WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca March, S.A. v. Mr. Thomas Zotzmann
Case No. D2000-1343
1. The parties
Complainant: Banca March, S.A., with a place of business at Avda. Alejandro Rosell�, 8, 07002 Palma de Mallorca � Balearic Islands- Spain.
Respondent: Mr. Thomas Zotzmann, whose administrative contact is Mr. Hermann Toelcke, residing at Hollaendische Reiche 38, n/a, 22765 Hamburg, Germany.
2. The Domain Name and the Registrar
The subject of the complaint is the domain name .
The registering entity for that domain name is Melbourne IT, d.b.a. Internet Domain Registrars, with headquarters in the State of California, USA.
3. Procedural history
3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter "the Center") on October 5, 2000 in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter the "Uniform Policy"), as adopted by ICANN on August 26, 1999, and in accordance with the Rules for the Uniform Policy likewise adopted by ICANN.
Observed deficiencies in the complaint were duly corrected by complainant on October 16, 2000.
3.2. Copies of the complaint were submitted electronically to the Registrar and to respondent, who replied to the complaint on November 3, 2000.
3.3. Pursuant to a request by complainant that the dispute be resolved by a panel formed by a single panelist, Mr. Luis H. de Larramendi was designated as the panelist by WIPO on December 1, 2000, and he was furnished with a full copy of the complaint.
4. Factual background
4.1. Complainant is the Spanish entity Banca March, S.A., which has declared itself to be the parent entity of Corporaci�n Financiera Alba, S.A., which in turn has an interest in the company Quavitae, S.A.
Complainant cites ownership of tradename registration no. 54686 BANCA MARCH, S.A., and many other trademarks that include the word MARCH and/or BANCA and/or the letters B and M, in combination with design elements, which have been registered for goods and services in numerous International Classes. These signs have been listed on page five of the complaint.
Complainant claims that its trademark and name BANCA MARCH are well known subsequent to their long-standing nature and market share.
4.2. Respondent is a natural person, apparently a German national, with a domicile in Germany and, according to documents submitted, also a temporary residence in Palma de Majorca, Spain, at chalet 544, 07688 � Calamurada.
4.3. The following facts should be borne in mind in these proceedings:
- Complainant claims that its BANCA MARCH trademark and name are well known and familiar to the public, subsequent to their long-standing nature and market share. On logging onto the website, the site was found to be under construction, as attested to in the corresponding notarial certification dated 13 July 2000. On logging onto the website again on 7 December 2000 for review, the panel notes that it remains under construction, as reported earlier in the notarial certification referred to above.
5. Parties� contentions
5.1- Complainant
Complainant contends that:
- It is the proprietor of Spanish trademarks that contain the word MARCH and/or BANCA in combination with other logos and lexical components relating to BANCA MARCH, as well as of a tradename for BANCA MARCH, S.A registered at the Spanish Patent and Trademark Office.
- Its trademark and tradename registrations are identical and/or confusingly similar to the domain name .
- Respondent has no legitimate interest.
- There is evidence of bad faith.
- The BANCA MARCH name is well known.
- The well-known nature of the mark is particularly relevant in respect of someone who, like Mr. Thomas Zotzmann, has applied for a debit account with the Banca March banking institution.
- The activity and importance of BANCA MARCH are consistently reported in the press.
- Use of the domain name being effected by respondent, who is not making use of the name for legitimate business activity, is obstructive use intended to prevent Banca March from being able to operate its own website at that address.
- Respondent has registered and used the domain name in bad faith.
Accordingly, complainant requests that the domain name be transferred to it.
5.2.- Respondent
5.2.1. Respondent replied to the complaint in German, which is not the language of the proceedings, and moreover requested that subsequent communications be remitted to him in that language; complainant has refused.
5.2.2. In the communication in German respondent indicated a willingness to transfer the domain name in consideration of reimbursement for the expenses incurred, without specifying any calculated or real amount for the said expenses.
6. Discussion and findings
6.1 Applicable rules
Paragraph 15 a) of the Rules instructs the panel to render its decision on the basis of:
- the statements and documents submitted by the parties;
- the provisions of the Uniform Policy and of the Rules themselves; and
- any rules and principles of law that it deems applicable.
6.2. Language of the proceedings
The registration agreement is in the English language.
Complainant is a Spanish entity and respondent appears to be a German national. There is no equitable basis for deeming that the proceedings should take place in German when complainant is opposed.
Even though Mr. Zotzmann has a temporary residence in the Balearic Islands, there is nothing in the record to suggest that he is conversant in Spanish, and hence it is also deemed inappropriate for the panel to issue its decision in that language.
Therefore, pursuant to the basic precepts laid down in Rule 11 of the Uniform Policy, it is appropriate to take as the language of the proceedings the language in which the domain name registration agreement has been drawn up, in which complainant duly submitted the complaint. Accordingly, the decision is hereby issued in that same language. Examination of the premises to be met by a complaint to succeed, as laid down in Paragraph 4 a) of the Uniform Policy.
These premises are:
- domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- respondent has no rights or legitimate interests in respect of the domain name;
- the domain name has been registered and is being used in bad faith.
6.3.1 Preliminary findings
Before establishing whether the trademark and the domain name are identical or similar in the meaning of the requirements laid down in the Uniform Policy, the panel considers it necessary to first establish whether complainant can truly be deemed to hold valid rights in the term "BANCA MARCH" in its capacity as owner of tradename registration no. 54686 BANCA MARCH, S.A.
Industrial property rights in Spain are governed by the Trademark Act, Law No. 32 of 10 November 1988, currently in force, which regulates three specific types of right: trademarks, tradenames, and titles of establishment.
Article 3 provides that rights in a trademark are acquired by valid registration in accordance with the provisions of the Act.
While that provision cites only trademarks, it is likewise applicable to tradenames, inasmuch as the Act does not contain any equivalent provisions relating solely to tradenames and the provisions governing trademarks are applicable mutatis mutandis to tradenames as well.
The common nature shared by trademarks, tradenames, and titles of establishment and the interrelationships among the three pursuant to the provisions of Article 12.1 of the Trademark Act mean that tradename registration no. 54686 BANCA MARCH, S.A. is a valid tradename in Spain and hence that it falls within the meaning of trademarks as used in the Uniform Policy, which must be broadly interpreted. Accordingly, it is now appropriate to consider whether or not the tradename BANCA MARCH, S.A. and the trademarks that contain the term MARCH and/or other trademarks are identical or confusingly similar to the domain name .
Both questions may be answered in the affirmative. The tradename BANCA MARCH, S.A. and the domain name are identical, if such ancillary elements as the abbreviation S.A. and the extension for the generic top-level domain are disregarded. Furthermore, the trademarks for MARCH for telecommunications services and other marks that contain that term are confusingly similar to the domain name . This can be attributed both to the weakly distinctive character of the word BANCA in the combination BANCA MARCH, and the distinctiveness of the word MARCH, as well as to its well-known nature, which would cause it to be immediately associated with the complainant�s entity, thereby giving rise to a situation in which there is confusion, disallowed under the Uniform Policy. Presence or absence of a legitimate interest or right in securing the domain name by respondent.
Respondent�s status as applicant for a debit card at the Banca March affords him no right to register in his own name the name of the banking institution where he has made such application, bearing in mind that not even criticism of that institution would suffice to furnish legitimacy for using that institution�s name for a domain, as a number of panelists have held previously, for instance in case no. D2000-0467 .
Since negative facts cannot be proven, the applicable principle must be that circumstantial aspects pointing in the direction of that negative fact will suffice when the party in a position to provide such proof, the party with full knowledge of all factors required for decision, respondent in this case, is not forthcoming.
It should be reiterated here that the act of registering a domain name confers no legitimate right in that domain name, because otherwise the matter at issue would be moot, and hence merely registering the domain name cannot be deemed to confer any legitimate right upon the holder.
Consequently, the panel deems that Mr. Thomas Zotzmann has no legitimate right or interest in registering the domain name in his own name.
6.3.4 Presence or absence of bad faith in the registration of the domain name and in the use of that domain name.
Paragraph 4 (a) iii of the Uniform Policy requires both registration and use in bad faith.
In interpreting this provision, the developmental stages of the ICANN rules has been taken into account, and the following consideration has also been applied:
- although use in bad faith is required for the domain name which complainant has failed to register,
- special attention must also be given to the question of whether passively holding the domain name in bad faith can be deemed use within the meaning of paragraph 4 a) (iii) of the Uniform Policy.
In this respect, without laying down guidelines, Decision No. D2000-0003 of 18 February 2000 held that the panel should carefully address all the circumstances relating to respondent�s conduct and that if the circumstances show that passively holding a domain name entails action (and hence use) in bad faith, it may be deemed to satisfy this requirement.
The above calls for a broad definition of use in bad faith when a domain name has been registered in bad faith.
In the judgement of this panel the following circumstances demonstrate bad faith registration of the domain name :
- Respondent has submitted a response but has failed to put forward any claim to business activity in which the domain name might legitimately be used, and hence the inference that has to be drawn is that the domain name has been registered with intent to prevent the rightful owner from being able to register that name himself.
- By registering the domain name , the proprietor of the MARCH marks and the BANCA MARCH, S.A. tradename is prevented from obtaining space on the web.
- Prior knowledge of the existence of BANCA MARCH is evidenced by Mr. Thomas Zotzmann�s application for a debit card from that banking institution, as demonstrated in the documents submitted by complainant and not denied by respondent.
- The tradename and trademark BANCA MARCH are well known throughout Spain, particularly in the Balearic Islands, where respondent has at least a temporary residence and properties; consequently, adoption of this domain name cannot be considered fortuitous or unintentional.
The panel also deems use in bad faith to have taken place, in that:
- The continued status of the website as indefinitely "under construction" represents an impediment to access to the web by the owner of rights in the name in question pursuant to the findings of Decisi�n No. D2000-0143, RAYMAT, S.A. vs. ANTONIO CALSAS.
- Respondent�s offer to transfer the domain name in consideration of reimbursement for expenses without stating the amount of those expenses in his response to the complaint is not credible. A statement of the actual expenses incurred in registering the domain name might have caused complainant to accept the offer, thereby making continuation of these proceedings unnecessary. Conversely, failure to state an amount suggests that the intent is not merely to recover out-of-pocket expenses for the domain name.
The requirement for use in bad faith could only be deemed not to be fulfilled if the registrant for the disputed domain name had somehow actively not used the domain name , provided that the domain name was not kept in force but unused for an unwarranted length of time and thus was not obstructive, particularly in a case such as this, in which the domain name reproduces a trademark that is undeniably well known and reputed in an area where respondent owns properties, or if use had been made but respondent could show a legitimate interest or right to use the name and such use was non-commercial and did not conflict with the BANCA MARCH trademark.
Consequently, the panel finds that the domain name is identical and confusingly similar to earlier trademark rights owned by complainant, that respondent does not have a legitimate interest in registering the domain name, and that the said domain name has been registered and is being used in bad faith.
7. Decision
The Administrative Panel hereby finds that for the reasons explained above, complainant has proven that the three premises stipulated in paragraphs 4 a) (i), (ii), and (iii) to be present and therefore orders that the domain name be transferred to complainant.
Luis H. de Larramendi
Sole Panelist
Dated:19 December 2000
Full & Egal Universal Law Academy