The Complainant is Banco Bac San José S. A. of San José, Costa Rica, represented by E-Proint S.A., Costa Rica.
The Respondent is Ian Haet, Web Incubator of Philipsburg, Saint Marteen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with PlanetDomain Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in Spanish with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2012. On September 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012, the Complainant provided a copy of the Complaint in English to the Center. On September 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and confirming that the language used in the Registration Agreement as English.
On September 21, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Spanish. On September 22, 2012, the Complainant provided the Complaint again in English. The Respondent did not submit formal comments in response, however on September 13, 2012, the Respondent requested a copy of the Complaint and Annexes in English form Complainant.
On September 20, 2012, the Center received an informal email communication from the Respondent. On September 21, 2012, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On September 27, 2012, the Center notified the suspension of the proceeding. On October 27, 2012, the Complainant requested the reinstitution of the proceeding. On October 29, 2012, the Center reinstituted the proceeding.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Center received informal email communications from the Respondent on September 13, 20, 27 and 29, 2012, October 15 and 29, 2012, as well as November 22, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on November 21, 2012.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on December 3, 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
The Complainant owns several Costa Rican trademark registrations, including BAC BENEFICIOS (and design), Registration Nos. 183003 and 183071, registered on December 5, 2008, and December 12, 2008, respectively.
The Complainant is a bank established in Costa Rica more than 20 years ago, doing business primarily in Central America.
The disputed domain name was registered on December 22, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant contends that it is the largest and most profitable bank in Costa Rica with fifty years of operation in Central America.
That it owns several Costa Rican trademark registrations, including BAC BENEFICIOS (and design), Registration Nos. 183003 and 183071, registered on December 5, 2008 and December 12, 2008, respectively.
That the disputed domain name is confusingly similar to a trademark in which the Complainant has rights; that the Respondent lacks rights and legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
For the above reasons, the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not submit any formal response. 6. Discussion and Findings
Before considering the merits of the case the Panel will address three procedural issues.
(i) The Complainant has filed the Complaint in Spanish (on the grounds that Spanish is the official language in its home country: Costa Rica) and also in English, which is the language of the disputed domain name Registration Agreement. Despite the Complainant sustaining that the language of the administrative proceeding should be Spanish (which happens to also be the first language of the Panel), pursuant to the Rules, paragraphs 1 (a) and (b) the Panel decides that the language of the proceeding shall be English.
(ii) Since at the time that the Complainant was filed the disputed domain name was registered in the name of Ian Haet (with organization “Web Incubator”), the Panel considers that Ian Haet is to be treated as the sole Respondent.
(iii) The Panel will not consider the informal communications sent by the Respondent to the Complainant, as they do not serve as a formal response to the Complaint. However, the Panel will take into consideration the consent to transfer expressed by the Respondent in those communications.
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant owns trademark registrations for BAC BENEFICIOS, as noted under Section 4, “Factual Background”, above.
The disputed domain name fully incorporates the trademark BAC BENEFICIOS.
In view of the foregoing, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of producing such evidence shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of producing the relevant evidence has effectively shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. In fact, on the basis of the printouts of the website to which the disputed domain name resolves, submitted by the Complainant and which were not rebutted by the Respondent, the disputed domain name resolves to a pornographic website.
In the terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial.
Additionally, as noted by the Complainant, there is no evidence that the Respondent is commonly known as or identified by “Bac Beneficios”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
The consent to transfer the disputed domain name expressed by the Respondent in his informal communications to the Complainant, rather than an acceptable justification on the part of the Respondent, is taken by the Panel as an implicit confirmation by the Respondent that he lacks any rights or legitimate interest in the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a bank established in Costa Rica more than 20 years ago, doing business primarily in Central America.
Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns Costa Rican trademark registrations for BAC BENEFICIOS that were registered in December 2008, which is well before the disputed domain name was registered on December 22, 2010.
Furthermore, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that the trademark BAC BENEFICIOS was widely publicized well before the disputed domain name was registered.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark BAC BENEFICIOS before the disputed domain name was registered by a J. Freeman on December 22, 2010, and much before the disputed domain name was transferred to the Respondent, which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark.
Once again, the informal communications sent by the Respondent would also weigh in favor of the finding of bad faith.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case. 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 the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: December 17, 2012
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