WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Bilbao Vizcaya Argentaria, S.A. v. Bin Song Case No. D2009-1763 1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Internet Names World Wide Espana, SL, Spain.
The Respondent is Bin Song of Beijing, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with China Springboard, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 28, 2009, the Center transmitted by email to China Springboard, Inc. a request for registrar verification in connection with the disputed domain name. On December 30, 2009, China Springboard, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name and providing the Respondent's contact details. On January 7, 2010, the Center transmitted an email to the parties regarding the language of the proceeding in Chinese and English. On January 8, 2010, the Respondent submitted an email to the Center requesting that Chinese be the language of the proceeding. On January 11, 2010, the Complainant submitted an email to the Center requesting that English be the language of the proceeding. Based on the parties' submissions, the Center decided to accept the Complaint in English and that it would accept a Response either in English or Chinese. It is up to the Panel to decide the language of the proceeding. In response to a notification by the Center to the Complaint regarding word limit and Registrar identity issues, the Complainant filed an amended Complaint on January 13, 2010.
The Center has verified that the Complaint together with the amended Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on January 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 3, 2010. The Response sent two emails to the Center objecting to the use of English as the language of the proceeding, however, the Respondent did not file any formal Response by the due date.
The Center appointed Sebastian Hughes as the sole panelist in this matter on February 8, 2010. 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 Panel issued a Panel Order on February 22, 2010 requesting the Complainant to provide the Center with documentary proof of the Complainant's assertions in the Complaint regarding the use of the disputed domain name by the Respondent. On March 1, 2010 the Complainant filed, in response to the Panel Order, evidence of the Respondent's use of the disputed domain name at the time the Complaint was filed. The Respondent did not make any formal submissions with respect to the Panel Order. 4. Factual Background A. The Complainant
The Complainant is a company incorporated in Spain and the owner of registrations for the trade mark BBVA in numerous jurisdictions worldwide (the “BBVA Trade Mark”), and the owner of a registration for the trade mark BBVA COMPASS in the United States of America (the “BBVA COMPASS Trade Mark”). The Complainant is also the owner of the domain names and . B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on July 31, 2009. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The BBVA Trade Mark is a contraction of Banco Bilbao Vizcaya Argentaria's trade name. The Complainant, BBVA, is one of the largest commercial banks in Spain. It was formed in 1999 from a merger of Banco Bilbao Vizcaya with Banco Argentaria. BBVA is involved in corporate, retail and international banking, and the provision of other financial services. BBVA is listed on nine different exchanges and operates in over 35 different countries.
BBVA Compass is a leading United States (“U.S.”) banking franchise located in the Sunbelt region. BBVA Compass is the 15th largest U.S. commercial bank based on deposit market share and ranks as the third largest bank in Alabama, the fourth largest bank in Texas and the fifth largest bank in Arizona.
By reason of the extensive use, promotion and advertising of the BBVA Trade Mark and the BBVA COMPASS Trade Mark (collectively, “the Trade Marks”), the Complainant enjoys substantial goodwill and reputation in the Trade Marks.
The domain name is confusingly similar to the Trade Marks.
The disputed domain name is purposefully misspelled with an additional letter “s”. This conduct, commonly referred to as “typo squatting”, creates a virtually identical and/or confusingly similar domain name to the Trade Marks.
Aside from the additional letter “s”, the disputed domain name comprises the BBVA COMPASS Trade Mark in its entirety.
The disputed domain name differs from the BBVA Trade Mark only to the extent of the addition of the word “compasss”. The addition of “compasss” does not reduce or limit the likelihood of confusion. The Respondent has no rights or legitimate interests in respect of the disputed domain name
The disputed domain name was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any website to which the domain name might resolve. The inclusion of a trade mark in a domain name suggests to consumers that the website found at that domain name is associated with the owner of the trade mark.
The Respondent's websites are all search engines composed of sponsored links. The Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the BBVA COMPASS Trade Mark and illegitimately trade on its fame for commercial gain and profit by diverting Internet users who mistakenly type the name .
The Trade Marks and the services provided under the Trade Marks are famous. Persons familiar with the Complainant's products and services are likely to conclude that the disputed domain name is simply an extension of the Complainant's business. In view of the fame of the Trade Marks and the lack of distinctiveness afforded by the simple addition of non-distinctive or descriptive material, the disputed domain name is misleading.
The Respondent registered the disputed domain name and is using it in bad faith. Specifically:
(1) The Respondent registered the disputed domain in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade marks, trade names and domain names as to the source of the Respondent's website and services;
(2) The Respondent registered the disputed domain name in order to divert traffic intended for the Complainant's websites, using the identical domain name of the Complainant. This can be inferred by the Respondent's conduct, in creating a website with links to the Complainant's websites (“the Website”). Specifically, the Respondent's conduct is enabling it to divert traffic to the Complainant's well-known domain names for the benefit of the Respondent's website that does not in fact offer legitimate services, in order to obtain confidential information of the Complainant's customers.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and there is no way the Respondent would not have been aware of the BBVA Trade Mark, because the Website is in Spanish and with financial services links. It may therefore be presumed that the Respondent knew of the renown of the Trade Marks, and a finding of opportunistic bad faith is in order.
The Respondent obviously knows about the Complainant's products and services provided under the Trade Marks and it is as a consequence obvious that the Respondent is familiar with the Trade Marks. The Complainant has not consented to the Respondent's use of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any licence or consent to use the Trade Marks in a domain name or in any other manner. The Respondent is not commonly known by reference to the Trade Marks and has not registered any trade marks containing the term BBVA. The disputed domain name was registered and is being used in bad faith
The Respondent could have managed a legitimate online business under any different domain name, whilst the disputed domain name (a) suggests that it is officially associated with the Complainant, which is not the case; and (b) prevents the Complainant from registering the disputed domain name and attracting corresponding Internet traffic. By the use of the disputed domain name the Respondent diverts traffic which would otherwise go to the Complainant's websites.
The Respondent's bad faith is further demonstrated by the use of the disputed domain name to provide advertising links to websites promoting and/or offering products and services of third parties, especially in the banking field being the business area of the Complainant.
The Respondent's use of the disputed domain name is clearly an attempt to attract Internet users to the Respondent's online location by creating a likelihood of confusion with BBVA's name and with the Trade Marks within the meaning of paragraph 4(b)(iv) of the Policy. This is particularly so because the Website contains information about the Complainant.
Given that the disputed domain name is completely comprised of the Trade Marks, any active use of the disputed domain name by the Respondent would create a false impression that the Respondent and the Complainant are connected.
The notoriety of the Trade Marks and the Respondent's lack of any connection to Complainant all indicate opportunistic bad faith registration and use. The Respondent would have been fully aware of the Complainant's rights and reputation prior to the registration of the disputed domain name. It is obvious that the Respondent has registered the disputed domain name for the sole purpose of trading on the goodwill associated with the Trade Marks and misleading the public into believing that it is the Complainant.
The unauthorised registration and use by the Respondent of the disputed domain name constitutes representations that:
(1) the Respondent and its services are somehow connected to the Complainant;
(2) the Respondent has the authority of the Complainant to use the Trade Marks and to conduct the services that it is providing on the Website under the Trade Marks;
(3) the Respondent has the approval of, or an affiliation with, the Complainant;
(4) the services provided by the Respondent are of a particular standard and quality that the Complainant's customers have come to expect as services provided by the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the disputed domain name has been registered in Latin/ASCI characters, not in Chinese characters;
(2) the contents of the Website are mainly in English language, with some Spanish language;
(3) the WhoIs search result for the disputed domain name is in English characters.
The Respondent did not file a formal request for Chinese to be the language of the proceeding by the due date. The Respondent did however state in email correspondence with the Center that:
(1) the Respondent is a Chinese individual;
(2) the Respondent's English language ability remains at the level of one who must consult a dictionary.
On December 30, 2009, China Springboard, Inc. transmitted by email to the Center its verification response confirming that the language of the Registration Agreement for the disputed domain name is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The language of the registration agreement for the disputed domain name is Chinese.
The Panel nonetheless finds that evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432), due to the fact the Website was, at least at the time of filing of the Complaint, entirely in English and Spanish language.
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Moreover, the Panel notes that all of the Center's communications have been transmitted to the parties in Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by many years the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of descriptive terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the word “compasss” does not serve to distinguish the disputed domain name from the BBVA Trade Mark, particularly given the Complainant's registration and use of the BBVA COMPASS Trade Mark, and this word should be disregarded in determining the question of confusing similarity.
The addition of the extra “s” does not serve to distinguish the disputed domain name from the BBVA COMPASS Trade Mark, and this letter should be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to both of the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks or similar marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by many years. There is therefore a likely prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is therefore on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
At some stage following receipt of the Complaint, the disputed domain name was resolved to an inactive website. The disputed domain name is currently being “passively” held by the Respondent.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
At the time of filing of the Complaint, the Website was being used to provide sponsored links to various websites offering similar banking and financial services to those offered by the Complainant under the Trade Marks. Furthermore, the Website featured unauthorised reproductions of the logos and banners of the Complainant.
The Panel therefore finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
At some stage after receipt of the Complaint, the Respondent changed the Website to a sponsored link website to an inactive website. In light of the circumstances, the Panel finds this conduct provides further evidence of bad faith.
Furthermore, it has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that this amounts to additional grounds for finding bad faith on the part of the Respondent.
In this case, the failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Sebastian Hughes
Sole Panelist
Dated: March 9, 2010
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