ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Banco Santander, S.A. v. Leon Williams Case No. D2025-2162 1. The Parties The Complainant is Banco Santander, S.A., Spain, represented by Neudomains Digital, Spain. The Respondent is Leon Williams, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Cosmotown, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2025. On June 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy services) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not wish to submit an amended Complaint. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2025. The Respondent sent two email communications to the Center on July 10, 2025, and July 17, 2025.
page 2 The Center appointed Nicholas Smith as the sole panelist in this matter on July 17, 2025. 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 a leading global financial institution. The Complainant has offices in numerous jurisdictions and offers its services through various websites including “www.santander.com” and “www.santanderbank.com”. The Complainant holds trademark registrations for SANTANDER (the “SANTANDER Mark”) in various jurisdictions, including in the United States (registration number 3,836,554, registered on August 24, 2010, for goods and services in classes 9 and 41). The Domain Name was registered on January 13, 2025, and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: a) It is the owner of the SANTANDER Mark, having registered the SANTANDER Mark (or marks containing the SANTANDER Mark, such as SANTANDER PRIVATE BANKING) in various jurisdictions including the United Kingdom, European Union, and the United States. The Domain Name is confusingly similar to the SANTANDER Mark as it reproduces the SANTANDER Mark in its entirety and adds the descriptive term “private bank” (referring to a core service offered by the Complainant, namely a private banking service associated with the Complainant’s high net worth clients) and a generic Top-Level Domain (“gTLD”). b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the SANTANDER Mark. The Respondent is not commonly known by the SANTANDER Mark, nor does it use the Domain Name for a bona fide offering or legitimate noncommercial or fair use. The Domain Name does not resolve to an active webpage. c) The Domain Name was registered and is being used in bad faith. There is no plausible circumstance under which the Respondent could legitimately use the Domain Name, which consists of the SANTANDER Mark and a descriptive term, other than in bad faith. Given the reputation of the SANTANDER Mark, the inclusion of descriptive terms directly related to the core services offered by the Complainant and the Respondent’s failure to provide an explanation for its use, the Respondent must have been aware of the Complainant’s mark at the time of registration. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The Panel notes that the communications made by the Respondent on July 10 and 17, 2025 merely stated that the Domain Name had been suspended by the Registrar.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “private bank”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2. - the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name.
page 4 There is no evidence of any demonstrable preparations to use the Domain Name at all or any other evidence that would give rise to rights or legitimate interests in the Domain Name. Noting the composition of the Domain Name, adding the terms “private bank”, which are directly descriptive of the Complainant’s business, to the Complainant’s mark, the Panel finds it more likely than not that the Respondent selected the Domain Name with the intention to take unfair advantage of the likelihood of confusion between the Domain Name and the Complainant as to the origin or affiliation of the website at the Domain Name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel finds, on the balance of probabilities, that given the nature of the Domain Name consisting of the Complainant’s well-known SANTANDER Mark and a descriptive term that describes certain services offered under the Complainant’s SANTANDER Mark, and the absence of any explanation for registration of a domain name corresponding with the SANTANDER Mark, it is most likely that the Respondent was aware of the Complainant and its trademark when registering the Domain Name. Further, the Panel considers that the record of this case reflects that there is no evidence of any use or demonstrable preparations to use the Domain Name. UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the disputed domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the reputation of the Complainant’s mark, the composition of the Domain Name, and the Respondent’s failure to file a formal response, and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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 Domain Name be transferred to the Complainant. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: July 23, 2025
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