The Complainant is Soluciones Contables S.A. of Buenos Aires, Argentina, represented internally.
The Respondent is Banco Nacional de Mexico of Medellin, Mexico, represented by Molina Salgado & de Alva, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 29, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 29, 2014.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 4, 2014. 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 an Argentine accounting agency that operates under the mark BAIREX. It registered the mark with the Instituto Nacional de la Propiedad Industrial (“INPI”) of Argentina in 2006 (i.e., Registration No. 2576202; registered August 15, 2006).
The Respondent, a Mexican financial services company, is the owner of the disputed domain name, , which was registered on November 1, 2006. The domain name is used to direct Internet users to the Respondent’s website, which offers online financial services to those users. The Respondent is the owner of the registered trademark BANAMEX and its commonly-used name is “Banamex”. 5. Parties’ Contentions A. Complainant
- The Complainant is a prestigious Argentine accounting firm. It does business under the registered trademark BAIREX, and under the longer business name, CUENTAS EN LINEA BAIREX. The Complainant is willing to submit additional evidence, including masked confidential client documents, in this proceeding to substantiate its claim to both marks if deemed necessary by the Panel.
- The disputed domain name, , is confusingly similar to both the BAIREX and CUENTAS EN LINEA BAIREX marks, graphically and phonetically.
- The Respondent has no rights or legitimate interests in the disputed domain name. It has no registered trademark rights in CUENTASENLINEABANAMEX. The Respondent is not engaged in a bona fide offering of goods or services in connection with the disputed domain name. Instead, the Respondent is using the name to illegitimately divert the Complainant’s potential customers to the Respondent’s website.
- The disputed domain name was registered and is being used in bad faith. At best there is mere passive use being made of the disputed domain name, as it provides only links to the Respondent’s websites. Such use is done for the Respondent’s commercial gain. Moreover, as a competitor of the Complainant, the Respondent is using the disputed domain name in this fashion to disrupt the Complainant’s business and confuse its clients into believing that there is a relationship between it and the Respondent. B. Respondent
- The Complainant has presented insufficient evidence to establish its trademark rights in either BAIREX or CUENTAS EN LINEA BAIREX. Records show that the Argentine trademark rights in BAIREX are registered to an individual, E. L. Avogardo, not the Complainant. The Complainant’s offer to provide further evidence to the Panel, if requested, is not in keeping with the Policy.
- The Complainant offers only allegations, but no evidence, that it is a recognized accounting firm in Argentina.
- The only possible similarity between the disputed domain name, , and the marks claimed by the Complainant occurs with respect to the first three words, “cuentas en linea.” However, there is no possibility of confusion regarding the disputed domain name, and the mark BAIREX when taken by itself or in connection with the longer CUENTAS EN LINEA BAIREX mark claimed by the Complainant. It is not reasonable to believe that Internet users would mistakenly type “banamex” instead of “bairex” at the end of the disputed domain name.
- The Respondent has trademark registrations in Mexico for the marks BANAMEX, LINEA BANAMEX and CUENTAS BANAMEX. The Respondent, the largest bank in Mexico, is commonly known as both “Banco Nacional de Mexico” and the acronym, “Banamex.”
- The disputed domain name is used by the Respondent to provide financial services to Internet users, which constitutes a bona fide offering of goods or services. The Respondent’s use of the name in no way tarnishes the Complainant’s mark.
- The Respondent registered the disputed domain name in good faith to provide certain online services to its clients. Such use is not a passive use. Moreover, there is no competition between the parties, as there is no evidence that the Complainant – a small accounting agency in Argentina – does business in Mexico, where the Respondent operates and was founded more than 100 years ago. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find for the Complainant and order a transfer of the disputed domain name, , provided that the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Preliminary Issue: Late Receipt of Response
The Panel is aware that the Center received the Response on May 29, 2014, i.e., one day after the May 28, 2014 due date. Having reviewed several prior UDRP cases in which a response was filed one day late, the Panel notes that minor breaches of procedure, where the proceedings have not been delayed or the complainant’s rights compromised, usually do not automatically give rise to the solution of dismissing that response. This is particularly true when the respondent, as in this case, is domiciled in a time zone different from that of the Center, whereby it is conceivable that filing might be timely within that time zone.1 Therefore, the Panel will admit and consider the Response in adjudicating the present dispute. See Phase Eight (Fashion & Designs) Limited v. OCC Domain Admin,WIPO Case No. D2012-2502 (“…even if it is assumed that the Response was filed one day late, the Panel considers that the lateness of Respondent’s response is de minimis and has not prejudiced the Complainant nor has it delayed the Decision in this Administrative Proceeding. The Panel therefore has admitted and considered the evidence and submissions in the Response.); Madison Square Garden L.P., MSG Beacon LLC v. Beacon Theater Services, Ltd.,WIPO Case No. D2008-0029; NeuStar, Inc. v. Kris Sweldo,WIPO Case No. D2006-1210; and AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr,WIPO Case No. D2005-0485. B. Identical or Confusingly Similar
The Complainant has submitted to the Panel evidence of the Complainant’s registration with the INPI of Argentina for the mark BAIREX. Despite a contrary contention from the Respondent, the Panel does not question the validity of such registration. Unfortunately for the Complainant, the Panel concludes that the disputed domain name, , is neither identical nor bears much similarity to the BAIREX mark. It is obvious to the Panel that the disputed domain name is much longer than the mark, as the name contains the generic Spanish language words “cuentas en linea,” (translated into English as “online accounts”). Additionally, and perhaps more tellingly, the last term in the name, “banamex,” is dissimilar to the mark, BAIREX. Certainly, both that term and mark begin with the letters “ba” and end with “ex.” However, in the Panel’s view, there is no apparent connection between the respective intervening letters “ir” and “nam,” and the overall impression is of completely distinct terms.
The Complainant also appears to claim trademark rights in the mark CUENTAS EN LINEA BAIREX. Although the Panel can see how that mark could potentially bear a closer resemblance to , the Panel notes that the Complainant has produced not even a shred of evidence that it owns rights, registered or unregistered, in this latter mark. Instead, the Complainant suggests in its Complaint that it could produce some substantiation of its claim to those rights should the Panel request more information from the Complainant.
The Panel declines to do so. Though a streamlined procedure, the Policy provides a useful avenue through which an entity can make, and possibly sustain, the charge that another entity is intentionally misappropriating rights belonging to the former. Thus, when filing a complaint, it is incumbent upon a complainant to bring forth serious, if abbreviated, evidence to establish, at a minimum, a prima facie case in support of its claims. After that submission, a duly constituted panel may wish, on occasion, to seek further material or information from that complainant in order to clarify aspects of the evidence so presented. In this case, the Complainant has failed completely to furnish any such evidence with respect to its ownership of the mark, CUENTAS EN LINEA BAIREX, that would merit a request for clarification. See, for example, Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V.,WIPO Case No. D2011-0057 (“…UDRP panels should be reluctant to request or allow additional submissions that would substantially delay the proceedings or burden the parties. It is not normally necessary or appropriate in the interest of fair process or natural justice to delay the UDRP proceeding so that the parties can comment on legal or factual materials that were in existence and foreseeably relevant to their positions when they prepared the complaint or response.”).
Accordingly, the Panel finds that the Complainant has failed to demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. C. Rights or Legitimate Interests / Registered and Used in Bad Faith
Since the Complainant has failed to sustain its case with respect to the first element required under the Policy, the Panel will not proceed with an analysis of the case regarding the final two elements. Nonetheless, the panel will opine, as alluded to below, that it believes it extremely unlikely that the Complainant could prevail as to any Policy element as the Respondent’s commonly-used name is “Banamex” and the domain name is used to direct Internet users to the Respondent’s website, which offers online financial services to those users. D. Reverse Domain Name Hijacking
The Respondent has not requested a finding of Reverse Domain Name Hijacking, but that does not prevent the Panel from considering such a sanction. See Primal Quest, LLC v. Gabriel Salas,WIPO Case No. D2005-1083.
In this case, the Panel believes that the Complainant has failed miserably to establish that it owned a trademark or service mark to which the disputed domain name could be considered confusingly similar. Furthermore, the Panel, based on its own cursory two-minute online search regarding the term “banamex,” concludes that the Complainant might have discerned quite easily that the Respondent was a well-known and respected Mexican financial services company that certainly would have a legitimate interest in any domain name that referred to “online accounts.” The fact that both parties operate primarily in Spanish only reinforces the Panel’s finding that the Complainant must have known that “cuentas en linea” combined with the Respondent’s commonly-used name, “Banamex,” would be a natural fit for a domain name owned by the Respondent. Ergo, with respect to the disputed domain name, , the Panel determines the Complainant’s filing to be frivolous, abusive and worthy of a finding of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied. Moreover, in view of the Complainant’s actions, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Dennis A. Foster
Sole Panelist
Date: June 18, 2014
1 While this issue is not entirely clear, it appears from the available record that the Respondent is indeed domiciled in such a time zone.
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