Complainant is Banco de Sabadell, S.A. of Sant Cugat del Vallès, Spain, represented by Adelaida Ponti Sales, Spain.
Respondent is Domain Jet Inc.,Jack Sun of Mountain View, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2011. On December 28, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On December 29, 2011, Dynadot, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to the Center’s notice that the Complaint was formally deficient, Complainant filed an amended Complaint on January 10, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied 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 Respondent of the Complaint, and the proceedings commenced on January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on February 7, 2012. 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
Complainant is a Spanish financial entity founded in 1881, and nowadays is one of Spain largest banking group. In Spain, Complainant has over 500 branches. In 1993, Complainant opened a branch in Miami, Florida, United States. In 2007 and 2009, Complainant acquired other financial institutions in the United States. Complainant currently has branches, representative offices and subsidiaries in 24 countries.
Complainant owns several trademark registrations worldwide containing SABADELL, such as Spanish registration no. 2147632 registered in September 1998 for trademark BANCSABADELL NET in classes 36 and 38; and European Community registration no. 3820991, with priority date of April 21, 2004, and United States registration no. 3,395,810, registered on March 11, 2008 both for trademark SABADELLATLÁNTICO in classes 35 and 36.
Respondent is domiciled in the state of California, United States. The disputed domain name was registered on March 24, 2009. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the SABADELL trademark owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proof is on Complainant. A. Identical or Confusingly Similar
To prove this element, Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to Complainant’s trademark. Complainant uses and has registered worldwide several trademarks containing SABADELL, as mentioned in paragraph 4 above. The Panel is therefore satisfied that Complainant has registered trademark rights in SABADELL.
Respondent has used Complainant’s trademark in its entirety and added the descriptive term “bank”, which describes exactly the line of business of Complainant. Therefore, the addition of such term increases the likelihood of confusion, instead of reducing it. Several prior UDRP Panels have held that a domain name is confusingly similar to a trademark when a respondent uses complainant’s trademark and adds a term that fails to distinguish the disputed domain name from the trademark (see, for example, the early UDRP cases Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755).
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is confusingly similar to Complainant’s SABADELL trademark. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Respondent does not run any legitimate business activity in connection with the disputed domain name. On the contrary, Respondent runs under the disputed domain name a pay-per-click site (also known as “link farm”), which is not considered to be a legitimate business activity in the meaning of the Policy in circumstances such as in the present case. See, e.g., Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462. The Panel in this case is (as discussed further below) satisfied that Respondent registered and is using the disputed domain name in connection with its trademark meaning, and not, for example, in connection with any merely descriptive or dictionnary meaning “Sabadell Bank” might have.
Complainant has established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel concludes that the disputed domain name is not rightfully used by Respondent in connection with any bona fide offering of goods and services and finds that Respondent has no rights or legitimate interests in the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
Complainant submits that Respondent was aware of the existence of the trademark SABADELL and, therefore, that the disputed domain name was registered in bad faith. In fact, the disputed domain name was registered on March 24, 2009, that is, several years after Complainant started to use the SABADELL trademark, which happened in 1881 in Spain and in 1993 in the United States. The registration of the disputed domain name also happened several years after Complainant’s trademark application for trademark SABADELLATLÁNTICO had been filed in the United States in December 2004. Therefore, the prior rights over such trademarks are clearly on Complainant’s side.
An additional indication of bad faith on Respondent’s part is the fact that in the web site to which the disputed domain name resolves, the same is being advertised as for sale (Policy, paragraph 4(b)(i)).
Moreover, in the Panel’s view, the fact that Complainant has made a long and ample use of the SABADELL trademark to advertise its financial services is an indication that Respondent indeed could not fail to have prior knowledge of Complainant’s trademarks. In this regard, the use of the word “bank” by Respondent is an indication that Respondent is willing to create an association of its website with Complainant’s financial services. Through such association, Respondent lures Internet users to the web site hosted under the disputed domain name, in which Respondent runs a “link farm”. Thus, it is reasonable to assume that the confusion created by Respondent brings him undue commercial gains (Policy, paragraph 4(b)(iv)).
The Panel is therefore satisfied that Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(i) and (iv) of the Policy. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: February 28, 2012
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