Banco Itaъ S.A. v. Verlene L. Miller
Case No. D2005-0748
1. The Parties
The Complainant is Banco Itaъ S.A., Sгo Paulo, Brazil, represented by Momsen, Leonardos & Cia, Brazil.
The Respondent is Verlene L. Miller, Anniston, United States of America.
2. The Domain Name and Registrar
The disputed domain name <itaufacil.com> (herein the “domain name in dispute”)
is registered with Arsys Internet, S.L. dba NICLINE.COM.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2005. On July 18, 2005, the Center transmitted by email to Arsys Internet, S.L. dba NICLINE.COM a request for registrar verification in connection with the domain name at issue. On July 19, 2005, Arsys Internet, S.L. dba NICLINE.COM transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact in Espana. In response to a notification by the Center on August 12, 2005 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 16, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced August 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response September 14, 2005. The Response was filed with the Center on August 15, 2005, and acknowledged on August 16, 2005.
The Center appointed J. Nelson Landry, Alvaro Loureiro Oliveira
and Beatrice O. Jarka as panelists in this matter on October 20, 2005. The Panel
finds that it was properly constituted. Each member of 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, Banco Itaъ S.A., founded in 1943, underwent a twenty-year period of organic growth, followed by a period from 1964 to 1969 of mergers pursuant to which its trade name changed to Banco Federal Itaъ S.A., Banco Federal Itaъ Sul Americano S.A., Banco Itaъ Amйrica S.A. and to Banco Itaъ S.A., its current name as it is known today.
At the end of the 1970 decade, the Complainant opened branches in New York and Buenos Aires and during the eighties transformed itself into a multiple bank (commercial and investment bank, credit to consumers and to realty). It then consolidated its position and continued its evolution in the nineties; Banco Itaъ Europa, Itaъ Argentina and Itaъ Bank (Cayman) were founded and during the past years, the Complainant has acquired several other banking institutions on the Brazilian and international markets and in 2002 it acquired 99.99% of Banco Fiat S.A.
The Complainant has an international presence by its wide network out of Brazil, including branches in New York, the Cayman Islands and Tokyo, Japan, a representative office in Frankfurt, Germany, the Banco Itaъ Buen Ayre in Argentina, the subsidiary Itaubank in the Cayman Islands and, further, Banco Itaъ Europe and Banco Itaъ Europe in Luxemburg.
The Complainant has obtained in Brazil several trademark registrations and also filed many applications, all of which include the expressions “BANCO ITAЪ” or “ITAЪ” and has furthermore registered the trademark “ITAЪ” in several countries throughout the world, including the United States of America.
The Complainant has registered 265 domain names, all
incorporating the ITAЪ element, of which about 180 commence with ITAЪ, including
<itaufacil.com.br>, and has taken action against third parties for the
undue use of its trademark as a domain name, namely Banco Itau S.A. v. F.
Nazar, WIPO Case No. D2003-0454.
The Complainant has advertised its services under the trademark ITAЪ in several different magazines sold throughout the world, including the United States of America. These included in year 2000 Global Finance, Anuбrio Brazilian A. Chamber; Latin Finance, The Banker, Euromoney, Financial Times, Wall Street Journal, Institutional Investor, Bloomberg Magazine and Emerging Markets.
The domain name in dispute was registered on October 2, 2004, the registration expired on October 2, 2005, and was recently renewed.
The Complaint was notified to the Respondent on July 29, 2005. On August 15, 2005, Verlene L. Miller filed a Response by e-mail in which its contact details were mentioned as Verlene L. Miller, Anniston, Alabama, United States of America (telephone: none given, fax: none given) and a yahoo e-mail account. In her Response, she acknowledges having received the Complaint by courier on July 19, 2005.
Verlene L. Miller, in her Response, states that she has never registered any domain name with Arsys Internet, S.L. (the Spanish Registrar herein) or any other organization authorized to register domain names. Furthermore, in her Response, which she certified as complete and accurate, she states unequivocally “I had no involvement in registering the domain name <itaufacil.com>. Before this complaint, I had never heard of ‘ITAЪ’ or the Complainant in any way”.
While the WHOIS search document and exhibit, on the one hand, and the WIPO Center on the other hand, provide “firstname.lastname@example.org” as the e-mail address for the Respondent, Verlene Miller provides email@example.com as her e-mail address. There is no evidence throughout the file that Verlene L. Miller has ever received any communication under the firstname.lastname@example.org e-mail address nor that she has used this e-mail address. Subsequent to the reception of her Response by the Center, the Center has regularly communicated with Verlene L. Miller at the email@example.com address.
While subsequent communications between the parties and the Center did use
the new address of Verlene Miller and the firstname.lastname@example.org e-mail address,
it would appear that messages sent to that last address were indeed received
by an unidentified person since said messages were never returned as undelivered.
5. Parties’ Contentions
The Complainant submits that it has conquered a remarkable reputation and reknown as a consequence of its long and extensive use of the trade name “BANCO ITAЪ” and also of the trademark “ITAЪ” and has developed substantial goodwill and brand recognition of its trademark ITAЪ or its family of at least five trademarks which all include the distinctive term ITAЪ (herein the “Trademark” or “family of Trademarks”).
According to the Complainant, the domain name in dispute reproduces the Complainant’s Trademark “ITAЪ” in its entirety with the inclusion of word “fбcil” (easy in Portuguese language), and therefore is confusingly similar to Complainant’s Trademark.
The Complainant represents that it has been in operation since 1944 under the tradename “BANCO ITAЪ S.A.”, that it registered the trademark ITAЪ in at least 30 countries, that it is the Brazilian second biggest banking dealer, is known under names incorporating the expressions “ITAЪ” and “BANCO ITAЪ”. The Complainant further contents that the Respondent does not run any business under the name “ITAЪ”, has never used such expression to identify products or services rendered by the Respondent and, furthermore, that the Respondent does not own any trademark application or registration for the expression “ITAЪ”. The Complainant states that it has never authorized the use of the expression “ITAЪ” as part of a trademark or a domain name by the Respondent.
According to Complainant, the Respondent is not using the domain name in dispute in connection with any active website and has not been commonly known by the expression “ITAЪ”. If the Respondent was identified by such expression, it would probably be using the domain name in dispute. Upon trying to key the address “www.itaufacil.com”, Internet users repeatedly view the message that the corresponding page cannot be displayed. The Complainant contends that it can be inferred that the Respondent has no real interest in using such website to promote its business activities and that the registration of the domain name <itaufacil.com> was merely to prevent the Complainant from registering it.
The Complainant therefore contends that the Respondent has not demonstrated any legitimate rights over the domain name in dispute.
The Complainant has been advertising its business through its website that
can be accessed by keying the domain name <itau.com.br>, a domain name
which was registered in Brazil on January 1, 1996, which bears the Complainant
distinctive part of its trade name. This “ITAЪ”, distinct part of
the domain name in dispute although associated with the word “facilL”
is sufficient to identify the Complainant as a leading financing institution
in Brazil and in Latin America. The Complainant relies on the earlier Panel
decision Caixa Economica Federal v. Menterprises – Web Development,
WIPO Case No. D2003-0254 in respect of
the domain name <wwwcaixaeconomica.com> wherein the panel held that “the
word expression ‘caixaeconomica’ is sufficient to identify the Complainant
in the eyes of the Brazilian and Latin American Internet users”.
Accordingly the Complainant submits that by inference the Respondent has no real interest in using domain name in dispute to promote its business activities and the registration of the domain name in dispute was merely a way to prevent the Complainant from registering it.
The Complainant contends that it was impossible for the person who registered the domain name in dispute (herein the “registrant”) not to be aware of Complainant’s Trademark and its reputation. In the Complainant’s opinion, it can be inferred that the registrant was lured by greed and profit since the term “ITAЪ” is automatically and inevitably associated to the Complainant’s goods and services and neither the registrant nor Verlene Miller run any business under the name of “ITAЪ”, own any trademark registration or application for the term “ITAЪ”. The registration of the domain name in dispute was allegedly made in order to prevent the Complainant from doing so and to attempt to attract, for commercial gain, Internet users to the registrant’s website or other on-line location by creating a likelihood of confusion with the Complainant’s Trademark.
According to the Complainant, the strongest evidence of the registrant’s bad faith is that that person was engaged in the practice of sending unsolicited bulk e-mails, or spam, with virus that would be automatically downloaded into the users’ computers. In fact, Internet users when entering the website at “www.itaufacil.com” received a message stating that the e-mail account reached was sending messages with the virus w32.Burbear.B@mm, and at the bottom of the message there was a bullet point stating that to end with the virus problem, users could download free of charge a vaccine that would eliminate the virus out of their computer systems. Then a link to the page “www.itaufacil.com/vacina.exe” was shown. The virus consisted of a program that could be downloaded into the users’ computer. Upon completing the download, every time users tried to access their usual Internet banking, such as the Complainant’s bank, the program would require users’ passwords. Internet users were thus easily deceived by the program. After providing the passwords, as required by the program, the information was sent to the hackers who could later on access the users’ bank account.
The Complainant states that it has carried out a Google search for the expression “itaufacil” which resulted in detecting two websites where in each case the page presented a warning message by Symantec concerning the usage of computer programs and domain names for the purpose of fraud involving the domain name in dispute associated with the vaccine.
The Complainant submits that other panels have considered the practice of sending unsolicited bulk e-mails to promote a website residing at a domain name distinctly similar to third parties’ trademarks was bad faith use as the domain name was used primarily for the purpose of disrupting the competitor’s business, tarnishing other parties’ trademark and consequently their goodwill, and also confusing consumers as to source, sponsorship, affiliation or endorsement for commercial gain.
Moreover, according to the Complainant, the registrant also knew that customers contacting <itaufacil.com> could be confused into believeing that the domain name was held by the Complainant.
In this sense, a simple typing mistake would direct the Complainant’s customers to the Respondent’s website, which currently is not being used. In such a case, the consumers could be disappointed for not being able to access the Complainant’s website, and therefore, refrain from performing their financial operations thereby causing valuable losses both for the Complainant and for its consumers.
Verlene L. Miller contends that she has never registered any domain name with Arsys Internet, S.L. or any other organization authorized to register domain names and that a good observer of her address in the WHOIS record would have seen that there is no state (“sin provincia”) or country indicated or associated with this domain name registration, that the country of registration is Spain (ES) with an inoperable telephone number inside the United States of America.
According to Verlene Miller, if the Complainant had contacted her in a proper manner she would have readily relinquished any claim to the disputed domain name. By presenting this Complaint in a confrontational way, the Complainant has forced her to retain legal representation.
With respect to the Complainant’s trademark rights, Verlene Miller raises doubts as to whether the Complainant may claim rights in the expressions “ITAЪ” or “facit” because this may violate the right of other parties such as David Cella who owns the website “www.facit.org” on the one hand and the domain names of the Complainant which do incorporate the word “management” may cause confusion or conflict with other domain names such as wealthmanagement.com registered by a US Corporation.
She further submits that it is incorrect to state that Itaъ and Banco Itaъ are familiar to consumers outside Brazil because of the advertising and trade journals since, according to her, none of the publications noted are directed to consumers outside Brazil but to specific business markets and that Itaъ is the name of a city in American Samoa which predates the use of Itaъ by the Complainant. She concludes by adding that she was unaware of the Complainant prior to receiving the Complaint.
She further contends that not having registered the domain name in dispute and not being aware of the existence of Banco Itaъ, she challenges the negative statement of the Complainant that “it was impossible that the Respondent ignored the Complainant’s Trademark”.
She contends that Complainant’s statement that “the Respondent
was engaged in the practice of sending unsolicited bulk e-mail, or spam, with
the virus that would download into users’ computer” is slanderous.
Furthermore, Verlene L. Miller challenges the assertion that “Respondent’s
behavior has intentionally attempted to attract for commercial gains Internet
users to its website by creating a likelihood of confusion with Complainant’s
Trademark” as untrue because the website does not exist as it verified
by the Complainant.
6. Discussion and Findings
Comments on the evidence
Prior to engaging into the discussion, the Panel considers appropriate to comment on the quality, extensive character and sufficiency of the evidence in this case. There is a significant divergence between the Respondent’s name, the address in the WHOIS verification and the name in the e-mail address, email@example.com and the name address and the e-mail address of Verlene L. Miller in the Response. These facts do raise serious concern about the true identity of the person who registered the domain name in dispute.
Verlene L. Miller named as Respondent in this file has stated that she was not aware of the existence of the Banco Itaъ tradename and the Itaъ Trademark and has categorically declared that she did not register the domain name in dispute. While she comments strongly on the incomplete and awkward address in the Whois search, she has in her mode of communication adopted a surprising e-mail address.
Upon considering the evidence, the Panel has opted to distinguish between the person who registered the domain name in dispute, referred to herein as the “registrant” and Verlene L. Miller whose name appears in the Whois search but who, according to her statement, did not register the domain name in dispute, which evidence has not been contradicted and which this Panel finds plausible. For these reasons, the findings by the Panel of confusioning similarity with trademarks, absence of rights and legitimate interests and registration and use of the domain name in dispute in bad faith do not apply to Verlene L. Miller but to the registrant of the domain name in dispute, who is apparently still receiving communications in these proceedings at the firstname.lastname@example.org e-mail address.
This Panel agrees that the Complainant has presented all evidence available to it, for the purposes of the Policy to establish that the registrant of the domain name in dispute does not have rights or legitimate interests in the said domain name, registered and used the domain name in bad faith in addition to demonstrating that the latter is confusingly similar to its Trademark Itaъ.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has considered the evidence, both in the representations and exhibits, provided by the Complainant, in respect of its numerous registrations and applications for the family of Trademarks incorporating the element ITAЪ and the over 250 domain names incorporating the same term. This Panel has no difficulty in acknowledging that the Complainant has sufficiently established its rights in the presence and distinctive character of its family of Trademarks around the distinctive element ITAЪ and that it enjoys significant goodwill associated therewith not only in Brazil but in other countries within the business community.
The Panel has no difficulty in this case in finding that the domain name in dispute is confusingly similar to Complainant’s Trademark ITAЪ. The fact that a generic and descriptive term “facil” has been added to the distinctive element ITAЪ does not deter this Panel, the readers and users of Internet that Internet users will be confused and associate the domain name in dispute with the Trademarks, trade name and numerous domain names of the Complainant. The Panel finds that the domain name in dispute is confusingly similar with the ITAЪ Trademark of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
Verlene L. Miller named as Respondent in this file has filed a response in which she indicates that she has not registered the domain name in dispute.
To the extent that the person who registered the domain name, assuming it is not Verlene L. Miller, has appropriated the identity of a US citizen, the Panel finds that it has acted in deceit and therefore could not have intended to use the domain name in dispute in connection with any bona fide offering of services under the domain name in dispute. To the contrary, the evidence is that the domain name at some point, for a limited period, was used as a device to spread a virus in a deceitful manner.
By her own statement, Verlene L. Miller has acknowledged that she had not registered and had no interest or right in the domain name in dispute and on the basis on the evidence, this Panel concludes that to the extent that another person was acting under the disguise of Verlene L. Miller, that person did not have any right or legitimate interest in the domain name in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name in dispute was registered and used in bad faith.
While Verlene Miller had, according to her evidence, no knowledge of the Trademarks and domain names of the Complainant, nor did she register the domain name in dispute, it would appear that an unidentified person has appropriated the name of Verlene L. Miller and thus under false representations, such as an incomplete or incorrect address and telephone number along with an e-mail address not related to that person most likely linked to the person who registered the domain name, registered the domain name in dispute. Such registration which was made in deliberately attempting to cause harm to the Complainant, can only have been done in bad faith.
The Panel finds that the registration of the domain name in dispute in this fashion was made in bad faith.
The Panel having reviewed the evidence adduced by the Complainant, which evidence has not been contradicted, in particular the practice at some point in time of sending unsolicited bulk e-mails which incorporated a virus, associated with messages that invited the user to use a vaccine which consisted of a program that was downloaded into user’s computer and thereafter making it possible for hackers to access the users’ bank account, definitely constitute activities of bad faith.
Furthermore, by reason of the confusion between the domain name in dispute and Complainant’s Trademark, both the objectionable practice of sending the unsolicited bulk mail while the website was active and the subsequent and current period during which the website associated with the domain name was inactive constitute bad faith activities.
Again, according to the evidence and the uncontradicted statement of Verlene L. Miller, this Panel finds that she did not register nor use the domain name in dispute.
Again, according to the evidence, it would appear that a third party in a deceitful manner registered the domain name in the name of Verlene L. Miller and furthermore for a period of time used the domain name to engage in the practice of sending unsolicited bulk e-mails with virus therein that would be downloaded into the users’ computers and disrupting their activities, allowing hackers to appropriate passwords and later on access the users’ bank account.
Based on the aforementioned facts, the Panel finds
that the person who engaged in these activities registered the domain name in
bad faith and has thereafter used the said domain name in bad faith until such
activities were interrupted and thereafter the domain name became inactive as
it is at the present time. It has been held in numerous UDRP decisions that
such inactivity also amounts to use in bad faith of a domain name. See Telstra
Ltd., v. Nuclear Marshmallows, WIPO Case
The third criterion has been met.
The Panel concludes that:
(a) the domain name <itaufacil.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interest in the domain name in dispute;
(c) the domain name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <itaufacil.com> be transferred to the Complainant Banco Itaъ S.A.
Alvaro Loureiro Oliveira
Beatrice O. Jarka
Dated: November 4, 2005