Banco de Chile v. Eric S. Bord

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco de Chile S.A. v. Eric S. Bord, Esq.

Case No. D2001-0695

1. The Parties

The Complainant is Banco de Chile S.A. of Ahumada 251, Santiago, Chile, represented

by Mr. Marino Porzio of Porzio, Rios & Associates of Santiago, Chile.

The Respondent is Eric S. Bord, Esq., c/o Berry, Appleman & Leiden, 1776

I Street, NW Ninth Floor, Washington, D.C. 20006, United States of America,

represented by Jonathan Bender, Esq. of Law Office of Jonathan Bender, P.C.,

Washington, D.C.

2. The Domain Name and Registrar

This dispute concerns the domain name <bancochile.com>.

The Registrar is Network Solutions, Inc., of Herndon, Virginia, United States

of America.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on May 23, 2001, and in hardcopy

on May 31, 2001. The Complaint was acknowledged on May 28, 2001. That day registration

details were sought from the Registrar. On June 1, 2001, the Registrar confirmed

that the disputed domain name is registered in the name of the Respondent and

that the Registrar’s 5 Service Agreement (which incorporates the Policy) is

in effect. On June 11, 2001, the Center satisfied itself that the Complainant

had complied with all formal requirements (including payment of the prescribed

fee) and formally dispatched to the Respondent copies of the Complaint by post/courier

(with enclosures) and by email (without attachments). The Center also included

with the material dispatched to the Respondent a letter dated June 11, 2001,

containing notification of the commencement of this administrative proceeding

and sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was June 30, 2001. A Response

was filed on June 30, 2001, by email and on July 4, 2001, in hardcopy.

On July 30, 2001, the Complainant filed unsolicited additional material, namely

copies of two domain name decisions dated July 17, 2001, concerning the domain

names <bancodechile.com> [1] and <bancochile.net>

[2].

On August 1, 2001, the Respondent having sought the appointment of a three-member

panel, the Center notified the parties of the appointment of the undersigned

to serve as panelists, each having submitted a Statement of Acceptance and Declaration

of Impartiality and Independence. That day, the Center transmitted the case

file to the panel and notified the parties of the projected decision date of

August 15, 2001.

The panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Center discharged its responsibility under

paragraph 2(a) of the Rules to employ reasonably available means calculated

to achieve actual notice to the Respondent of the Complaint; the Response was

filed within the time prescribed by the Rules and the administrative panel was

properly constituted.

The language of the proceeding was English.

4. Factual Background (uncontested facts)

The Complainant and its activities

The Complainant was incorporated under the name "Banco de Chile"

in 1893, the result of a merger between the Banco de Valparaíso (established

in 1855), the Banco Nacional de Chile (established in 1865) and the Banco Agrícola

(established in 1869).

It is the main and largest bank in Chile with a total capital of approximately

US$500 million and 176 offices throughout that country. It has two subsidiaries

in the United States, (in New York and Miami) and agencies in Buenos Aires (Argentina),

Mexico City (Mexico), Sao Paulo (Brazil) and Frankfurt (Germany).

"Banco de Chile" or "Banco Chile", as it is also commonly

called, has been the Complainant’s trade name for over a century.

The Complainant is the proprietor of 141 trademark or service mark registrations

consisting of or containing the words "Banco de Chile". The trademark

BANCO DE CHILE is registered in Argentina, Brazil, Mexico, Peru, Panama, Venezuela

and Italy.

The Complainant has also registered and is using the domain names <bancodechile.net>,

<bancodechile.org>, <bancochile.org>, <bancochile.cc>, <bancochile.cl>,

<bancochile-corporativa.cl>, <bancochile-credichile.cl>, <bancochile-empresas.cl>,

<bancochile-inversiones.cl>, <bancochile-personas.cl>, <bancochileinversiones.cl>,

<bancochilewap.cl>, <cclbancochile.cl>, <cicebancochile.cl>,

<inversionesbancochile.cl>, <sirbancochile.cl>, <wapbancochile.cl>,

<bancodechile.cl>, bancodechilewap.cl>, <inversiones-bancodechile.cl>,

<wapbancodechile.cl> and <banchilefactoring.cl>.

The Respondent and his activities

The Respondent is a lawyer and entrepreneur with long experience in Latin American

business and public policy.

From 1985 to 1987, and from 1991 to 1994, the Respondent served as a senior

adviser to former President Jimmy Carter and the Carter Center. In that capacity,

among other things, he assisted President Carter and other members of President

Carter's senior staff to develop and implement bipartisan U.S. foreign policy

options for Latin America. Likewise, he accompanied President Carter on missions

to Central America, Venezuela, and Mexico. In February 1986 at the Carter Center,

the Respondent coordinated a major international conference about Latin America’s

debt crisis, chaired by former Presidents Jimmy Carter and Gerald Ford. Participants

included leading economists and finance ministers from throughout the Western

Hemisphere, including Mexico, Chile, Venezuela, Brazil, and Argentina. The Respondent

remained in contact with many of the participants throughout his employment

at the Carter Center.

In May 1993, while serving as a full-time adviser to President Carter and the

Carter Center in Atlanta, Georgia, the Respondent founded The MBI Group, Inc,

(MBI) a Georgia Corporation chartered to do business in, among other things,

international trade, sales, and marketing. The Respondent created MBI after

the North American Free Trade Agreement (NAFTA) was enacted, and he saw a window

of opportunity during which he could undersell Mexican manufacturers in the

construction industry by purchasing certain material from providers in the U.S.,

Costa Rica, and Ecuador, and reselling it in Mexico. As president of MBI, the

Respondent was able to raise capital from a variety of sources, and to use the

capital to purchase inventory from these providers for sale and distribution

in Mexico. MBI also actively explored marketing arrangements with the leading

producer of coffee in the Mexican state of Oaxaca, as well as the feasibility

of purchasing and expanding a sales network for medical supplies.

In August 1994, while the Respondent was in Mexico as an international election

monitor with the Carter Center, he sensed that a major currency devaluation

was on the horizon. Accordingly, he moved quickly to liquidate MBI's inventory

and to pay its creditors. When the Mexican peso was devalued in December 1994,

the business plan was no longer feasible. Nevertheless, MBI's volume of business

during its existence totaled approximately $1.5 million dollars.

After dissolving MBI, the Respondent founded an immigration law firm, but never

stopped thinking about business ventures that he might start in Latin America.

In 1998, he heard a radio program that discussed the seemingly unlimited commercial

potential of the Internet. One of the commentators on the program noted that

domain names were already becoming scarce, and entrepreneurs would be wise to

register any domain they think they might use in a business venture as soon

as the idea for use entered their mind. The Respondent took this advice to heart,

and registered a small series of generic words and phrases in Spanish that he

thought he might one day use in a business venture. The domain names he registered

included "financiar" ("to finance" in English), "preferido"

(preferred), "tractores" (tractors), "vidrios"

(glass/windows), "camionetas" (pickup trucks), and "telefonocelular"

(cellular telephone).

Also included was the disputed domain name, which the Respondent registered

on August 27, 1998 and has since renewed. He has made no active use of it.

5. Parties’ Contentions

A. Complainant

Identity / confusing similarity

The disputed domain name is identical or confusingly similar to the Complainant's

trademark BANCO DE CHILE.

Legitimacy

The Respondent has no right or legitimate interests in the domain name. The

Respondent is an individual called Eric S. Bord, an Attorney at Law, from Silver

Spring, United States. He does not operate any business or have any interest

in any company using the name "Banco de Chile", specifically any business

offering banking, financial or investment services.

The Respondent is not a licensee of the Complainant or in any other way authorized

to use the Complainant's trademarks. Mere registration does not establish rights

or legitimate interests in the disputed domain name.

Moreover, the existence of registered trademarks consisting of or containing

the expressions "Banco de Chile", which have the character of "well-known"

trademarks, makes it illegal for anybody else using them. In fact, according

to the Chilean Law on Industrial Property [3],

the unauthorized use of a registered trademark constitutes a crime.

Furthermore, according to the Chilean Law on Banking activities

[4], it is illegal to engage in banking activities without

the prior authorization of the National Superintendence of Banks and Financial

Institutions. Such permission can be obtained after proof of fulfillment of

a number of complex requirements. Without such authorization nobody can use

in any manner whatsoever the expression "Bank" for identification

of activities. Infringement of these rules amounts to a crime which is liable

to be sanctioned with jail penalties.

Bad faith

The domain name has been registered and is being used in bad faith.

At least two circumstances of paragraph 4 (b) of the Policy are present, namely

those of subparagraphs (ii) and (iv).

4 (b) (ii): the Respondent’s registration of the disputed domain name makes

it impossible for the Complainant to register its own trading name and well-known

trademark BANCO DE CHILE also as a ".com" domain name, in addition

to the national registrations ".cl" which the Complainant already

owns. This situation is causing the Complainant an important limitation in its

legitimate access to the Internet and damages its communication possibilities

in this context.

4 (b) iv): The registration of the disputed domain name in the name of the

Respondent clearly attracts clients or potential clients of the Complainant

to a wrong web site "...by creating a likelihood of confusion with the

Complainant's mark..." and in this case also with the Complainant's trading

name. In fact, it is only natural that anybody willing to get in touch with

the Chilean Bank via the Internet may first attempt to try to use the presumed

natural web site of Banco de Chile and will thus be directed to the Respondent's

web site.

The registration of a well-known trademark as a domain name equivalent to that

trademark does constitute bad faith [5]. The

same has been found in connection with a trading name registered as a domain

name [6].

It has also been found that the existence of an identical domain name to the

Complainant’s trademark constitutes a block, prevents and makes impossible Complainant’s

access to Internet in the category of ".com". In addition it leads

Internet users, including Complainant's actual or potential clients to think

that Complainant does not have a web site or it is not technically able to keep

one [7].

Moreover, when a domain name is obviously connected with the Complainant and

its products, its very use by someone with no connection with the Complainant

suggests "opportunistic bad faith" [8].

The Respondent has registered other domain names, many of which clearly correspond

or are confusingly similar to the trading name of well-known banking institutions,

or otherwise well-known public institutions and well-known trademarks, especially

in Latin America. The most relevant are the following:

<bancobras.com>

<aeromex.com>

<buenhogar.com>

<argentel.com>

<telemex.com>

The appearance in the above search, among others, of names such as bancobras.com,

the Spanish name for the Bank of Brazil, and aeromex.com, abbreviation of a

well-known Mexican airline, is enough evidence of Respondent’s bad faith when

registering the disputed domain name.

B. Respondent

The Respondent registered the generic domain name <bancochile.com> in

1998, along with a handful of other generic names such as "financiar"

("to finance" in English), "preferido" (preferred),

and "tractores" (tractors), with the intention eventually to

start one or more web-based businesses in Latin America. Because comparatively

few Latin Americans had web access in 1998, he decided to wait until Latin America

became sufficiently "wired" before developing any web-based businesses.

He has prepared for the eventual launch of such ventures by closely monitoring

trends in Latin American web access and use. He has never sold or tried to sell

the disputed domain name, or any domain name, to anybody.

The Complainant's mark, "Banco de Chile," which translates to "Bank of Chile,"

is generic. Putting two generic terms together, such as "bank" and

"Chile," does not make a mark distinctive. In Pet Warehouse v.

Pets.Com, Inc [9]. the panel rejected

the assertion that "Pet Warehouse" was distinctive. The panel noted

that each of "pet" and "warehouse" is a generic term and that while it is possible

for such a name to acquire distinctiveness,

"the burden on the party making a claim to distinctiveness or secondary

meaning in such a case is high because of the disinclination of the courts to

take words of ordinary meaning out of common usage." [10]

See also Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES

Marketing Group Inc [11]:

"Where the domain name and trademark in question are generic. . . the

rights/interests inquiry is more likely to favor the domain name owner[;] [t]he

ICANN Policy is very narrow in scope; it covers only clear cases of "cybersquatting"

and "cyberpiracy," not every dispute that might arise over a domain name."

[12]

The Complainant here seeks to do what the Pet Warehouse panel warned

of: take two words of ordinary meaning out of common usage.

The Complainant offers no survey evidence to try to prove its bald allegation

that it is inconceivable for anybody in Chile, from the general public, not

to have heard of the name Banco de Chile and automatically identify it as a

major banking institution it is, nor any affidavits from experts in relevant

fields -- nor even affidavits from members of the bank. Indeed, the Complainant

submits no affidavits from anybody, resting instead on the conclusory assertions

of its lawyers [13].

Moreover, the Complainant demands not only that this panel accept that every

single man, woman, and child in Chile associates the phrase "Banco De Chile"

("bank of Chile" or "Chilean bank" in English) with the Complainant

and only the Complainant, but expects the panel to believe that the same is

true "in economic and financial circles" throughout the world:

"In economic or financial circles, whether in Chile, Latin America,

North America, Europe or Asia, this knowledge is absolute and beyond

any doubt." [14] (emphasis

added).

Again, the Complainant provides no surveys or affidavits -- nor any evidence,

for that matter -- in support of this remarkable statement.

Numerous other banks doing business in Chile have names containing the words

"banco" and "Chile," including Banco Del Estado De Chile,

(in English, "Bank of the State of Chile" or "Bank of Chile"),

Banco Central Del Chile ("Central Bank of Chile"), Banco Santander-Chile,

and Banco Exterior De Chile ("Exterior Bank of Chile"). Additionally,

some foreign banks append "Chile" to their names for their Chilean

branches, e.g., "BankBoston Chile."

Legitimacy

The Complainant argues that the Respondent could have no legitimate interest

in the domain name because "Mr. Bord, as an Attorney at Law, does not operate

any business or have any interest in any company using the name 'Banco de Chile',

specifically any business offering banking, financial or other investment services."

The Complainant misapprehends both its burden to show that the Respondent lacks

legitimate rights and interests in the domain name, and the Respondent’s ability

to operate a business.

The Complainant argues, apparently, that if the Respondent does not currently

run a banking business under the name "Banco de Chile," he could not have a

legitimate interest in the domain name. Complainant misstates the law. The Policy

states at Paragraph 4(b)(ii) that mere preparation to use the domain

name in connection with a bona fide offering of goods and services constitutes

a legitimate interest in the name. Indeed, it has been held that even the most

minimal preparation to use a domain name constitutes a legitimate interest in

the name. In Shirmax Retail Ltd./Détaillants Shirmax Ltée v.

CES Marketing Group Inc [15] for instance,

the respondent "argue[d] that a mere idea for a bona fide business application

is sufficient." The panel agreed, finding that "the admittedly perfunctory

preparations made by [respondent] for use of the domain name thyme.com in bona

fide commerce are sufficient to demonstrate the rights or legitimate interests

required by paragraph 4(a)(ii)."

The Complainant likewise appears to argue that the Respondent, "as an Attorney

at Law," could have no interest in starting or running a business. In reality,

of course, one’s status as an attorney hardly precludes one from engaging in

other commercial activities. In what should be considered indicia of the Complainant's

bad faith, the Complainant failed entirely to investigate the Respondent’s possible

interest in the disputed domain name. Neither the Complainant nor its legal

counsel ever contacted the Respondent to try to learn about his background or

possible interest in the disputed domain name. Had the Complainant troubled

itself to conduct the most basic pre-filing investigation, it would have learned

that the Respondent has a rich history of involvement in Latin American business,

diplomacy, and political reform.

The Respondent’s registration as domain names of such other generic names as

<bancobras.com> is irrelevant because the Complainant claims no interest

in these names. More to the point, however, the Complainant attempts to deceive

this panel with respect to the domain names’ meanings. For instance, the Complainant

contends that bancobras.com is "the Spanish name for the Bank of Brazil."

This is not true. The Spanish name for the Bank of Brazil would be "Banco

De Brasil," not "BancoBras." Moreover, the Complainant fails

to point out the obvious other meaning of "bancobras," that of a conflation

of the terms "banco" and "obras," which means roughly "Work

Bank." "Work Bank," a name that would fit well a bank focused

on construction finance, is exactly what the Respondent intended when he registered

that domain name.

One of the domain names registered by the Respondent was the disputed domain

name <bancochile.com>, which the Respondent believed to be the most generic

name possible for a Chilean Bank. His prior business experience involved arbitrage

in Latin America, and banking seemed a natural extension of his interests and

experience. Although the Respondent had never traveled to Chile, it is among

the nations of Latin America that has long interested him. Moreover, Chile had

recently liberalized its laws regulating entry into its banking industry.

In 1998, however, very few Latin Americans had access to the World Wide Web.

Accordingly, there would have been no commercial sense in starting an Internet

business at that point. Thus, the Respondent chose not to start the web-based

venture in Latin America until a significant number of Latin Americans had Web

access. Since August 1998, the Respondent has closely monitored the penetration

of the web and Internet business in this region of the world. Only recently

has he begun to see evidence that access is beginning to reach such levels.

For instance, he noted with interest that the Cisneros Group launched AOL Latin

America, a joint venture with America Online, last year. [While in Venezuela

with President Carter, the Respondent had attended meetings with Gustavo Cisneros,

president and CEO of the Cisneros Group]. The Respondent believes that this

as an indication that Latin America’s connection to the Internet community,

until now largely nonexistent, will begin to accelerate.

In short, the Respondent has prepared to use the domain name in the only commercially

sensible manner given the relative lack of Web access in Latin America until

very recently -- by watching and waiting. His preparation has included continual

review of leading periodicals and journals addressing Latin American economic

conditions, and of U.S. Department of State Country Commercial Guides on the

developing economies in the region. Among the facts that have persuaded him

that the time is not yet right to start a web-based business in Chile are that

despite having Latin America’s most advanced economy, and the greatest Internet

penetration in the region, Internet users are less than 17% of the population,

and 76% of homes and 22% of small businesses do not have computers. Moreover,

only 7% of those who are Internet users shop on-line. Finally, credit card penetration

in Chile is only at 8-11% [16]. While Internet

use is growing rapidly in Chile, these figures are still low compared to the

U.S. where many Internet start-ups continue to have a difficult time making

a profit.

The Complainant's allegations concerning the need to register with the Chilean

government before opening a bank, and the Complainant's description of the alleged

penalties for trademark infringement in Chile, do nothing to change the legitimacy

of the Respondent’s interest in the domain. As noted earlier, the regulatory

law that the Complainant cites in fact liberalized the requirements for obtaining

permission to bank in Chile. That the Respondent might face bureaucratic obstacles

to doing business does nothing to change the legitimacy of his interest in the

domain.

The Complainant's contentions about possible violations of Chilean trademark

law are likewise inapposite. As has already been noted, Complainant's mark is

generic, and numerous other banks exist with extremely similar names. If the

Respondent’s eventual use of the disputed domain name causes the Complainant

to believe that its trademark is being infringed, the Complainant must look

to the courts of Chile or other relevant national jurisdictions to adjudicate

its claim.

Because the Complainant has not demonstrated that the Respondent has no rights

or legitimate interests in the disputed domain name, the Complaint must be dismissed.

Bad faith

To justify transfer of the domain name, Complainant must show both bad faith

registration and use: paragraph 4(b)(ii). The Complainant can show neither.

The Respondent registered the disputed domain name in good faith as a tool

for a possible business venture, and his only "use" of the domain name has been

to hold it until commercial use becomes viable. He was unaware of the existence

of Banco De Chile when he registered the domain name. Moreover given the ultra-generic

character of <bancochile.com>, he expected – and continues to expect --

that very little possibility existed that using <bancochile.com> would

infringe any other company’s trademark.

By presenting no argument in support thereof, the Complainant concedes that

two of the four factors listed in Paragraph 4(b) as evidence of bad faith do

not apply to the respondent, 4(b)(i) and (iii).

As to 4(b)(ii), the Respondent did not register the disputed domain name to

block the Complainant from reflecting its mark in a corresponding domain name,

much less engage in a pattern of doing so.

The Complainant's mark is BANCO DE CHILE, not "Banco Chile." The Respondent

has not registered <bancodechile.com> and is not blocking the Complainant’s

ability to reflect its mark in a domain name. As the panel in Jules I. Kendall

v. Donald Mayer Re skipkendall.com [17]

noted in dismissing the complaint before it:

"Respondent is not engaged in a pattern of conduct that prevents the owners

of trademarks from reflecting the mark as a domain name. Only one domain name

was registered; there was no attempt to register multiple variations of the

Complainant’s [mark] or to occupy all versions of the [mark] in multiple top

level domains."

If some other party is blocking Banco De Chile's access to <bancodechile.com>,

the Complainant must look to that other party for relief -- not the Respondent.

Moreover, paragraph 4(b)(ii) requires that a party have registered the domain

name "in order to" block a trademark owner's ability to reflect its mark in

a domain name. The true ".com" variant of Complainant's "Banco De Chile" mark,

<bancodechile.com>, was registered by one Adolfo Oviedo of Costa Rica

more than six months after the Respondent registered <bancochile.com>.

Mr. Oviedo registered <bancodechile.com> in March 1999. Any person

who wanted to extort or otherwise harm the Complainant would surely have registered

<bancodechile.com> if the domain was available. That domain was, in fact,

available to the Respondent when he registered the disputed domain name and

it was available to him for many months thereafter -- yet the Respondent did

not register <bancodechile.com>. Indeed, he has registered no other domain

name containing the words "banco" and "Chile."

In any event paragraph 4(b)(ii) requires that a party have engaged in a pattern

of registering domains to prevent the complaining mark owner from reflecting

its mark in a domain [18]. A single instance

logically cannot constitute a pattern, and the Complainant alleges only a single

instance of such behavior. Thus, the Complainant does not even allege -- much

less prove -- facts sufficient to warrant a finding under Paragraph 4(b)(ii).

As to 4(b)(iv), the Respondent has not used the disputed domain name to attract

consumers to a website or other location.

The Respondent has not yet used the disputed domain name to point to a website.

Indeed, he has not used the domain name in any manner, including e-mail. Accordingly,

the Complainant's claim under Paragraph 4(b)(iv) must fail. Moreover, because

the Complainant could have learned that no website existed at the domain name

by simply pointing a browser to the domain, the Complainant's misstatements

must be seen as further evidence of its bad faith.

Because the Complainant has not shown that the Respondent has registered and

used the domain name in bad faith, the Complaint must be dismissed.

Bad faith on the part of the Complainant

The Respondent respectfully asks this panel to declare in its decision, pursuant

to Rule 15(e), that the Complaint was brought in bad faith. The Complainant

presented no evidence that could lead to a finding of bad faith registration

and use of the disputed domain name, and – viewed most charitably -- failed

entirely to investigate whether the Respondent had rights or legitimate interests

in the disputed domain name.

"The fact that [Complainant] filed the Complaint without any evidence of Respondent's

bad faith registration or use of the domain name, and apparently without investigating

whether Respondent had rights or legitimate interests in the domain name, is

indicative of bad faith." [19]

Aggravating matters further, the Complainant has made several misrepresentations

of material fact in its Complaint.

Had the Complainant taken the time to try to contact the Respondent before

filing its Complaint, the Complaint might not -- and certainly should not --

have been filed. As it is, the Complainant has forced the Respondent to spend

thousands of dollars in legal fees and arbitration costs to defend against a

baseless Complaint. Accordingly, to deter other prospective Complainants from

pursuing similarly reckless and destructive paths, this panel should declare

that the Complaint was brought in bad faith and constitutes an abuse of the

administrative proceeding.

Conclusion

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove (1) that

its trademark is distinctive, (2) that the Respondent has no rights or legitimate

interests in the disputed domain name, and (3) that the Respondent registered

and is using the domain name in bad faith. If the Complainant fails to prove

even a single factor, the complaint must be dismissed [20].

The Complainant has proved none. Indeed, with regard to bad faith, the Complainant,

whether negligently or intentionally, has failed even to allege facts that,

if proven, would fall within any of the factors listed in paragraph 4(b). Accordingly,

this panel should dismiss the Complaint. Furthermore, because the Complainant

has attempted to mislead this panel on several occasions in its Complaint and

has failed to make an adequate pre-filing investigation, this panel should find

that the Complaint was filed in bad faith.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the panel must decide this 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.

Procedural issue

The panel has had regard to the supplementary material provided by the Complainant

because the two decisions were not available when this Complaint was filed.

Substantive issues

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name 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 interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

Rights

The words "banco de chile" are descriptive, meaning "bank of

Chile". Descriptive words are nevertheless capable of becoming distinctive,

as the Respondent acknowledges. Here, the Complainant has provided evidence

in the form of advertising material and examples of its annual reports that

those words have, through use by the Complainant for many years, become distinctive

of the banking and other financial services provided by the Complainant, the

main and largest bank in Chile. No other bank in Chile is known as Banco de

Chile. BANCO DE CHILE is a trademark that has been registered by the Complainant

in Chile and other countries.

In Federal Court of Canada v. federalcourtofcanada.com [21]

a three-member panel found the complainant to have common law trademark rights

in the descriptive name Federal Court of Canada based on extensive and continuous

use, that name having been conferred by statute and the court being the only

one by that name in Canada.

The panel is satisfied that the Complainant has rights in the trademark BANCO

DE CHILE.

The Complainant says it is commonly called banco chile but this does not establish

that that name is used by the Complainant as a trademark. That name is incorporated

in some of the Complainant’s domain names but there is no evidence that any

of those domain names, even if they have become trademarks, were used as trademarks

before the Respondent registered the disputed domain name.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy

[22].

The test of confusing similarity under the Policy, unlike trademark infringement

or unfair competition cases, is confined to a consideration of the disputed

domain name and the trademark [23]. Here

the disputed domain name incorporates the two most significant words of the

Complainant’s trademark BANCO and CHILE, omitting the preposition DE, which

is irrelevant, phonetically and intrinsically.

The panel finds the disputed domain name is virtually identical and confusingly

similar to the Complainant’s trademark BANCO DE CHILE. The Complainant has established

this element.

Illegitimacy

While the Complainant must prove the absence of rights or legitimate interests

in the disputed domain name on the part of the Respondent, paragraph 4(c) of

the Policy specifies circumstances, any of which, if proved, will demonstrate

a Respondent’s rights or legitimate interests to the domain name in question.

Those circumstances show that the kind of right or interest in a domain name

which the Policy recognizes as legitimate is an interest of a proprietary nature,

such as may be acquired by generating goodwill through use of the domain name.

It is not necessary that a respondent have yet acquired such an interest: demonstrable

preparations to use the domain name which would lead to the acquiring of such

an interest are sufficient – paragraph 4(c)(i).

Mere registration and payment of the registration fee cannot give rise to a

legitimate interest in a domain name as against the owner of a trademark to

which the domain name is identical or confusingly similar, since registration

of the domain name is subject to the Policy.

The Respondent is undoubtedly interested in Latin American affairs in the sense

that he keeps abreast of economic and political developments affecting that

region. He has had "a rich history of involvement in Latin American business,

diplomacy and political reform" and he may possibly recommence one or more

businesses there. He registered the disputed domain name in 1998 for possible

use in the future in connection with a web-based banking business in Chile but

he has not made any actual use of it at all. He is holding it while "watching

and waiting" for a propitious time to use it.

The Respondent relies on the "admittedly perfunctory preparations"

which were held sufficient to demonstrate rights or legitimate interests in

Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing

Group Inc [24]. In that case the respondent

had developed other web sites and had registered other, related domain names

it intended to develop in conjunction with the domain name under consideration.

It had also used the domain name to redirect Internet users to another site.

The panel also took into account in that case when considering the issue of

legitimacy that the rights/interests inquiry is more likely to favor the domain

name owner where the domain name and the trademark in question are generic,

"and in particular where they comprise no more than a single, short,

common word".

Here the trademark is not generic. It is a combination of common words that

has become a distinctive combination. The Respondent knew in 1998, when he registered

the disputed domain name, that Chile had recently liberalized its laws regulating

entry into its banking industry. He has nevertheless done nothing (on the material

before the panel) towards satisfying those regulatory requirements, to put himself

in a position to make use of the disputed domain name in connection with a lawful

web-based banking business in Chile as soon as he judges the country to be sufficiently

"wired". The panel finds no "demonstrable preparations to use"

the disputed domain name, as required by paragraph 4(c)(i).

Even if, contrary to this finding, watching and waiting could amount to demonstrable

preparations to use, the panel does not accept that the Respondent could use

the disputed domain name in connection with any offering of services in Chile

(as he has stated he intends to do) without either infringing the Complainant’s

mark (if the business involves banking) or misleading the public (if the business

does not involve banking) or both. Such an offering would not be bona fide.

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of the disputed domain name.

The panel finds the Complainant has established this element. The Respondent

has no rights or legitimate interest in the disputed domain name.

Bad faith registration and use

The Complainant must prove both bad faith registration and bad faith use: paragraph

4(a)(iii). Paragraph 4(b) sets out (expressly without limitation) four sets

of circumstances, any one of which, if proved, shall be evidence of both bad

faith registration and use. It is open to a complainant to satisfy paragraph

4(a)(iii) in other ways.

The Complainant submits "at least" two elements of paragraph 4(b)

are present, namely 4(b)(ii) and 4(b)(iv).

As to 4(b)(ii), the Complainant on July 17, 2001, obtained a ruling from another

panel that the domain name <bancodechile.com> be transferred to it

[25]. Subject to any litigation that might overturn that

ruling, the Complainant will be able to reflect its trademark in the dot com

domain. The Respondent’s registration of the disputed domain name <bancochile.com>

cannot and could never have prevented the Complainant from reflecting its trademark

BANCO DE CHILE in the dot com domain. This element is not present.

As to 4(b)(iv), the Respondent has no web site and has made no active use of

the disputed domain name. This element is not present.

A finding of bad faith may nevertheless be made where the Respondent "knew

or should have known" of the registration and use of the trademark prior

to registering the domain name [26]. In

light of the extensive experiences of the Respondent in relation to Latin American

affairs, his long interest in Chile and his knowledge in 1998 that the regulation

of banking in Chile had recently been liberalized, even though he has never

been to Chile, it is difficult to accept his claim that he did not know of the

trademark BANCO DE CHILE before he registered the disputed domain name.

Even if his claim to lack of actual knowledge were accepted, the question remains

whether the Respondent should have known of the trademark. The nature of the

industry is such that there are very few suppliers of banking services. As the

Respondent himself submits, many of those operating in Latin America in general

and in Chile in particular have names which incorporate the word BANCO and the

name of the country. The descriptive nature of the disputed domain name requires

that it be used, if it is to be used fairly and without any misleading connotations,

in connection with banking and in connection with Chile. That is in fact the

kind of business the Respondent had in mind.

The Respondent, an attorney, admits to some, albeit little, knowledge of trademark

law. It would have been elementary for someone with even little knowledge of

trademark law contemplating operating a possible web-based banking business

in Chile to have conducted a registered trademark search in that country before

selecting for registration a domain name which incorporates the words BANCO

and CHILE. Had he troubled himself to conduct this most elementary investigation,

he would have learned of the registered trademark BANCO DE CHILE.

The panel accordingly finds that the Respondent should have known of the trademark

BANCO DE CHILE before registering the disputed domain name. Hence the panel

finds the disputed domain name has been registered in bad faith.

The ‘use’ requirement has been found not to require positive action, inaction

being within the concept in certain circumstances [27].

The leading case on passive use [28] emphasized

that all the circumstances of the case must be considered. In that case passive

holding was held to amount to acting in bad faith where:

(i) the Complainant’s trademark had a strong reputation and was widely known;

(ii) the Respondent provided no evidence of any actual or contemplated good

faith use by it of the domain name;

(iii) the Respondent had taken active steps to conceal its true identity, by

operating under a name that is not a registered business name;

(iv) the Respondent had actively provided, and failed to correct, false contact

details, in breach of its registration agreement, and

(v) taking into account all of the above, it was not possible to conceive of

any plausible actual or contemplated active use of the domain name by the Respondent

that would not be illegitimate, such as by being a passing off, an infringement

of consumer protection legislation, or an infringement of the Complainant’s

rights under trademark law.

Here there is no question of any false contact information or concealment.

However, the Complainant’s trademark is distinctive and well-known in Chile,

where the Respondent proposes to conduct a banking business, and elsewhere.

The descriptive nature of the disputed domain name is such that, as the panel

has found, it cannot be used in relation to banking in Chile without infringing

the Complainant’s rights nor can it be used in Chile in connection with non-banking

related services without misleading the public. The Respondent has been watching

and waiting, in circumstances in which he cannot legitimately use the disputed

domain name for the purpose for which he says he registered it. Since he registered

the disputed domain name in 1998 he has taken no steps to obtain the necessary

regulatory approval to operate a bank in Chile. Under these circumstances the

panel finds his passive use is in bad faith.

More generally, the panel finds the Respondent to have acted in bad faith in

that, having the knowledge that he had of Latin America, he registered a domain

name having the same structure as the names of most of the banks that he must

have seen on his trips, knowing at the time that those countries were insufficiently

developed in the Internet, in order to obtain an advantage from the domain name

once those countries reached a critical level of Internet development. The fact

that Banco de Chile has branches in the United States, makes his behaviour all

the more unacceptable.

The Complainant has established this element. The panel finds the Respondent

registered and is using the disputed domain name in bad faith.

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using

the Policy in bad faith to attempt to deprive a registered domain-name holder

of a domain name." See also Paragraph 15(e). To prevail on such

a claim, a respondent must show that the complainant knew of the respondent’s

unassailable right or legitimate interest in the disputed domain name or the

clear lack of bad faith registration and use, and nevertheless brought the Complaint

in bad faith [29]. Since the Complainant

has succeeded in establishing the elements entitling it to relief under the

Policy, this claim must be rejected.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs

that the domain name <bancochile.com> be transferred to the Complainant.

Alan L. Limbury

Presiding Panelist

Luis de Larramendi, Esq.

Panelist

Dated: August 14, 2001

Dissent

This majority opinion compounds some of the most egregious errors committed

in the name of the UDRP.

The clear statement of Section 4(a)(iii) is that the Complainant must prove

both bad faith registration and bad faith use. This distinction was not

casually made by the UDRP drafters. It contrasts with the terms of US Anticybersquatting

Consumer Protection Act (which was being enacted at the same time as the UDRP),

which allows a claim based on either bad faith use or bad faith registration.

Twisting this very clear requirement on its head, the majority says "non-use"

can equal "use."

The majority cites Telstra for its position on passive holding. In the

first case, Telstra was an Australian case involving Australian parties.

The Respondent defaulted presenting no defense at all. The panelist believed

that because the mark was famous in Australia, there was no possible legitimate

use to which the domain could be put. This is totally contradictory to US law,

which should at least apply to the American Respondent here. There are many

legitimate uses to which a mark can be put by other parties, including criticism,

non-competing commercial use, non-commercial use, reporting, and product comparison.

Nor does the Respondent here show any of the other suspicious elements of Telstra’s

domain holder (such as false contact information).

IMHO, the majority misunderstands the nature of a trademark. A trademark does

not give the owner exclusive title to some verbal territory from which all trespassers

can be barred. In fact, US trademark law allows for many, many multiple users

and a search of almost any common word in the USPTO database will reveal this.

There are over 100 marks that include the word "chile." A mark owner has no

right to exclude the world at large, only to prevent commercial use that is

likely to confuse consumers as to the source or origin of goods or services.

Knowledge of an existing mark is nothing more than knowledge of the claim of

use in a particular location and for a particular purpose…it is not a bar to

other legitimate uses. I cannot agree that constructive notice prohibits any

other legitimate uses of a similar name.

The Respondent has made no use at all of this domain name, therefore the 4(a)(iii)

requirement to prove bad faith registration and use has not been met. He does

not define his intentions in this regard with much precision. If he does begin

banking services in Chile, perhaps there will be a cause of action, but not

yet. I can imagine many possible banking-related enterprises, such as a site

that compares and evaluates various Chilean banking rates and services. The

Respondent’s business may operate from the US for US clients. The specific type

of banking or investment services he provides may or may not require permissions

from Chilean banking officials. Whether Respondent’s proposed enterprise, should

it ever be established, runs afoul of such regulations is a complex legal question

more properly addressed to the Chilean judiciary. It is not a judgment within

the purview of this tribunal.

None of the 4(b) bad faith examples have been shown in this case. Respondent

is not yet a competitor of the mark owner, he is not disrupting the mark owner's

business, he isn't offering it for sale, and he isn't using it to mislead consumers.

He has registered a number of other domains, some of which correspond to some

well-known Latin American marks, but he has not blocked any of them from acquiring

corresponding domain names. The majority suggests that this pattern of registering

well-known marks is an example of bad faith as described in 4(b)(ii):

(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

Here, there is no evidence of any specific intent to prevent the mark owner

from reflecting its mark in a corresponding domain name. To derive evidence

of intent from the simple fact of registration is to ignore the requirement

of finding intent. To apply 4(b)(ii) in cases where, as here, the mark owner

already has numerous domains corresponding to its mark is illogical. The mark

owner has no right to every possible variation on its theme…it has a right to

use its mark in some corresponding domain name, not all of them. Again, cybersquatting

is an act that shows particular harm to the mark owner, not some general disadvantage.

Since I don't find bad faith, it is not necessary to address legitimate use.

If the Respondent puts material on a website or engages in other actual use

of the domain name, then the Complainant may have a valid complaint. This one

is premature and the domain registration should remain with the Respondent.

I agree with the majority that this is not a case of reverse domain name hijacking.

The majority has cited numerous UDRP opinions that give comfort and support

to such claimants. I find that unfortunate, but also a defense to the accusation

of RDNH.

Diane Cabell, Esq.

Panelist

Footnotes:

1. Banco de Chile S.A. v. Adolfo Oviedo

(WIPO Case D2001-0693).

2. Banco de Chile S.A. v. Parkrose Investments

Ltd. (WIPO Case D2001-0694).

3. No. 19.039 of 1991.

4. D.F.L. No. 3 of December 19, 1997.

5. Banco Español de Crédito,

S.A. v. Miguel Duarte Perry Vidal Taveira, (WIPO

Case D2000-0018).

6. Banca March, S.A. v. Digigrup.com

(WIPO Case D2000-1341).

7. Corporación Industrial y Financiera

Banesto, S.A. v. José Gregorio Hernández Quintero (WIPO

Case D2000-1265).

8. Pivotal Corporation v. Discovery Street

Trading Co. Ltd, (WIPO Case D2000-0648)

and Unibanco. Uniao de Bancos Brasileiros S.A. v. Vendo Domain Sale (WIPO

Case D2000-0671).

9. WIPO Case D2000-0105.

10. Id.

11. eResolution Case AF-0104.

12. citing Second Staff Report on Implementation

Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), para. 4.1(c).

13. See autobytel.com inc. v. Sand WebNames

(WIPO Case D2001-0076) (disregarding proffered

facts that were "simply alleged by the Complainant's attorney and not even

by an officer or employee of the Complainant who might have at least a degree

of personal knowledge.").

14. Complaint at 7.

15. eResolution Case AF-0104.

16. Source: U.S. Department of State FY2001

Country Commercial Guide: Chile.

17. WIPO Case No. D2000-0868.

18. See Macmillan USA, Inc. v Noname.com

(NAF Case: FA0009000095559) in which the 3-arbitrator panel made the following

finding before dismissing the complaint:

There is no evidence that Respondent has acted in bad faith under Section 4(b)

(ii) as alleged in the complaint. Complainant has registered the domains "idiotsguides.com,

idiotsguides.net, idiotsguides.org, and (its full and actual mark) completeidiotsguides.com."

Complainant clearly has the ability to reflect its marks online. . . .. Although

Respondent has registered a number of domain names [including idiotsguide.com],

there is no evidence that this was done in a pattern of registration targeted

to prevent the Complainant from reflecting its mark online.

19. Loblaws, Inc. v. Presidentchoice.Inc/Presidentchoice.Com,

eResolution Cases AF-0170a; AF-0170b; AF-0170c (3-arbitrator panel).

20. See Video Networks Limited v. Larry

Joe King (WIPO Case D2000-0487): "[T]he

Policy makes it clear that the Complainant must prove all three elements

of Paragraph 4(a)." (emphasis in original) (3-arbitrator panel).

21. eResolution Case AF-0563.

22. See The Stanley Works and Stanley

Logistics, Inc v. Camp Creek. Co., Inc. (WIPO

Case D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor

Corporation v. S&S Enterprises Ltd. (WIPO

Case D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC

(WIPO Case D2000-0102). For a typical

US case see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d

489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s"

and the domain name <sportys.com> – specifically, an apostrophe in the

trademark and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark").

23. AltaVista Company v. S.M.A., Inc.

(WIPO Case No. D2000-0927); Gateway,

Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO

Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO

Case D2001-0004) and Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol

(WIPO Case D2001-0491).

24. eResolution Case AF-0104.

25. Banco de Chile v. Adolfo Oviedo

(WIPO Case D2001-0693). Likewise the domain

name <bancochile.net>: Banco de Chile v. Parkrose Investments Ltd.

(WIPO Case D2001-0694).

26. SportSoft Golf, Inc. v. Hale Irwin’s

Golfers’ Passport (NAF Case No. FA0094956). Likewise Marriott International,

Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc.

v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring

L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).

27. See Telstra Corporation Limited

v. Nuclear Marshmallows, (WIPO Case No.

D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO

Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO Case No. D2000-0194) and Revlon

Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO

Case No. D2000-0468).

28. See Telstra Corporation Limited

v. Nuclear Marshmallows (WIPO Case No.

D2000-0003).

29. See, e.g., Sydney Opera House Trust

v. Trilynx Pty. Ltd. (WIPO Case No. D2000-1224)

and Goldline International, Inc. v. Gold Line (WIPO

Case No. D2000-1151).

More cases by this complainant

• Banco de Chile v. Santiago Gomez — D2020-1689 · financiera-banchile.com · Transfer · 13 Aug 2020
• Banco de Chile v. Jeimmy Cifuentes, Control ADS — D2020-1687 · credichile.club · Transfer · 05 Sept 2020
• Banco de Chile v. Parkrose Investments Ltd. — D2001-0694 · bancochile.net · Transfer · 17 Jul 2001
• Banco de Chile v. Adolpho Oviedo — D2001-0693 · bancodechile.com · Transfer · 17 Jul 2001