WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bilbao Vizcaya Argentaria S.A. v. Francisco Javier Cano Mayor Case No. D2008-0891 1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria S.A., Madrid, Spain, represented by Internet Names World Wide España, SL., Madrid, España.
The Respondent is Francisco Javier Cano Mayor, Alcobendas, Madrid, Spain. 2. The Domain Name and Registrar
The disputed Domain Name (“Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.Com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2008. On June 12, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the Domain Name at issue. On June 13, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 20, 2008 the Respondent sent an email to the Center stating that he would transfer the disputed Domain Name to the Complainant. On June 23, 2008, the Center informed the Complainant of the above-mentioned email. On June 30, 2008 the Complainant's authorized representative submitted a suspension request to the Center. The Center Notified the parties of a 30-day suspension on July 2, 2008. Likewise, on June 30, 2008 the Center notified the Complainant of a Complaint deficiency. On August 4, 2008, the Center extended the previous suspension to August 11, 2008. On August 12, 2008, the proceedings were reinstituted. On August 19, 2008 the Complainant's authorized representative sent an amended copy of the Complaint to the Center. On August 19, 2008 the Respondent sent an email to the Center only, in which he made clear his goal of cooperating which the Center forwarded to the Complainant per paragraph 2(h) of the UDRP Rules. 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 August 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2008.
The Center appointed José Carlos Erdozain as the sole panelist in this matter on October 1, 2008. 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. 4. Factual Background
The Complainant is considered not only as one of the largest financial companies in Spain, but also as one of the leading companies throughout the world. It has a presence in more than 37 countries, and employs to more than 98,000 employees.
The Complainant's activity is displayed not only in the area of financial assets, but also on social or educational areas.
BBVA was founded in 1999 with the merge of three entities, that is, Banco Bilbao, Banco de Vizcaya and Argentaria. Precisely, BBVA stands for Banco Bilbao Vizcaya Argentaria. The announcement of this merger was extensively published.
The Complainant has registered a large number of BBVA trademarks, inter alia, the following trademarks registrations: M 2264652 (registered on March 7, 2000); M 2264653 (registered on May, 22, 2000); and M 2264654 (registered on March 7, 2000).
The BBVA trademark has also been registered in other countries different than Spain, like Cuba, the Bolivarian Republic of Venezuela, Argentina and other Latin American countries.
The Complainant has also registered BBVA as European Trademark on July 7, 2003 (Reg. 1349943).
Approximately in August 2006, it was announced that the Complainant was to sponsor the Professional National Soccer League for the next three years. Thus, the official designation of the League would be “Liga BBVA”. This piece of news was published in relevant sport press media as well as in other general newspapers.
The Domain Name was registered on August 16, 2006, after the public announcement of the above-mentioned sponsorship. 5. Parties' Contentions A. Complainant
The Complainant contends:
That it is a well-known financial company, one of the largest ones in the world.
That it has a local presence in more than 37 countries.
That it has registered more than 50 trademarks in jurisdictions other than Spain; special attention must be given to the Spanish trademarks and to the European Trademark. All of these are registered under the name BBVA, which stands for the name Banco Bilbao Vizcaya Argentaria, which was founded in 1999.
That it will sponsor the Professional National Soccer League as from 2008 on for three years. This sponsorship has been made public in press media even during mid 2006. Specifically, the news was first made public on August 17, 2006. The name under which the general public will know the League is LIGA BBVA.
That the Respondent registered the disputed Domain Name on August 16, 2006.
That the Domain Name is confusingly similar to the trademarks registered in favour of the Complainant. BBVA is identical to the word trademarks in question, whereas “Liga” is a generic term, which must be considered as a complement to the Complainant's trademark.
That the Respondent has no rights or legitimate interests in the Domain Name, and that it was chosen to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the Domain Name might resolve.
That the Respondent registered and is using the Domain Name in bad faith. Specifically, the Respondent's is attracting visitors to the site. Also the Respondent is not commonly known, as an individual, business or other organization by any product or service related with the term BBVA. Finally, the fact that Complainant's trademarks are well-known, and that Respondent has no relationship with the Complainant, makes evident that the Respondent's intention, by registering the Domain Name, was to prevent the Complainant from registering the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In respect to this first requirement of the Policy the Panel puts in comparison both the BBVA trademark of the Complainant and the Domain Name. Accordingly, although the Domain Name does not entirely match with said trademark, the substantial and most distinctive part of the Domain Name contains the word BBVA, which is, as previously described, the denominative part of the Complainant's trademark.
On the other hand, the word “Liga” (in English, “League”) is generic and refers to a sport competition (in this case, a soccer competition). This word per se does not achieve the necessary differentiation of the Domain Name. On the contrary, it just leaves the most significant part of the distinction to the word BBVA, which clearly appears as such. Furthermore, by the factual background in the Domain Name of the case, it is reasonable to consider that any Internet user who reads the word BBVA would tend to establish a relationship with the Complainant's activities.
Therefore, the Panel concludes that the Domain Name is confusingly similar to the trademark of the Complainant. The first requirement of the Policy is met. B. Rights or Legitimate Interests
As to the second requirement of the Policy, the Respondent has not submitted any answer to the Complainant's contentions and evidences of its preferential trademark rights. This preference is referred to the time in which the trademarks were registered (early 2000) in comparison with the date of registration of the Domain Name (August 16, 2006). Therefore, the Panel considers that the Complainant has preferential rights on the denomination BBVA, as well as on the denomination “Liga BBVA”, which was first publicly used by the Complainant precisely on August 17, 2006. It is legitimate to consider that much earlier in time the Complainant negotiated with the National Federation of Soccer in Spain the sponsorship of the League, so the idea of using the words “Liga BBVA” did not belong to the Respondent, but to the Complainant.
It does not appear, rather the contrary, that the Respondent was known in the market by the words “bbva” or “Liga bbva”. No evidence has been submitted in this respect. The position of the Complainant is precisely the contrary. It had the initiative of using the words LIGA BBVA; BBVA is the denominative part of a number of its trademarks, which have been widely used in the world with respect to financial and non-financial products and services. This prior use of the words in question give a priority in the use, not to mention the right, to the Complainant in the same.
To conclude is, therefore, that the Respondent has no rights or legitimate interests on the Domain Name. The second requirement of the Policy is met. C. Registered and Used in Bad Faith
Finally, the Panel must consider whether the disputed Domain Name was registered and is being used in bad faith.
In this respect, according to what it has been previously stated, the Complainant has filed that the Respondent has not been known by the words “bbva” or “Liga bbva”. On the contrary, evidence has been filed that the Complainant has made public its intention of sponsoring the Spanish Soccer Competition for three years giving it the name “LIGA BBVA”, which is reproduced entirely in the disputed Domain Name.
This announcement was first made public on August 17, 2006. The disputed Domain Name was registered just in August 16, 2006. The Complaint has been known for years before that date by the word BBVA, and obviously it was to be known that the Complainant was to sponsor the League. These facts are irrefutable according to the evidences that have been filed. Under these circumstances, it is not likely that the fact of registering the Domain Name is coincidental. Taking into consideration these facts it is reasonable to conclude that by the time of registering the Domain Name the Respondent was aware not only of the trademark BBVA, but also of the Complainant's intention of sponsoring the Spanish Soccer League. Accordingly, it is reasonable to conclude that by registering the Domain Name the Respondent's intention was to prevent the Complainant from having access to the Internet through the Domain Name. This is bad faith, since the Respondent has no reason to do so.
It is commonly accepted by UDRP panelists that registration in bad faith means current use of the Domain Name in bad faith though this would not be dispositive, see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, the Panel has confirmed that, actually, the website of the Domain Name is blank, which, again, has been commonly considered as evidence of bad faith in the use of the Domain Name. These facts are given in this case.
Therefore, the Panel concludes that the Respondent registered and is using in bad faith the Domain Name. The third requirement of the Policy is met. 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.
José Carlos Erdozain
Sole Panelist
Dated: October 15, 2008
Full & Egal Universal Law Academy