WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Transbank S.A. v. Tucows Domains Inc. / Dovydas Riasnojus, UAB "Beleza LT"
Case No. D2021-0193
1. The Parties
The Complainant is Transbank S.A., Chile, represented by Patricio De La Barra Gili, Chile.
The Respondent is Tucows Domains Inc., Canada / Dovydas Riasnojus, UAB "Beleza LT", Lithuania.
2. The Domain Name and Registrar
The disputed domain name <transbank.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2021, 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. The Center sent an email communication to the Complainant on February 12, 2021 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 February 12, 2021.
The Center sent an email communication to the parties on February 12, 2021 regarding the language of the proceeding, as the Complaint has been submitted in Spanish and the language of the registration agreement for the disputed domain name is English. The Complainant submitted a translated Complaint into English and a request for Spanish to be the language of the proceeding on April 24, 2021. The Respondent submitted a communication regarding the language of the proceeding on February 13, 2021.
The Center verified that the Complaint, together with the amended Complaint and the translated 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 February 13, 2021, the Center received two email communications from the Respondent in response to which the Center sent to the Parties an email regarding a possible settlement. On February 22, 2021, the Complainant requested the suspension of the proceeding. Accordingly, on February 23, 2021, the Center notified the Parties of the suspension of the proceeding. The Center received a third email communication from the Respondent on February 23, 2021. Following an extension of the suspension period, the proceeding was reinstituted on May 10, 2021.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. The Respondent did not submit a formal response. Accordingly, on July 22, 2021, the Center notified the Parties that it would proceed to Panel appointment.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on July 28, 2021. 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 company originally known as Sociedad Interbancaria Administradora de Tarjetas de Crédito S.A., which was founded and organized in 1989 under the laws of Chile by seven banks that merged together. The Complainant operates in the financial sector, being its core business the administration of credit and debit cards, as well as the administration of commercial transactions through various Internet platforms. The Complainant operates locally (in Chile), under the brand TRANSBANK, which coincides with its current company name.
The Complainant holds various trademark registrations that comprise the term “transbank” in Chile, including, among others, Chilean Trademark Registration No. 927498, TRANSBANK, figurative, registered on August 8, 2011, in class 36; Chilean Trademark Registration No. 927461, TRANSBANK, figurative, registered on August 8, 2011, in class 39; Chilean Trademark Registration No. 1210020, TRANSBANK, word, registered on May 11, 2016, in class 16; and Chilean Trademark Registration No. 1210021, TRANSBANK, word, registered on May 11, 2016, in class 36, (collectively the “TRANSBANK mark”).
The Complainant further owns various domain names comprising the TRANSBANK mark, which are linked to its corporate websites, including, among others, <publico.transbank.cl>, <transbank.cl>, <e-transbank.cl>, <etransbank.cl>, <onepaytransbank.cl>, and <portaltransbank.cl>. The Panel under its general powers, articulated inter alia in paragraph 10 of the Rules, has consulted the database of domain names under the country code Top-Level Domain (“ccTLD”) “.cl”, at “www.nic.cl”.
The disputed domain name was registered on March 5, 2003, and it is currently inactive, displaying an under construction message including a link to the website “www.transcount.com”, indicating “Under construction. Please visit Transcount for more info.”
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is identical to the Complainant’s company name and the TRANSBANK mark, which has an important presence and recognition of national and international level.
The Respondent has no rights or legitimate interests over the term “transbank”. The disputed domain name was registered with the sole purpose of speculation, with the intention to profit from a term created and used by the Complainant for more than 30 years. The disputed domain name is offered for sale at a value that exceeds 1,000 times the standard commercial value of a domain name, which indicates an obvious speculation.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered for speculation with the intention to exploit the fame and notoriety of the TRANSBANK mark, as it is offered for sale as a Premium domain with a value of USD 1,809,600.00, when the standard fair price for generic Top-Level Domains (“gTLDs”) “.com” is USD 9.88. Other domain names included in the website “https://shop.whois.com/domain-registration/index.php” including the term “transbank”, like <transbank.space>, <transbank.top>, <buytransbank.com>, <transbanklive.com>, and <trans-bank.com> have a commercial value of USD 9.88. Given the impossibility of paying the offered price (USD 1,809,600.00) for the disputed domain name, this proceeding is used to recover the disputed domain name at its usual price at this type of commercial operations.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
However, in various email communications, the Respondent indicated that it acquired the disputed domain name about a decade ago for its use in a business project related not only to the disputed domain name, but to other various domain names, including, <transbankas.com>, <transbank.eu>, etc., in which the Respondent invested more than USD 2M. The Respondent further indicated that, currently, the disputed domain name is parked at one related company (Beleza LT LTD), but the Respondent has the right to sell it at any price considered suitable.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Language of the Proceeding
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.
The language of the registration agreement is English, and the Respondent is apparently located in Lithuania (according to the Registrar verification), having indicated that it does not understand Spanish, using English in its various email communications regarding this proceeding.
Due to these circumstances, the Panel considers more appropriate for English to be the language of the proceeding and to render this decision in English, albeit the Panel has chosen not to request any translation of the evidence submitted in Spanish, in order to ensure this proceeding takes place with due expedition.
B. Identical or Confusingly Similar
As the Complainant’s trademark rights were acquired after the registration of the disputed domain name, it is important to note that this fact alone does not by itself preclude the Complainant’s standing to file this case, nor a potential finding of identity or confusing similarity under the first element. However, only under exceptional circumstances, the Complainant may be able to prove the Respondent’s bad faith. See section 1.1.3, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.
The Complainant indisputably has rights in the registered trademark TRANSBANK, by virtue of its various trademark registrations. The disputed domain name incorporates the TRANSBANK mark in its entirety without any alteration or addition. The Complainant’s trademark is therefore directly recognizable in the disputed domain name, and the generic Top-Level Domain (“gTLD”) “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See section 1.11, WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, but it indicated in various email communications that it acquired the disputed domain name about a decade ago and used it for a business project, which involved other related domain names and required substantial investment.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel, under its general powers, has analyzed, through the Internet archive WayBackMachine, the use of the dispute domain name since its registration, with the following conclusions:
- During its first years of its existence, until at least June 23, 2011, the disputed domain name was inactive and offered for sale (some archived sites indicate a price amounting to USD 7,000).
- Between June 23, 2011 and, at least, January 27, 2020, the disputed domain name was linked to an active website, in various languages, related to a freight exchange online market database. This website, under the name “Trans Bank” displayed in its heading with a logo in blue color, included information for transport and expedition companies, manufactures, exporters and importers “about available freights and vehicles, maps of various formats and purposes, contractual auctions and other useful information” (in various sections related to the market, freights, trucks, tenders, a catalog and a “Trans alack list”). This website indicated that “TransBank – freight exchange market, was found in 2008”, and, in October 16, 2012, it indicated that the platform had more than 6000 registered users, regular users from 36 European countries and from 21 Asian countries, and services available in 15 languages.
- Since February 15, 2020, the disputed domain name is linked to the current website including an under construction message and a link to the website “www.transcount.com”.
The Panel considers that these circumstances along with the information indicated by the Respondent in its email communications, sufficiently cast doubt on the Complainant’s allegations regarding a lack of use of the disputed domain name for a bona fide offering of goods and services, at least during the period between June 23, 2011 and January 27, 2020.
The Panel further notes that the term “transbank” may allude to the above mentioned Respondent’s website linked to the disputed domain name between June 23, 2011 and, at least, January 27, 2020, as it may allude to information related to transport, not being necessarily connected to the banking business.
In a balance of probabilities, the Panel considers that the Respondent acquired the disputed domain name about a decade ago (as indicated in its email communications), which coincides with the approximate date when started the use of the disputed domain name in connection with a website related to a the Respondent’s business project (around June 23, 2011). The Panel further considers that, initially, the Respondent used the disputed domain name for a business unrelated to the Complainant and its trademarks, which at that time were not even registered. The Complainant’s first trademark registrations date from August 8, 2011.
Therefore, in a balance of probabilities, all the above-mentioned circumstances lead the Panel to find no sufficient proof on the evidence that the Respondent is without rights or legitimate interests within the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”
As the second element of the Policy is not considered established, it is not necessary to enter into the analysis of the third element. However, the Panel wishes to emphasize that the arguments and evidence provided by the Complainant with reference to the third element are insufficient.
The Complainant has alleged that the Respondent acted in bad faith based alone in an apparent speculation purpose. However, the evidence related to the use of the disputed domain does not indicate such speculation purpose, but its use in connection to a specific project (at least for a period). Furthermore, while the Complainant alleges that the Respondent’s intention was to get a high sales price for the disputed domain name it is not clear at all to the Panel from the evidence on record that this was the Respondent’s intention (to the contrary, see the discussion herein of the Respondent’s use f the disputed domain name at one time for its business) , and in any event the business of registering and selling domain names may be legitimate if it does not target the Complainant’s trademark rights. The acquisition and offering for sale of a particular domain name would cease to be bona fide in the event a complainant could show that it had been targeted specifically by a respondent, which would be a matter of bad faith; the Complainant has not provided any evidence in this respect.
It is further to be noted that, the Complainant’s trademarks were registered after the registration of the disputed domain name and, by all appearances, after its acquisition by the Respondent. Therefore, only in certain limited circumstances, where the facts of the case establish that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s nascent, yet unregistered, trademarks, would have been possible to prove the registration of the disputed domain name in bad faith. However, the Complainant has produced no evidence (merely a claim that it began using its name in 1989) in this respect (i.e., its reputation in or before 2011). See section 3.8, WIPO Overview 3.0.
Therefore, the Panel finds for the Respondent under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Reyes Campello Estebaranz
Date: August 11, 2021