The Complainant is Bizum, S.L., Spain, represented by Clarke, Modet y Cia. S.L., Spain.
The Respondent is Dan Lan, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2021, 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 September 13, 2021 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 amended Complaint on September 15, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. Aside from an informal communication from October 3, 2021, the Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 11, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on October 13, 2021. 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 language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual BackgroundThe Complainant is owned by 23 banking entities operating in the Spanish market and working towards developing innovative payment solutions.
Bizum is the brand of the mobile payment service provided by the Complainant.
Among others, the Complainant is owner of the European Union Trademark Registration (“EUTM”) No. 015188253 for the mark BIZUM and design element registered on July 19, 2016 for goods and services of classes 9, 16, 35, 36, 38 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant owns the domain name
The disputed domain name was registered on January 19, 2021, and resolved to a Spanish language website with reference to payment services.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its BIZUM trademark, since it is composed of the trademark and the descriptive term “pay”.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondent registered the disputed domain name with actual knowledge of its BIZUM trademark and has used it to create a false impression of affiliation with the Complainant for commercial benefit.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
In an informal email communication sent to the Center on October 3, 2021, the Respondent stated: “Hello We don’t want any dispute. The website is closed. Thanks”.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the BIZUM trademark and for the purpose of this proceeding the Panel establishes that the EUTM No. 015188253 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to its BIZUM trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s trademark consists of the word element “bizum” followed by a design element, which does not convey any relevant information for the purposes of this proceeding. What stands out in the Complainant’s trademark is the word element “bizum”, which the Respondent fully incorporated in the disputed domain name. Addition of the descriptive term “pay” does not prevent a finding of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the BIZUM trademark.
The Complainant has never authorized the Respondent to use its BIZUM trademark in any way, and its rights in the BIZUM trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In his informal communication to the Center the Respondent failed to provide explanation, let alone justify his registration of a domain name comprising the Complainant’s trademark within the meaning of paragraph 4(c) of the Policy.
The Respondent has done nothing to rebut the Complainant’s strong prima facie case and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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 website or other online 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.
On the one hand, in his informal communication to the Center the Respondent did not indicate any reason, not to mention any good faith reasons, for his registration and use of the disputed domain name.
On the other hand, the following undisputed evidence presented by the Complainant convinces the Panel that the Respondent has registered and used the disputed domain name in bad faith:
a) The Complainant’s BIZUM trademark has no dictionary meaning; it was invented by the Complainant. The disputed domain name is reproducing the Complainant’s trademark in its entirety and the additional term “pay” in the disputed domain name refers to the Complainant’s business.
b) The Spanish language website to which the disputed domain name pointed directly referenced the Complainant and its services under the BIZUM trademark by suggesting users to “Add Bizum, the most popular payment method in Spain”.
These facts in the Panel’s view evidence that the Respondent knew of the Complainant’s trademark and its business when obtaining the disputed domain name and has used it with obvious intent to confuse Internet users and create a false impression of an association with the Complainant and its activities.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or website under its control) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such sites or the services advertised on such sites, within the meaning of paragraph 4(b)(iv) of the Policy and that paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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
Zoltán Takács
Sole Panelist
Date: October 27, 2021