Banco Bradesco S.A. and Alvorada Cartões, Crédito Financiamento e Investimento v. Future Media Architects, Inc.
Case No. D2009-1780
1. The Parties
Complainants are Banco Bradesco S.A. and Alvorada Cartões, Crédito Financiamento e Investimento, each of Brazil, represented by Neumann, Salusse, Marangoni Advogados, Brazil.
Respondent is Future Media Architects, Inc. of the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Kenyon & Kenyon LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <finaza.com>, is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 23, 2009. On December 28, 2009, the Center transmitted by email to Moniker Online Services, LLC., a request for registrar verification in connection with the disputed domain name. On December 29, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact details for the registrant, and providing other details of the registration. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2010. The Response was filed with the Center on January 26, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on February 2, 2010. 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.
Subsequently, on February 4, 2010, Complainants' submitted to the Center, by e-mail, a supplemental filing addressing, among other things, a Benelux trademark registration relied on by Respondent, which Complainant characterized as either a “new fact[] or event[]” not known to Complainant or as not “available at the time the Complaint was filed”. Complainants also sought to rebut other statements in the Response. Respondent, in an e-mail message to the Center, objected to the supplemental submission, but also requested, should Complainants submission be considered, an opportunity to file its own supplemental submission.
In Procedural Order No. 1, dated February 11, 2010, the Panel, pursuant to its discretion under Rules 10 and 12: (1) granted Complainant's request to the extent that it presented new, pertinent facts that had not arisen, or responded to arguments or rebutted facts that could not have been reasonably anticipated, as of the time that the Complaint was filed and (2) granted Respondent until February 18, 2010 to file a supplemental submission limited to rebutting or responding to new facts or arguments raised. In light of the need to consider the additional filings, the Panel found that “exceptional circumstances”, within the meaning of Rule 15(b), warranted an extension of time until February 23, 2010 for forwarding its decision to the Center.
Respondent filed a supplemental submission on February 18, 2010.
4. Factual Background
Complainants are affiliated Brazilian banking companies that use the mark FINASA, for consumer finance and credit services, leasing services, and automobile financing services, among other things. Complainant Banco Bradesco S.A. acquired the FINASA mark through its acquisition of Banco Mercantil de São Paulo S.A., which began using the FINASA mark in the 1980s and remains (for the moment) the record owner, along with another of Complainants' affiliates, of a number of Brazilian trademark registrations for FINASA marks. Complainants also owns the <finasa.com.br> and <finaza.com.br> domain names.
Respondent registered the domain name <finaza.com> in May 2006. In August 2007, Banco Mercantil de São Paulo S.A. sent a letter to Respondent objecting to its registration of <finaza.com>. Respondent responded claiming priority in the United States.
5. Parties' Contentions
A. Complainants
1. The domain name is identical or confusingly similar to a mark in which Complainants have rights
Complainant Banco Bradesco S.A. is the primary company in the Bradesco Group, a group of well-known Brazilian banks. Complainant, Alvorada Cartões, Crédito, Financiamento e Investimento, is a member of the Bradesco Group and is in the process of combining with another company in the group, Banco Mercantil de São Paulo S.A which, in the 1980s, began offering financial services under the mark FINASA.
The FINASA mark is well known in the Brazilian market and is the subject of a Brazilian trademark registration. Complainants own numerous other trademark registrations that incorporate the term “finasa” as well as dozens of domain names, including < finaza.com.br> and <finasa.com.br>.
Respondent registered the domain name <finaza.com> on May 9, 2006. Respondent clearly is a typosquatter, changing the consonant “s” to “z”. The domain name is similar to the well-known FINASA mark.
2. Respondent has no rights or legitimate interests in respect of the domain name
“FINASA” is a coined term rather than a generic term or dictionary word in the Portuguese, English, French or Italian languages.
Respondent does not own trademark applications or registrations for FINAZA in the British Virgin Islands, United Kingdom, United States, or European Community, or an international trademark through the Madrid System.
Although Respondent does own a Benelux trademark registration for the mark FINAZA, this registration was applied for and granted after Complainants' letter to Respondent. There does not appear to be any connection between Respondent's activities and web site and the Benelux territories. Therefore, the registration is simply a “scam” – as is the content now included on the web site - intended to give an appearance of good faith to Respondent's activities.
3. The domain name was registered and is being used in bad faith
Respondent registered the domain name to prevent Complainants from using their mark in a domain name and to profit from it.
Respondent acquires and parks domain names, currently owning more than 100,000. A story in the Domain Name Journal reported that Respondent's business model gives it the opportunity to enjoy domain power. The Respondent is building a monopoly over thousands of domain names. On one day Respondent made 4,600 three-letter .biz domain names disappear from the market, completely wiping out the supply of these domain names.
Respondent knew or should have known of the existence of Complainants' trademark registrations and domain names, which were matters of public record, before registering the domain name. If Respondent was not actually aware of Complainants' rights, then it did not fulfill its responsibilities in registering the domain name.
Respondent also had actual knowledge of Complainants' rights because Complainants' counsel contacted Respondent in August and September 2007 by e-mail objecting to its use of the domain name.
In 2007, the domain name directed visitors to Complainants' competitors. In October 2009 that the “about us” page contained a reference to Respondent's Oxide search engine. Most recently, the domain name is used for a “finaza.com” web site that displays stories, under the title: “FINAZA outrageous people outrageous stories.” The meanings of the term “outrageous” include “shocking, corrupt, criminal, degenerate, gross, heinous and infamous, among others”. Linking these to a well-known trademark is highly detrimental to the mark.
In addition, a small entry on the web site displays “ads by Google”, indicating that the web site uses Google's AdSense program. This is intended to advertise the Respondent's services, attracting users to use these services or place their ads through this page. Therefore, an apparently innocent news page is in fact promoting the Respondent's business and resulting in profits obtained through the renown and fame of Complainants' FINASA trademark.
B. Respondent
1. Respondent's use of the domain name is not likely to cause confusion with Complainants' mark
Complainants have no rights in the mark FINAZA - with a “z”. The <finaza.com> domain name and the FINASA mark create distinct commercial impressions. “Finaza” has no meaning in any language and uses the letter “z”, which is rarely used in the English language, making the term particularly unique. The use of “.com” connotes that the domain name is a United States web site, which has no relevance to Brazil, where Complainants offer their services.
Respondent's web site offers extraordinary and thrilling stories, in English. It is unlikely that consumers seeking Complainants or Brazilian banking services would believe that the web site was related to Complainants.
Further, Complainants do not have a presence in the United States. Its mark and its renown are limited to Brazil and a Portuguese-speaking audience. Moreover, third parties, such as The Finaza Foundation, use the term “finaza”. And, the Google search engine does not recognize “finaza” as a misspelling of Complainants' FINASA mark.
2. Respondent has rights or legitimate interests in respect of the domain name
Respondent owns a Benelux registration for the mark FINAZA.COM, which it acquired in June 2008, prior to the filing of the Complaint. Further, Respondent has developed and operates a web site at the domain name entitled: “FINAZA: Outrageous People, Outrageous Stories.” The web site recounts true stories of extraordinary people and is intended to entertain and inspire. Use of the term “outrageous” is not detrimental. The development of this web site is consistent with Respondent's development of other web sites.
Because the Benelux registration has been a matter of public record since 2008, Complainants' ought to have been aware of it. In any case, the registration was obtained long before this Complaint was filed.
The fact that Respondent owns a large portfolio of domain names does not make its rights to the <finaza.com> domain name illegitimate. It is in the process of developing its domain names and its business model has been found by others to be legitimate.
Any prior display of advertising on the site associated with the domain name was only a temporary placeholder prior to the launch of the site. The links were not provided or selected by Respondent, but rather were created by the hosting service. Had Complainants advised Respondent of its objection to any of the links, it would have instructed the hosting service to remove them. Instead, Complainants falsely claimed that Respondent was engaging in criminal activity using “malware” on its site.
3. The domain name was not registered in bad faith.
Respondent has not engaged in bad faith. In contrast to the decisions relied on by Complainants, Complainants are not internationally known, the domain name differs from Complainants' mark, and Respondent has made no offer to sell the domain name.
Respondent has no intent or desire to trade on Complainants' name or reputation; it does not sell any of its domain names.
Complainants do not appear to offer their services anywhere other than Brazil, making it unlikely that Respondent would have actual knowledge of the FINASA mark.
4. Complainants are engaged in reverse domain name hijacking.
Despite knowing of Respondent's legitimate interest in the domain name, Complainants tried to intimidate Respondent by claiming that its site was being used in a “fraud scheme” to “download crimeware”. In response, Respondent's counsel denied the activity – the web site never offered any software for download or engaged in any other improper activity. Apparently, Complainants' counsel later acknowledged that these allegations were mistaken.
Complainants' failure to reference this correspondence is evidence of its bad faith in attempting to get Respondent to relinquish the domain name.
Respondent requests that the Panel find that Complainants are engaged in reverse domain name hijacking.
6. Discussion and Findings
A. Procedural Matters: Multiple Complainants
The Complaint identifies two Complainants: Banco Bradesco S.A. and Alvorada Cartões, Crédito Financiamento e Investimento. Complainant Banco Bradesco S.A. is the primary company in the Bradesco group of banking companies, which acquired the owner of the FINASA mark. Complainant Alvorada Cartões, Crédito Financiamento e Investimento (“Alvorada Cartões”) is a part of the Bradesco group and is in the process of becoming the corporate successor to the acquired bank.
Neither the Policy nor the Rules provide for multiple complainants. In some cases, panels have determined that the identified complainant had not demonstrated the requisite ownership or control of the mark at issue. In other cases, panels have determined that the complainant was properly acting on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint.
In the absence of a uniform practice, the Panel accepts the designation of both entities here. However, even where multiple complainants are appropriate, the failure to distinguish among the complainant entities, does present issues, as when Complainants request that a domain name registration be transferred to “Complainants”, without identifying a specific entity to receive the transferred registration.
B. Substantive Discussion
In order to prevail, Complainants must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainants have rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
(1) Identical or Confusingly Similar
Complainants have established rights in the mark FINASA by virtue of the evidence of the Brazilian trademark registrations for the FINASA mark.
The disputed domain name is not, as Complainants rightly acknowledge, identical to Complainants' mark. The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates a variation of the mark, but does not agree that such a finding is or should be automatic.
Here, the only difference is the use of the letter “z” in place of the “s” in FINASA (as well as the addition of the generic top-level domain “.com”, which is not relevant for these purposes). Complainants argue that its mark is so unique that consumers will immediately associate the domain name with the FINASA mark. Respondent asserts that the term “finaza” has no meaning in any language and contends that because use of the letter “z” is relatively rare in the English language, the domain name has a particularly unique quality that results in a commercial impression that is distinct from the FINASA mark.
On balance, the Panel finds that the domain name and mark look and sound similar and neither have a strong connotation or any recognizable meaning in English. Because the differences are relatively minor, the domain name is not effectively differentiated or distinguished from the FINASA mark. The Panel does not discuss under the first element the other factors cited by Respondent, which relate to the likelihood of confusion, due to its view that this factor generally (and here) involves a comparison of the disputed domain name and the mark at issue. See, e.g., Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.2 (generally, test for confusing similarity compares the trademark and the domain name).
Accordingly, the Panel finds that Respondent's domain name is confusingly similar to a mark in which Complainants have rights.
(2) Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainants may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a primafacie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples by which a respondent might demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you 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 (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 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.
The Panel finds that Respondent has rebutted the prima facie case established by Complainants.
The Panel is cognizant of other decisions (including those of this Panel) finding that “parking” a web site with a service that provides links to third party sites, including those that compete with complainants is not bona fide offering of goods and services. However, under the circumstances presented here, the Panel finds that Respondent's prior use of the domain name, first parking it with the hosting service, then linking to Respondent's Oxide search engine, when considered in combination with its current, actual use of the web site to display content, do constitute bona fide use.
(3) Registered and Used in Bad Faith
In light of the conclusion that Complainants have not established the second element, it is not necessary to address the issue of bad faith. However, in the interests of providing a complete explanation of its reasoning, the Panel notes that Complainants also failed to establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Here, Complainants have provided no evidence that Respondent's conduct falls within any of these circumstances.
There is no evidence that Respondent's purpose in registering the domain name was to sell it to Complainants; the evidence is, in fact, to the contrary. Complainants do not allege that Respondent has engaged in a pattern of cybersquatting; although pointing out that Respondent has amassed a substantial portfolio of domain names. The Complainant and Respondent do not appear to be business competitors, therefore it does not appear that Respondent registered the domain name to disrupt a competitor's business.
While Respondent may have used and be using the domain name for commercial gain, it does not appear that it is intentionally trying to attract those who would otherwise be seeking Complainants' site by creating a likelihood of confusion.
Accordingly, the Panel finds that Complainants have not established that Respondent registered and is using the domain name in bad faith.
(4) Reverse Domain Name Hijacking
Respondent asserts that Complainants are engaged in reverse domain name hijacking. Reverse domain name hijacking is defined in Rules paragraph 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel views the question of Respondent's rights and legitimate interests in the domain name as a close one. Accordingly, it concludes that the Complaint was not an attempt at reverse domain name hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek Sole Panelist
Dated: February 23, 2010
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