The Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Internet Names World Wide Espana, SL, Spain.
The Respondent is WhoisGuard of Los Angeles, California, United States of America / Timona Por Motin of Lima, Peru. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 28, 2013.
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” 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 March 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.
The Center appointed Enrique Ochoa as the sole panelist in this matter on March 30, 2013. 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 Banco Bilbao Vizcaya Argentaria, S.A. (“BBVA”) is a large, global financial group with a global reach and a strong capital base and one of the major players in the European market. According to the Complainant, it occupies a solid position in the Spanish market and it plays a leading role in Latin America.
The Complainant offers individual and corporate customers a range of financial and non-financial products and services. According to the Complainant, it enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago, and also has a leading franchise in South America; that it is the largest financial institution in Mexico; that it is one of the 15 largest commercial banks in the United States of America and one of the few large international groups operating in China.
The Complainant employs 104,000 people in over 30 countries around the world, has more than 47 million customers and 900,000 shareholders. The international presence of BBVA now dates back a century. In 1902, Banco de Bilbao opened a branch in Paris and, in 1918, another in London.
The Complainant is the owner of numerous trademark registrations, especially for banking services, including in the European Community, United States of America and Peru. The Complainant has registered, among others, the following trademarks which are in full force and effect:
Country
Trademark
Registration number
Registration dates
European Community Trademark
BBVA
001349943
July 7, 2003
European Community Trademark
BBVA
001355270
November 20, 2000
European Community Trademark
BBVA
001457746
July 2, 2001
United States of America
BBVA
4304260
March 19, 2013
United States of America
BBVA
4304261
March 19, 2013
United States of America
BBVA Bancomer
3683228
September 15, 2009
The Complainant has also registered numerous domain names, such as , ,
, as well as other country code domain names, for the needs of its activities on the Internet as evidenced in “”.
The fame of the Complainant’s trademark in several countries has been evidenced in prior WIPO domain name cases, among others: Banco Bilbao Vizcaya Argentaria, S.A. v. X company,WIPO Case No. D2005-0289 ();, Banco Bilbao Vizcaya Argentaria S.A. v. Nicolas Zalcberg, Z & A Group,WIPO Case No. D2003-0475 () and Banco Bilbao Vizcaya Argentaria v. Master Inc.,WIPO Case No. DPE2010-0001 ().
The disputed domain name was created on February 7, 2013. 5. Parties’ Contentions A. Complainant
The Complainant is a global group that offers individual and corporate customers the most complete range of financial and non-financial products and services. The Complainant enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago. The Complainant also has a leading franchise in South America; it is the largest financial institution in Mexico; one of the 15 largest United States commercial banks and one of the few large international groups operating in China and Turkey. The Complainant employs 104,000 people in over 30 countries around the world, has more than 47 million customers and 900,000 shareholders.
The Complainant’s international activities are already a hundred years old. The Complainant opened a branch in Paris in 1902 and a London branch in 1918. It was thus several decades ahead of other Spanish banks. During the 1970s Banco de Bilbao, Banco de Vizcaya and Banco Exterior became international groups with branches and representative offices in the main capitals of Europe, the Americas and Asia. They also started to acquire local banks in these areas, mainly in Latin America.
The Complainant is the registered proprietor of numerous trademarks comprising the word “BBVA” both alone and together with devices and other words. These numerous variants of the BBVA mark are registered in many countries. The Complainant is also the registrant of a portfolio of domain names including , and . The Complainant uses these domain names to promote and offer consumer, corporate and small-company banking services.
The disputed domain name differs from the Complainant’s trademark BBVA only to the extent of the addition of the generic word “enlinea”. The addition of “enlinea” does not reduce or limit the likelihood of confusion. In fact, the letters “enlinea” may have the effect of focusing attention on the word succeeding them.
Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communs, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).
As far as a comparison between the disputed domain name and the Complainant’s trademark BBVA is concerned, the addition of the word “enlinea” to the word “BBVA” in the disputed domain name has minimal impact on what the viewer focuses on, namely, the word “BBVA”. The inclusion of the generic term “enlinea” does not distinguish the Respondent’s domain name from the Complainant’s marks. The Respondent has deliberately added the word “enlinea” to the word “BBVA” in the disputed domain name because the Complainant’s BBVA trademark is well-known around the world in connection with the Complainant’s Banking services. The common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable. See, in each of Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd,WIPO Case No. D2001-0110 in respect of the domain name ; Christie’s Inc. v. Tiffany’s Jewelry Auction Inc.WIPO Case No. D2001-0075 in respect of the domain name ; and Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo,WIPO Case No. D2001-0020 in respect of the domain name , the second element of each domain name represented the goods or services in respect of which each Complainant’s trademark had been registered, and those goods or services which the general public would associate with that trademark. Rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trademarks in question, in such situations confusing similarity was regarded as inevitable.
The disputed 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 name might resolve. The inclusion of a trademark in a domain name suggests to consumers that the web site found at that domain name is associated with the owner of the trademark specially when the domain name is redirected to the Complainant’s official BBVA web site in Panama and probably the Respondent is also owner of two domain names, and , with the same creation date and also redirected to the Complainant’s official web site in Panama.
The Complainant’s mark and its services 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 Complainant’s marks and the lack of distinctiveness afforded by the simple addition of non-distinctive or descriptive name, the disputed domain names are misleading.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because: i) the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; ii) the Respondent has not been authorized by the Complainant to use the trademark BBVA in any manner; iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because the disputed domain names connects to the Complainant’s web site, hence, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) the Respondent has no prior rights or legitimate interest in the disputed domain name; and v) the Respondent must have known the Complainant’s trademark since it is a “well-known” and “reputed” trademark.
The disputed domain name was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain name might resolve. The inclusion of a trademark in a domain name suggests to consumers that the web site found at that disputed domain name is associated with the owner of the trademark.
The Respondent has used the disputed domain name only to point to the Complainant’s web site. If the Respondent planned to sell its product not only domestically but also abroad, such use of the disputed domain name would cause confusion amongst the Respondent’s potential customers. The choice of this product name - identical to the company name of one of the Respondent’s potential customers (the Complainant) - rather suggests that the product (if at all) was only developed for the Complainant. This is, however, not sufficient to establish any rights of the Respondent in such product name.
The Respondent must have had the Complainant in mind when registering the disputed domain name, that in these circumstances and on the balance of probability, the Respondent’s objective in registering the disputed domain name and using the domain name.
The domain name owner has no rights or legitimate interests in the disputed domain name pursuant to Policy 4(c)(ii). See Gallup Inc. v. Amish Country Store, Claim No. FA 96209 (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., Claim No. FA 96356 (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Further, the inclusion of a “.com” suffix to the registered Mark, as reflected in the disputed domain name, does not distinguish the disputed domain name in any significant way from the Complainant’s registered Mark.
The Complainant contends that the disputed domain name was registered and has been used in bad faith. The fact that the Respondent chose the word “BBVA” to make up his or her disputed domain name is evidence per se of his or her bad faith. This selection was deliberate and not product of chance: “BBVA” is not a common word in the Spanish language. Given the extent of the trademark BBVA’s well-known character, the Respondent simply could not have been unaware of it. Thus, the Respondent deliberately took someone else’s trademark to register a domain name. Indeed, BBVA is a well-known and famous trademark as has been established before for decades and has registered the mark in multiple jurisdictions. The mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith. See Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Direct Navigation Data Inc.,WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, the Complainant contends that the Respondent is using the disputed domain name in bad faith, since the disputed domain name resolves to an official BBVA web site in Panamá. The Respondent must have known that the word “bbva” within the disputed domain name would attract Internet users seeking the Complainant’s trademark, to the web site from which he or she expected to make money. Thus, the Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s mark.
Because of the national and international notoriety of the Complainant’s trademark BBVA and the high profile of the Company and the BBVA Site, the Respondent would have been fully aware of the Complainant’s and/or BBVA’s rights and reputation prior to the registration of the disputed domain name and was in any event on constructive notice of the trademark registrations and other domain name registrations.
The web site is presented as if they are official web sites of the Complainant. “Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services”: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 ().
The Respondent has always used the disputed domain name to point to the Complainant’s official web site. In Novobank vs Iris,WIPO Case No. D2003-0366 the panel considered that is bad faith usage since the Domain Names were in fact used for the Complainant’s business, however, at the discretion of the Respondent. It is generally agreed that not only active but also passive usage of a domain name can constitute bad faith use (see in particular Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003, upholding that bad faith usage must be assumed when the registration is undertaken in bad faith and the circumstances of the case are such that the respondent continues to act in bad faith), and it is found by this Panel that certain facts accompanying a prima facie good faith looking usage must be considered as use in bad faith. In support of its case the Complainants mention Case Details forWIPO Case No. D2004-1089: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The evidence is that the Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trademark of the Complainant’s web site, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy. As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyP /Purple, Purple Bucquet,WIPO Case No. D2010-1688. “The Panel considers that the Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers (ICANN) – accredited registrar), agreed to be bound by all terms and conditions of the Domain Registrant Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the disputed subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar’s Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s domain name registration services may be suspended, and the domain name cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In this case, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith”. A. Identical or Confusingly Similar
The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyP /Purple, Purple Bucquet,WIPO Case No. D2010-1688. “This Panel finds that the disputed domain name [] is [confusingly similar] to the Complainant’s widely known [BBVA] trademark. The Panel notes that the Complainant’s trademarks were registered significantly earlier than the date of registration of the disputed domain name. In addition, the disputed domain name wholly comprises the Complainant’s [BBVA] trademark.”
The addition of the Spanish words “en linea” (“online” in English) grants no distinguishing attributes to the disputed domain name (e.g. Ontario Lottery and Gaming Corporation v. Paul Sweitzer,WIPO Case No. D2002-0602 (); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp.,WIPO Case No. D2002-0336 (); Telstra Corporation Limited v. David John Singh,WIPO Case No. D2002-0260 (); Dell Computer Corporation v. Parmi Phull,WIPO Case No. D2001-0285, ( and ); T, S.A. de C.V. v. José Guerra, WIPO Case No. D2002-0619 )).
Moreover, there is a series of cases involving distinctive marks plus the suffix “online” in which the corresponding Panels have found that the addition of the gTLD “.com” is not a distinctive element B. Rights or Legitimate Interests
The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyP /Purple, Purple Bucquet,WIPO Case No. D2010-1688. “This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s [BBVA] trademark nor with the disputed domain name; that the disputed domain name is being used to intentionally misdirect to the Respondent’s web site visitors who attempt to visit the Complainant’s web site; that the Respondent has not used nor prepared to use the disputed domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the disputed domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.” C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel notes and agrees with the points that have been made by the panel in the earlier decision of T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717. “Based on the evidence submitted by [the] Complainant, this Panel has found that [the] Respondent had or should have had knowledge of the existence of [the] Complainant’s business and trademark [ ]. Additionally, the Panel has found that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that [the] Respondent has not been known by the domain name and therefore that [the] Respondent has no rights or legitimate interests in the said domain name.
[The] Respondent registered a domain name that fully incorporates [the] Complainant’s registered trademark. Considering that it is undisputed that such trademark is distinctive [….], it is difficult to infer that [the] Respondent’s act of registration was a mere coincidence or a result of good faith.”
The disputed domain name redirects to a web site that: i) in the banner displays the following: which clearly makes reference to the BBVA brand of the Complainant and appears to be a web site that relates to the country of Panama and; ii) that appears to be a web site of the Complaint since it copies and uses its trade dress. There are institutional colors and fonts of the Complainant.
The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyP /Purple, Purple Bucquet,WIPO Case No. D2010-1688. “The Panel furthermore finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration of the disputed domain name by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s trademark [BBVA], as to the source, sponsorship, affiliation or endorsement of the web site www., and therefore has made a bad faith use of the disputed domain name.”
Based on the foregoing analysis, the Panel concludes that the Complainant has provided sufficient evidence that the disputed domain name was registered and is being used by the Respondent’s in bad faith. 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.
Enrique Ochoa
Sole Panelist
Date: April 18, 2013
Full & Egal Universal Law Academy