Banco do Brasil S.A. v. The Tidewinds Group, Inc., Abadaba S.A. Domain Admin
Case No. D2007-1657
1. The Parties
The Complainant is Banco do Brasil S.A., Brasília, Brazil, represented by Matos & Associados, Brazil.
The Respondents are The Tidewinds Group, Inc., Marblehead, United States of America; and Abadaba S.A. Domain Admin, Panama.
2. The Domain Name and Registrar
The disputed domain name <bancodobrasil.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2007 naming The Tidewinds Group, Inc. as the Respondent. On November 13, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November 14, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent Abadaba S.A. Domain Admin was listed as the registrant of record and providing the contact details. According to the record, the WHOIS database reported that the Respondent The Tidewinds Group, Inc. was the registrant of the domain name prior to the filing of the Complaint and that sometime after the filing of the Complaint but prior to the Notification of the Complaint to the Resopndent, the WHOIS information was changed to indicate Abadaba S.A. Domain Admin as the registrant of the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 22, 2007, to add Respondent Abadaba S.A Domain Admin to the Complaint. 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 Respondents of the Complaint, and the proceedings commenced on November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. Neither one of the Respondents submitted any response. Accordingly, the Center notified the Respondents’ default on December 19, 2007.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on January 8, 2008. 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 large banking services company incorporated in 1808. It is headquartered in the Brazilian capital and has offices in 22 countries. It has used the mark BANCO DO BRASIL as part of its regular operations for several decades. The Complainant operates the following websites: “www.bancodobrasil.com.br” and “www.bb.com.br”. It also held the registration for the disputed domain name but the registration lapsed in 2001 when a maintenance fees was not paid.
5. Parties’ Contentions
A. Complainant
The Complainant owns, inter alia, Brazilian Trademark Registration n° 816 669 350 for BANCO DO BRASIL, currently in force up to November 13, 2013, as well as a US trademark registration n° 2,250,738 for the same mark, registered on June 8, 1999, and trademark registrations for said mark in Argentina, Austria, Benelux, Canada, Chile, France, Panama, Portugal, Spain and Uruguay.
The domain name is confusingly similar in appearance, pronunciation and sound to Complainant’s BANCO DO BRASIL mark. The only difference between the domain name and Complainant’s mark is the domain name addition of “.com.”
The Respondents’ use of the domain name is not in connection with a bona fide offering of goods or services. Neither Respondent is commonly known or identified by the name BANCO DO BRASIL. The Respondents do not operate a business or other organization commonly known as BANCO DO BRASIL or offer any goods or services under such mark. The Respondents are not making a legitimate noncommercial or fair use of the domain name. Consequently, the Respondents have no rights or legitimate interests in the domain name.
The Respondents are not licensees of the Complainant, nor are Respondents or either one of them otherwise authorized by Complainant to use the Complainant’s mark.
The Respondents do not conduct any legitimate commercial or noncommercial business under the BANCO DO BRASIL mark. A person who visits the web page to which the domain name resolves only sees a page that links Internet users to commercial websites including hyperlinks related to financial and banking products and services. The use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to several different domain names represents bad faith registration and use under Policy 4(b)(iv).
The Respondent the Tidewinds Group, Inc., the registrant of record prior to filing of the Complaint, is located in the United States of America and the only language which uses “S” to spell the word Brazil is Portuguese, which indicates that the Respondent the Tidewinds Group, Inc. previously knew the existence of Complainant’s mark. Said Respondent is engaged in the activity of registering domain names including third party marks, as evidenced in previous administrative proceedings under the Policy.
The Respondents are diverting consumers away from the official site of Complainant and making it difficult for Complainant’s customers and the general public to locate Complainant’s official website, thereby disrupting Complainant’s business. The Respondents have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ website or other on-line locations by directly and involuntarily linking users to websites not related with Complainant, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondents’ websites or locations or products or services on Respondents’ website.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel noted that the domain name was the subject of two previous administrative proceedings under the Policy, namely Banco do Brasil S.A. v. Sync Technology,
WIPO Case No. D2000-0727; and Banco do Brasil S.A. v. Jang Bong Hyun,
WIPO Case No. D2001-0955. Both cases led to a transfer of the domain name to the Complainant.
The Panel notes that paragraph 8(a) of the Policy prevents a domain name registrant from transferring its registration during a pending administrative proceeding under the UDRP. Previous panels have also noted that cyberflying, or where a registrant of a domain name transfers the disputed domain name to a different registrant to disrupt a pending proceeding, can be indicative of bad faith. Here, the transfer from The Tidewinds Group, Inc. to Abadaba S.A. Domain Admin took place seemingly just after the Complaint was filed. The Complainant has presented evidence to this effect. Further, it appears that both Respondents are familiar with UDRP proceedings and have registered domain names incorporating third parties’ trademarks. In the circumstances, for the purpose of this proceeding, the Panel is satisfied that it is appropriate to name both The Tidewinds Group, Inc. and Abadaba S.A. Domain Admin as Respondents.
1. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the Complainant has provided the Panel with instances of registrations of its mark BANCO DO BRASIL. Although this is not a necessary finding under the first element, use of both marks predates registration of the domain name by either one of the Respondents. The Panel finds that the Complainant has rights in the above-mentioned mark.
As to the second question, the Panel finds that the domain name is identical to the BANCO DO BRASIL mark. The disputed domain name incorporates the Complainant’s mark, adding only the top-level “.com.” The addition of the generic top-level domain (gTLD) reference “.com”, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti,
WIPO Case No. D2000-0493, Telecom Personal, S.A. v. NAMEZERO.COM, Inc,
WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,
WIPO Case No. D2002-0760.
The Panel thus finds for the Complainant on the first part of the test.
2. Rights or Legitimate Interests
The Complainant submits that the Respondents have no rights or legitimate interests in the domain name based on Complainant’s prior use and registration of the above-mentioned mark. The Respondents, who did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name. According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
There were no elements introduced in evidence to show that either one of the Respondents is or was commonly known by the domain name. There is no evidence that either Respondent is making a legitimate noncommercial or fair use of the domain name. Quite to the contrary, the evidence suggests that the Respondents used the disputed domain name for commercial gain with a view to unduly profiting from the goodwill flowing from the Complainant’s mark.
Consequently, the Panel finds that the Respondents have no rights or legitimate interests in the domain name.
3. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product.
The Respondents did not choose to register the domain name by accident. They allegedly “picked it up” due to an unintentional lapse in the renewal of registration by the Complainant. Put another way, they simply misappropriated a domain name and used it to attract Internet users to offer them links to goods that compete with the Complainant’s, presumably for commercial gain (as click-through fees, advertising or otherwise). Given the use of the domain name made by the Respondents, such conduct falls within the type of bad faith registration and use contemplated by paragraph 4(b)(iv). In addition, it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondents that would not be infringing or tarnishing the Complainant’s mark.
The Panel finds for the Complainant on this third element of the test.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bancodobrasil.com>, be transferred to the Complainant.
Daniel J. Gervais Sole Panelist
Dated: January 22, 2008
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