NATIONAL ARBITRATION FORUM

DECISION

BANCO ITAÚ S.A. v. Daniel Tavares Filizzola

Claim Number: FA0803001155776

PARTIES

Complainant is BANCO ITAÚ S.A., Brazil (“Complainant”) represented by Gabriel Francisco Leonardos, Brazil. Respondent is Daniel Tavares Filizzola (“Respondent”), Brazil.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <itau.us>, registered with Godaddy.com, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Debrett G. Lyons (Chair), R.Glen Ayres and L.E. Montaury Pimenta as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 3, 2008; the Forum received a hard copy of the Complaint on March 5, 2008.

On March 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the domain name <itau.us> is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

A timely Response was received and determined to be complete on April 3, 2008.

On April 11, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Debrett G. Lyons, R. Glen Ayres and L.E. Montaury Pimenta as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar to the trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

In particular, Complainant states that it began trading in 1944 and today it is one of Brazil’s largest financial institutions with a net worth of R$13.2 billion, total assets of R$ 301.5 billion and approximately 13 million clients. Complainant’s parent company, Banco Itaú Holding Financeira S.A., is the 54th largest bank in the world.[1] Complainant itself is the second biggest private financial institution in Brazil and owner of the most valuable trademark (“ITAÚ”) in Brazil.[2]

Complainant accordingly asserts trademarks rights in “ITAÚ” through use and reputation.[3]

Moreover, Complainant is the owner of numerous trademark registrations including United States Trademark Registration No. 1,198,257 for word mark “ITAÚ” in class 36 for “banking services”. Complainant alleges that the domain name is identical to the trademark.

Complainant alleges that Respondent is not known by the domain name, does not conduct any business by reference to the trademark, nor has Complainant licensed or otherwise permitted Respondent to use the trademark.

Given that Respondent is domiciled in Brazil, Complainant argues that it is inconceivable Respondent had no knowledge of the Complainant’s business and trademark at the time of registration of the domain name and so implies that Respondent registered the domain name in bad faith.

Complainant submits that Respondent has further evidenced bad faith by:

· Linking a website corresponding with the domain name to sites owned by the Complainant or Complainant group companies, together with sites of Complainant’s competitors;

· Advertising that the disputed domain name is for sale;

· Offering to transfer the domain name to Complainant for a sum well in excess of respondent’s out of pocket costs in registering the domain name.[4]

· Respondent’s lack of nexus to the United States as required by the Policy.[5]

B. Respondent

On March 14, 2006, Respondent emailed the National Arbitration Forum explaining that he did not speak English well and did not have the money to use a lawyer to represent him. That same day, Mr. Michael Houle of the National Arbitration Forum replied to Respondent advising him that he did not require representation and providing a link to information to help in the submission of a Response to the Complaint. On April 2, 2008, Respondent again emailed the National Arbitration Forum saying: “Unfortunely i dont undestand very well what i have to do, and the lawyers are very expensive to this process, i never had bad faith like his lawyer told. Now i leave for the national arbitration decide”.

FINDINGS

To the extent that Respondent’s electronic submissions can be characterized as a Response to the Complaint, it is deficient because a hard copy was not received by the Response deadline, and the Response was not served on Complainant. The Panel would be at liberty to disregard the Response but in this case is prepared to admit it and treat it as a denial that Respondent acted in bad faith.[6]
Respondent registered the domain name on March 20, 2006.
Respondent is a resident of Brazil according to WHOIS information for the domain name.
Complainant has rights in the trademark, “ITAÚ”, through both use and registration.[7]
Pre-Complaint correspondence between the parties failed to resolve the dispute.

DISCUSSION

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is identical to the trademark. The addition of the ccTLD to the trademark and the omission from the domain name of the accent are trivial and have no influence on the issue of identity.[8]

Rights or Legitimate Interests

The Panel finds that the Complaint establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests.[9]

Respondent has not produced any evidence showing it was the owner or beneficiary of a corresponding mark.[10] There is no evidence that Respondent is commonly known by the disputed domain name. There is some evidence that the trademark has an ordinary meaning in an indigenous Brazilian Indian language[11] but Respondent has not advanced any argument that it has a legitimate interest in the domain name for that reason. Respondent has used a website corresponding with the disputed domain name to display links to other websites, including those of competitors in business with Complainant. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ (c)(ii), nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iv).[12]

The Panel finds that Respondent has no rights or legitimate interests in the domain name and so Complainant has satisfied the second element under the Policy.

Registration or Use in Bad Faith

Unlike the UDRP, the usDRP does not carry the additive requirements that a respondent both registered and used the domain name in bad faith. Evidence of registration, or of use, in bad faith in therefore enough to satisfy the Policy.

Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration or use of a domain name in bad faith and so the Panel considers it logical to first compare them to the facts of the case. They are:

(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 that 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; 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.

Respondent’s actions fall squarely within subparagraphs (i) and (iv). Respondent has made no bona fide use of the domain name. The name is “parked” and advertised for sale. The price set for its sale to Complainant, US$2000, is many orders of magnitude in excess of the likely registration costs. The Panel finds that Respondent’s intent to sell evidences bad faith under Policy ¶ 4(b)(i).[13]

Moreover, Respondent’s use of the domain name is likely to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark. Respondent’s website links to Complainant’s website, to websites of Complainant’s group companies, and to websites of Complainant’s competitors. A commercial gain can be implied from the likelihood that Respondent profits from “pay-per-click” revenue. The Panel finds that use to be evidence of use in bad faith under Policy ¶ 4(b)(iv).[14]

Complainant has satisfied the third and final element under the Policy.

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <itau.us> domain name be TRANSFERRED from Respondent to Complainant.

Debrett G. Lyons

R. Glen Ayres

L.E. Montaury Pimenta

Panelists
Dated: April 25, 2008.

[1] According to the July/2007 edition of “The Banker” magazine it has a market capitalization of R$110.9 billion.

[2] According to Interbrand research in 2007 the value of the trademark is an estimated R$ 8.076 billion.

[3] Complainant cites former UDRP decision in Banco Itau S.A. v F. Nazar (WIPO Case No. D2003-0454) as supporting its claim to reputation in the trademark. This Panel notes that case does not in fact decide that point however it is noteworthy as providing the only evidence of an ordinary meaning of the word “itau.” It translates into English as “black stone.”

[4] The exact amount shifting between US$300 and US$3000 and settling at US$2000.

[5] Rule 3(c)(ix)(3).

[6] See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.”).

[7] See Koninklijke KPN N.V. v. Telepathy Inc., WIPO Case No. D2001-0217 (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, WIPO Case No.D2002-0201("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

[8] See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to complainant’s TROPAR mark); see also Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the UDRP], even if there is no likelihood of confusion whatsoever”).

[9] See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

[10] See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

[11] Either the Guarani or Tupy language. See note 3 above.

[12] See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name within the parameters of UDRP ¶ 4(c)(i) or (iii) because respondent used the domain name to take advantage of complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with complainant, was not a bona fide offering of goods or services). In relation to Respondent’s banner advertisement offering the domain name for sale, see Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

[13] See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under [UDRP] Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where respondent offered the domain names for sale).

[14] See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where respondent directed Internet users seeking complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that respondent registered the domain name <statefarmnews.com> in bad faith because respondent intended to use complainant’s marks to attract the public to the web site without permission from complainant).