WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Inter S.A. v. Anderson Santos, leaodechacara.com
Case No. D2018-1926
1. The Parties
Complainant is Banco Inter S.A. of Belo Horizonte, Brazil, represented by Alexandre Atheniense Advogados - SIA, Brazil.
Respondent is Anderson Santos, leaodechacara.com of Sao Caetano do Sul, Brazil, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bancointer.app> 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 August 24, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. The Response was filed with the Center on September 17, 2018.
The Center appointed Eduardo Machado as the sole panelist in this matter on October 4, 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
Complainant is established in Brazil as Banco Inter S.A., also doing business as “Banco Intermedium” or “Banco Inter”. Complainant is a financial services company that operates an online bank in Brazil, registered with the Brazilian Central Bank, with clients throughout the Brazilian territory. Complainant also claims, in its website, to be the first 100% paperless bank in Brazil, relying solely on Internet-based services.
Complainant registered the domain name <bancointer.com.br> on May 10, 2017, and also owns other domain names such as <bancointer.net.br>, and <bancointerapp.com.br>. Complainant also operates a “Banco Inter” mobile application, or “app”, which is directed to its banking clients and is available for download on both Google Inc.’s “Google Play” store (for mobile devices using the Android operational system) and Apple Inc.’s “App Store” (for devices using the iOS operational system).
Complainant has filed trademark applications in Brazil for the composite mark BANCO INTER, and, as per the information attached to the Complaint (see Annex 7 of the Complaint), has been using the unregistered trademark BANCO INTER in commerce since June 2017 to identify his financial/banking services to Brazilian customers.
Respondent is an individual based in Brazil. Given the registrant information provided by the Registrar and available on record, the Panel infers that Respondent runs a technology company engaged in information security services, using the domain name <leaodechacara.com>”.
Respondent registered the disputed domain name <bancointer.app> on May 8, 2018. The generic Top-Level Domain (“gTLD”) “.app” is operated by Google Inc. since May 2018. The disputed domain name is not used in connection with an active website.
5. Parties’ Contentions
Complainant states that the disputed domain name <bancointer.app> is confusingly similar to the BANCO INTER unregistered trademark, as well as to the domain names previously registered by Complainant.
Complainant also argues that Respondent intentionally registered the disputed domain name, which is identical to Complainant’s trademark, making use of unfair practices known as “cybersquatting” and “domain name parking”.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name, since there is no actual use of the disputed domain name <bancointer.app>, no webpage related to Respondent’s services and no reference to Respondent’s activities in the banking industry. Moreover, Complainant affirms that Respondent has no relationship whatsoever with Complainant and is not involved in banking activities, reasons why the registration of the disputed domain name was for the sole purpose of later selling it, considering its commercial value, to Complainant, expecting to receive an unproportionate profit.
Complainant claims that Respondent’s bad faith in registering the disputed domain name is further evidenced by the fact that Respondent was prepared to offer the disputed domain name for sale to Complainant, for more than Respondent's out-of-pocket costs. Complainant argues that Respondent stated that he would not sell the disputed domain name for less that USD 12,000 and that Respondent ended negotiations. This conduct would evidence that Respondent registered the disputed domain name primarily for the purposes of selling it to Complainant.
Respondent states that the disputed domain name <bancointer.app> was purchased and registered through a public process announced in the press to the general public, and open to anyone interested. Moreover, Respondent argues that, at the time of registration of the disputed domain name, there was no indication that Complainant tried to obtain the same domain name under the “.app” gTLD, which has international scope and is not limited to Brazil.
Respondent also argues that both “banco” and “inter” are terms commonly used in several countries and languages, and reasons why it would not be possible to associate it in a specific way with Complainant. Furthermore, Respondent claims that the disputed domain name was never registered in bad faith, since “banco” and “inter” could refer, in Portuguese, to a “soccer reserve bench” and an abbreviation used regularly for the regional Brazilian football team “Sport Club Internacional”.
Finally, Respondent claims that the disputed domain name has not been used due to external circumstances and that Respondent was contacted by a domain name brokerage service, which informed him that a third party was interested in acquiring the disputed domain name. Therefore, Respondent argues that he never offered the disputed domain name for sale, but entered into negotiations only after receiving a proposal, and in good faith.
In view of the above, Respondent claims that Complainant cannot accuse him of bad faith, because the offer was probably made by an affiliate of Complainant and Respondent only proposed a value after he was contacted (see Annex 2 to the Response for the email exchange between Respondent and the domain name brokerage service).
Respondent did not provide, in his Response, any evidence of trademark registrations or applications on his behalf, or evidence of actual use of the <bancointer.app> domain name, or mark, to identify products or services.
6. Discussion and Findings
In order to succeed in such dispute, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, a complainant in its complaint may rely on either unregistered or registered trademark rights (see section 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). As noted above, Complainant in this case relies on having an unregistered trademark for INTER BANCO.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services (see, WIPO Overview 3.0, section 1.3).
Complainant states that it has acquired unregistered rights in the BANCO INTER mark through its use in commerce since 2017. Complainant has provided evidence of various (social) media extracts to prove the use of the mark since at least June 2017. Complainant claims that from the evidence submitted, its BANCO INTER mark is well-known in relation to its banking services. In addition, Complainant has submitted a copy of its Brazilian trademark application for the figurative mark INTER, filed on June 5, 2018. The Panel finds from the evidence submitted that Complainant has established unregistered rights in BANCO INTER for purposes of the Policy.
In view of the above, the Panel finds that the disputed domain name <bancointer.app> is identical to Complainant’s BANCO INTER unregistered trademark. The Panel understands that the disputed domain name carries the word elements “banco inter”, which are identical to the Complainant’s domain name <bancointer.com.br> and the trademarks Complainant uses since 2017 to identify their activities.
The fact that the disputed domain name was registered before Complainant has acquired full trademark rights in Brazil does not by itself preclude Complainant’s standing to file a UDRP case, or even a panel’s finding of identity or confusing similarity under the first element. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered and unregistered marks. (See,Money Tree Software, Ltd. v. Javier Martinez, Money Tree Software, LLC, WIPO Case No. D2014-1078; The British Broadcasting Corporation v. Jaime Renteria,
The Panel also finds that the use of the “.app” gTLD is insufficient to prevent a finding of confusing similarity. The use of a TLD has no influence on the assessment of the similarity between Complainant’s trademark and the disputed domain name see, CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012).
The Panel, therefore, finds that Complainant has properly established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no right or legitimate interest with respect to the BANCO INTER trademark.
With respect to the paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before receiving any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In fact, Respondent confirms that he never used the disputed domain name.
With respect to the paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name. Respondent is a Brazilian citizen that provides information security services, and was likely aware of the existence of Complainant, and its services using the BANCO INTER trademark and the domain name <bancointer.com.br>, at the time of registration of the disputed domain name in May 2018.
With respect to the paragraph 4(c)(iii) of the Policy, Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in a connection of a bona fide offering of goods or services.
In view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered a domain name which reproduces Complainant’s trademark BANCO INTER. By the time the disputed domain name was registered, and since Respondent is also located in Brazil, it is unlikely that Respondent was not aware of Complainant’s existence, as well as Complainant’s use of the domain name <bancointer.com.br> and its rights in the trademark.
Further, it is likely that Respondent was also aware of Complainant’s mobile app and that it uses it as an instrument to interact with its customers. Respondent has not provided any evidence that a website or other online presence is in the process of being established using the disputed domain name. There is no evidence of advertising, promotion or display to the public of the disputed domain name.
There are no facts set out in Respondent’s arguments and evidence, or elsewhere, which could validate a good faith registration of the disputed domain name by Respondent. The argument that the disputed domain name could be used in association with a Brazilian regional football club cannot be considered credible, as Respondent did not provide any evidence that he is involved with Sport Club Internacional of Porto Alegre, Brazil.
Regarding the negotiations involving the Parties for the acquisition of the disputed domain name, the Panel finds that these may confirm Respondent’s intent to capitalize on Complainant’s rights (as opposed to using the disputed domain name for prima facie legitimate purposes). As per previous UDRP decisions, this could be factual to an assessment of bad faith, as it appears that the disputed domain name was registered primarily for the purpose of selling or transferring it to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs or reasonable expenses. (see, McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078; Lost Dog Café Corporation v. Brooks Roberts / Lost Dog Pizza Company, WIPO Case No. D2013-2012).
In light of the above, the Panel concludes that Respondent has failed to provide any evidence of actual or contemplated good faith use of the disputed domain name, as well as that the Panel is not possible to conceive any active use of the disputed domain name which would amount to good faith use and/or would not infringe Complainant’s trademark rights.
Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant has established the third element of the Paragraph 4(a) 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, <bancointer.app> be transferred to Complainant.
Date: October 18, 2018