidenced by the email of August 20, 2014 sent by the Second Respondent to employees of the Complainant, offering the disputed domain name for sale (Annex 11 to the Complainant). A second email was sent by the Second Respondent on August 27, 2014 informing that the price being asked for the disputed domain name was EUR 10,000 plus VAT (Annex 14 to the Complainant).
In order to show that he had control over the disputed domain name, the Second Respondent expressly mentions in the communication of August 27, 2014 that he would leave the website hosted under the disputed domain name with the expression "Quem sabe sabe" (which was a registered trademark of BES – Annex 12 to the Complainant), on that day, and that he would start to redirect users to the Complainant's website at <novobanco.pt> on the next day.
The Complainant states that it replied not agreeing with the amount being asked, to what the Second Respondent replied saying that he would sell the disputed domain name to other entities. Following that, the disputed domain name was redirected to "www.lehman.com", a website related to Lehman Brothers Holding Inc.'s insolvency proceedings which could, under Complainant's view, tarnish its image.
Later on, the disputed domain name was redirected to a page stating that it was for sale (Annex 16) and more recently to a sperm bank (Annex 17) in a wording that could tarnish Complainant's reputation.
Such circumstances, under the Complainant's view, demonstrate that the Second Respondent is solely using the disputed domain name, which is identical to the Complainant's trademark, to profit from its sale and to tarnish the Complainant's reputation, which is evidence of the Respondents' bad faith registration and use of the disputed domain name.
Also, the Complainant asserts that, although January 1, 2000 is the initial registration date of the disputed domain name, the Second Respondent only acquired the disputed domain name after the Complainant started using the NOVO BANCO trademark. The Complainant alleges that such acquisition is in fact a new registration of the disputed domain name, revealing that not only the use but also the registration of the disputed domain name was made in bad faith with the sole intent of obtaining unfair or illegitimate advantages.
Lastly, the Complainant argues that the use of a proxy/privacy registration service by the Second Respondent is an indicative of Respondents' bad faith, preventing interested parties to know his true identity and contact details.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
Before entering into the discussion of whether or not the Complainant holds trademark rights over the expression "Novo Banco" in Portuguese, which stands for "New Bank" in English, this Panel needs to address whether the expression "Novo Banco" could be considered a mark for the purposes of the Policy.
Considering the extensive evidence submitted by the Complainant as to the large amounts of advertisement campaigns and use of the mark especially in the Portuguese territory, as well as the express recognition of OHIM (Annex 7 to the Complainant) in the sense that the trademarks NOVO BANCO have acquired distinctive character through use, this Panel is satisfied that the "Novo Banco" expression can be considered a trademark under the Policy.
The acquisition of distinctive character through use, under this Panel's view, also overcomes the fact that the Complainant's trademark applications for the NOVO BANCO trademark, duly filed before OHIM (Annexes 8 and 9 to the Complaint) have not yet matured into registrations.
Such a finding is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") according to which:
"The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such 'secondary meaning' includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. (…)"
Thus, the Panel finds that the disputed domain name <novobanco.com> reproduces the Complainant's trademark in its entirety. The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondents' rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondents' use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as individuals, businesses, or other organizations) have been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondents are 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 trademark or service mark at issue.
The Respondents, in not formally responding to the Complaint, have failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. Bradescoatualizacao.info Private Registrant, A Happy DreamHost Customer, WIPO Case No. D2010-2108, <bradescoatualizacao.info>). Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
Under the present case, the Second Respondent's conduct of offering the disputed domain name for a sum in excess of his out-of-pocket costs (EUR 10,000) two days after having acquired1 the disputed domain name, together with the subsequent use made of the disputed domain name to redirect it (i) first to the Complainant's webpage, (ii) then to a webpage offering it for sale, (iii) later to the webpage of an institution under insolvency and (iv) lastly to a sperm bank webpage written in a rather mockery or pejorative tone can certainly not be considered a use of the disputed domain name in connection with a bona fide offering of goods or services and also can tarnish the Complainant's image and its trademark.
Also, the absence of any indication that the Respondents own registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondents and the disputed domain name that could be inferred from the details known of the Respondents or the webpage relating to the disputed domain name, corroborate with the Panel's finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the Second Respondent indeed appears to have acquired the disputed domain name on August 18, 2014, 15 days after the incorporation of Complainant, solely for the purposes of selling it to the Complainant, which is evidenced by the email of August 20, 2014 sent by him to the Complainant, offering the disputed domain name for sale for a sum in excess of his out-of-pocket cost (i.e., for EUR 10,000). This conduct, in connection with the use made by him of the disputed domain name (linking the disputed domain name to pages that could potentially tarnish the Complainant), is a clear indicative of Respondents' registration and use in bad faith.
Also, the use of a privacy protection service by the Respondents can contribute to a finding of bad faith since both the first and second Respondents have informally replied to the Complaint stating that they were not the owners of the disputed domain name. Considering the correspondence that took place between the Second Respondent and the Complainant and the effective changes in the website as described by the Second Respondent in such correspondence, the Panel finds it is very unlikely that he may not be true owner of the disputed domain name hiding behind the veil of a privacy service.
In addition to that, the Panel notes that the Second Respondent's email address indicates that he is a member of an organization that renders services, in Portugal, in the marketing, branding, advertising and communication business, undoubtedly being aware of the extensive advertisement of the Complainant's trademark.
As already mentioned, the Respondents did not file any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
For the reasons stated above, the Respondents' conduct has to be considered, in this Panel's view, as bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy.
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, <novobanco.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 9, 2015
1 Under this Panel's view the acquisition of an already existing domain name registration by a new third party is a new registration, as the WIPO Overview 2.0 also recognizes (item 3.7: "While the transfer of a domain name to a third party does amount to a new registration, …").