WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Industrial do Brasil S.A. v. Ana Cristina Guilhermete Rosa
Case No. D2018-1344
1. The Parties
The Complainant is Banco Industrial do Brasil S.A. of Sao Paulo, Brazil, represented by Mansur Murad Advogados, Brazil.
The Respondent is Ana Cristina Guilhermete Rosa of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <indusbnk.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2018, 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 Complainant filed an amended Complaint on June 29, 2018 to address administrative formalities.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 1, 2018. 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 Brazilian bank, successor of Banco Santista, active in credit operations. It is the owner, amongst others, of the Brazilian trademark registration No. 817828389 for BANCO INDUSTRIAL, filed on May 26, 1994, registered on July 2, 1996 and successively renewed in local class 36.10/50/70.
The disputed domain name <indusbnk.com> was registered on November 29, 2017. An active webpage where loans are offered online resolves from the disputed domain name, which also indicates the Complainant’s physical address.
5. Parties’ Contentions
The Complainant asserts to be a solid financial institution, active in Brazil for more than two decades. Having earned in 2007 the “Best Brazilian Bank of Middle Market” at the World Finance Banking Awards event, it claims to hold recognition as an essential institution of the development of Brazil’s economy by promoting credit operations.
The disputed domain name, <indusbnk.com>, under the Complainant’s view, was registered by the Respondent with a clear intention to mislead Internet users, creating a likelihood of confusion with the Complainant’s BANCO INDUSTRIAL trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that the Respondent has been using it, seeking to deceive consumers and offering fraudulent loans using for that the Complainant’s address and tax payer ID number (Annex 7 to the Complaint), which cannot be considered a legitimate fair use of the disputed domain name.
As to the registration and use of the disputed domain name in bad faith the Complainant argues that the Respondent was undoubtedly aware of the Complainant and its trademark given that the Respondent indicated the Complainant’s address and tax payer ID number in the draft loan agreement as well as in the webpage that resolves from the disputed domain name and in which fraudulent loans of money are offered.
The Respondent 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(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of registered trademarks for BANCO INDUSTRIAL. In terms of whether the disputed domain name <indusbnk.com> is confusingly similar to the Complainant’s BANCO INDUSTRIAL trademark, the Panel notes the following.
The disputed domain name clearly evokes the Complainant’s trademark by effectively reproducing its constituent parts in reverse order, i.e., it consists of a typo (bnk) of one part and an abbreviation (indus) of the other part. Following the general practice undertaken in such comparison, the Panel ignores the generic Top-Level Domain “.com” portion of the disputed domain name. The Panel also notes, by way of affirming a finding of confusing similarity, that this case presents a scenario as described in section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) whereby the content of the website associated with the disputed domain name confirms an intent to target the Complainant’s mark. (See also WIPO Overview 3.0, section 3.1.1, as to the use of the disputed domain name vis-à-vis the Respondent’s intent.)
The Panel also notes with agreement as to the facts of this case, section 1.7 of the WIPO Overview 3.0, in that it states “panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”
The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name given that the disputed domain name is being used in connection with what appears to be a fraudulent scheme depicting the Complainant’s details in an effective attempt to create confusion. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of a right or legitimate interest.
The use made of the disputed domain name in connection with a webpage that offers allegedly fraudulent money loans and provides draft agreements indicating the tax payer ID number and address of the Complainant cannot be considered a bona fide one.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
This case presents the following circumstances which indicate bad faith registration and use of the disputed domain name given that:
a) the disputed domain name was registered on November 29, 2017, which is long after the Complainant registered its trademark in 1996;
b) there are indications that the disputed domain name has been used in connection with fraudulent scams;
c) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
d) the Respondent evidently was aware of the Complainant and its trademark in view of the contents of the website that resolves from the disputed domain name;
e) the absence of any reply to the Complaint; and
f) the email and physical addresses provided by the Respondent in the disputed domain name’s WhoIs appear to be false.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 <indusbnk.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: August 14, 2018