WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria, S.A. v. femi abodunrin
Case No. D2004-0404
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A., Paseo de la Castellana of Madrid, Spain, represented by Enrique-J. Sirvent, Spain.
The Respondent is femi abodunrin of ondo state, Nigeria.
2. The Domain Name and Registrar
The disputed domain name is registered with InnerWise, Inc. d/b/a ItsYourD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on June 2, 2004. On June 3, 2004, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the domain name at issue. On June 10, 2004, InnerWise, Inc. d/b/a ItsYourD 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.
The Center verified that 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 June 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2004.
The Center appointed Jette Robsahm as the sole panelist in this matter on July 9, 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 July 23, 2004.
4. Factual Background
Complainant is Banco Bilbao Vizcaya Argentaria, S.A., hereafter BBVA, a large global financial group and one of the major players in the European market. According to the Complainant, “The more than 90 thousand persons who together make up the BBVA Group, serving 35 million customers in 37 countries through a network of 7,500 branches, will continue to manage 400 million Euros to our characteristic high standards of excellence and individual responsibility, to the benefit of the organisation, customers, shareholders and society as a whole.”
The Complainant owns a large number of trademark registrations in many countries, among others:
BBVA
2454197
43
Spanish TM
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
2454198
44
Spanish TM
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
2454199
45
Spanish TM
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
2569614
43-44-45
European TM
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
768895
36
JAPON
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
6630
36
AFGANISTAN
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
132602
36
BELICE
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
1892/2003
36
MYANMAR
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
2317424
36
REINO UNIDO
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
9450
36
ANTILLAS HOL.
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
2705771
9
EE.UU
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
9865
36
LAOS
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
59/03/RDAM
36
YIBUTI
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
19090/060
36
NEPAL
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
3985/BUR
36
BURUNDI
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
BBVA
567987
9-16-35-36-38
CANADA
BANCO BILBAO VIZCAYA ARGENTARIA, S.A.
The mark BBVA is used not only in connection with banking services, but also with a number of Foundations connected to the complainant.
The Complainant has also registered a large number of domain names consisting of or incorporating the trademark BBVA, for example: , and .
The Respondent is an individual who registered the domain name on May 28, 2004.
5. Parties’ Contentions
A. Complainant
In addition to the information given in Section 4, BBVA is involved in corporate, retail and international banking, and other financial services. Complainant BBVA is one of the leading banks in the Spanish market, and is listed on nine different exchanges and operates in over 35 different countries.
The trademark BBVA has become a well known mark because of extensive use, promotion and advertising, and has acquired goodwill and reputation also in fields not directly related to banking and financial services.
The Complainant states further as follows: “The domain name is confusingly similar to the Complainant’s BBVA mark as the two are almost identical. In fact, the Respondent’s Domain Name incorporates the BBVA mark in its entirety combined with “s”. The mere addition of a letter identifier does not render the distinctive trademark BBVA diminished, nor does a BBVA addition of the letter “s” controvert the ownership of trademark or service mark rights in the Complainant.
It is well established that the mere addition of letters or misspelling to a famous trademark results in a domain name that is confusingly similar to the Complainant’s mark (Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362 (August�16,�2001), quoting America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (February 5, 2001). When a domain name incorporates a distinctive mark in its entirety, this creates sufficient similarity between the mark and the domain name to render it confusingly similar. See, for example, Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc. WIPO Case No. D2000-0047 (March 24, 2000), it was found that the domain name was confusingly similar to the mark EAUTO.”
And further: “The domain name was chose by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve. The inclusion of a trademark in a domain name suggests to consumers that the website found at that domain name is associated with the owner of the trademark.
Complainant’s mark and its services are famous. Persons familiar with Complainant’s products and services are likely to conclude that the Domain Names are simply an extension of Complainant’s business. In view of the fame of Complainant’s marks and the lack of distinctiveness afforded by the simple addition of non-distinctive or descriptive material, the Domain Names are misleading.”
The domain name, is being used on a website offering financial services. The Complainant is of the opinion that the Respondent when offering services within the same field as the Complainant, can not claim to have had no knowledge of the Complainant. The registration may therefore only have been done in bad faith and the domain name is also used in bad faith.
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, in order to convince the Panel of its rights and obtain 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 BBVA.
The disputed domain name is almost identical to the trademark. The only difference is the letter “s” and the extension . The latter is only signaling that it is an Internet address, while the letter “s” may be perceived as no more than the plural form. There are numerous Administrative Panel decisions which can be sited in support of the view that a domain name which incorporates a trademark as a whole may be considered confusingly similar to the trademark, e.g. Europay International S.A. v. Domaines Ltd and Cecilia Ng, WIPO Case No. D2000-0513, Banco Bilbao Vizcaya Argentaria S. A. v. Nicolas Zalcberg, Z & A Group, WIPO Case No. D2003-0475.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint. There is no evidence that the Respondent has acquired any trademark rights in the trademark BBVAS for any goods or services.
The Panel finds, on this background, that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
According to the Rules, the Panel shall analyze whether bad faith existed when the domain name was registered and thereafter examine whether use also has been in bad faith.
The Complainant has filed documents showing that the domain name was registered quite recently. As the Respondent has not replied to the Complaint, the Panel must rely on the documentation from the Complainant, and therefore base an opinion on the given information.
The domain name is being used on a website offering banking and financial services. However, this site of the alleged bank, BBVAS BANK, in question is quite new as far as the Panel knows, and located in Spain according to the website. Spain is the home country of the Complainant. It seems unlikely that a person or persons who would like to establish a company within the mentioned field of services in Spain would have been without knowledge of the Complainant.
It is hard to believe that the Respondent, apparently having no trademark registration or any other connection to the trademark BBVAS, registered the domain name in good faith. There are many registered domain names consisting of or incorporating the trademark BBVA, which also is subject to numerous registrations. A person or persons with a serious interest in setting up a website, would have made a clearance search and stayed away from an infringing domain name.
The domain name is used for a website offering banking and financial services. Such services are in competition with the Complainant which has a reputation for its high standard. It seems likely that the domain name is being used to take advantage of the well known trademark BBVA and pass off as a business affiliated with the Complainant.
Several Administrative Panel decisions support the view that registration and use like in the present case, constitute bad faith. See e.g. Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598.
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
Dated: July 14, 2004
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