WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BANKOA, S.A. v. Yokngshen Kliang
Case No. D2004-0005
1. The Parties
The Complainant is BANKOA, S.A., San Sebastián, Spain, herein after BANKOA, represented by Herrero & Asociados, Spain.
The Respondent is Yokngshen Kliang, Nanning, Guangxi, China.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 7, 2004. On January 8, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January 8, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 14, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 17, 2004.
The Center appointed Jette Robsahm as the sole panelist in this matter on February 26, 2004. 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.
The language of the proceeding is english.
The due date for the decision is March 11, 2004.
4. Factual Background
A. Complainant
The Complainant is BANKOA SA, a company incorporated in Spain with its principal place of business in San Sebastián. The Complainant is a well-known company operating as a banking institution in the Spanish and European financial sectors. Its former name was Banco Industrial de Guipúzcoa. For the last twenty five years the Complainant has gradually adapted its structure and resources to become a top-flight commercial bank. In 1997, Crédit Agricole, a major French bank, decided to link its forces and resources with BANKOA, and now holds 98.32 % of the capital.
The Complainant is the owner of several trademark registrations in Spain and abroad, among others:
- Spanish Trademark no. 769.463 BANKOA, in class 35
- Spanish Trademark no. 769.464 BANKOA in class 36
- Spanish Trademark no. 769.465 BANKOA in class 42
- Spanish Trademark no. 852.719 BANKOA (and device) in class 36
- International Registration no. 586286 BANKOA in classes 35 and 36, valid in BX, DE, FR, IT, PT.
B. Respondent
Respondent, apparently a Chinese individual, registered the disputed domain name on March 31, 1999.
5. Parties� Contentions
A. Complainant
In addition to the information given above, the Complainant states, inter alia, as follows:
"The union of Bankoa and Crédit Agricole represented a major step forward in attaining enhanced service for its clients. Currently, BANKOA is a very important financial institution in Spain (documents 5, 6 and 7 which consist of various websites providing financial information and where BANKOA is placed among other prestigious Spanish financial institutions)."
"The defendant has no legitimate right to the name "BANKOA" which is a name in "euskera" (Basque) (one of Spain�s official languages)."
"There is no holder of rights to that name other than the defendant in either the Spanish Patent and Trademark Office or the Company Register."
"Similarly, and following an exhaustive search on the Internet , there is not one reference to a company other than the plaintiff so that, both on the market and on the Internet, BANKOA identifies only the financial institution BANKOA, S.A.
Nor is there record anywhere that the defendant is known by that name, and BANKOA has no meaning in Chinese or any of the dialects of that country.
It therefore makes no sense for a Chinese national (document 10) to register a domain name meaning something only in a Spanish language and which, worldwide, identifies only BANKOA, S.A."
"The foregoing implies that a name meaning nothing in Chinese or any other local language, identifying only the plaintiff and not linked to any other individual or legal entity in the world, can only have been registered in bad faith by the defendant, with the sole aim of attracting a "mistaken" public to the website in the search for information on BANKOA, S.A.
BANKOA has just one meaning, and registration of a domain with that name cannot be accidental."
"���.. many contacts have been attempted with the domain name holder at the e-mail address it facilitates in the registration agreement and which we must take to be certain and true fact. However, no response has ever been received to messages always aimed at avoiding a conflict of this nature (document 11)."
The Complainant concludes as follows:
"We therefore think that the three requirements in the Policy for the application of the Uniform Dispute Resolution Mechanism apply to this case."
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy (the Uniform Domain Name Dispute Resolution Policy), in order to convince the Panel of its rights and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
A. the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
B. the Respondent has no rights or legitimate interests in respect of the domain name, and
C. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its rights to the trademark BANKOA.
The disputed domain name, , is identical to the trademark BANKOA.
B. Rights or Legitimate Interests
The Respondent has not answered correspondence from the Complainant nor has he responded to the complaint. This, together with documentation given by the Complainant, indicates that the Respondent never has acquired any trademark rights in the name "Bankoa" for any goods or services anywhere. Furthermore, it seems that only the Complainant has been known by the name "Bankoa" and claims to be well-known by that name. In this context, it seems rather strange that the Complainant has not at an earlier stage taken measures to secure the rights to the domain name . However, as no explanation has been given to the contrary, the Panel must rely on the documentation given.
On this background, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
It is up to the Complainant to show that the Respondent registered and used the domain in bad faith.
The word BANKOA has, it appears, no meaning in Chinese, the language of the Respondent, and has never been used for a real commercial website. . It is therefore hard to believe that the Respondent has had a legitimate reason for the registration and use of the domain name. Because of the lack of response from the Respondent, the Panel has to base an opinion on the documentation from the Complainant.
The Panel also notes that the domain name, clearly registered in bad faith, has not been used at all for the past 4 years. This passive holding of a domain name can be seen as use in bad faith (Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003), especially when there is no obvious legitimate use of the domain name.
Consequently the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Jette Robsahm
Sole Panelist
Date: March 2, 2004.
Full & Egal Universal Law Academy