WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sociedad Rectora de la Bolsa de Valores de Bilbao, S.A. v. Christian P. Vandendorpe

Case No. D2001-0093

 

1. The Parties

The complainant is Sociedad Rectora de La Bolsa de Valores de Bilbao, S.A., a company incorporated in Spain with its principal place of business at Calle Josť MarŪa Olabarri 1, 48001 Bilbao, Spain, and represented by Mr. Antonio Creus & Mrs. Carmen Burgos from Cuatrecasas Abogados ("the Complainant").

The respondent is a Dutch individual named Christian P. Vandendorpe, with registered address at Prinsenstraat 13 III, Amsterdam 1015 DA, Netherlands ("the Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <bolsabilbao.com> ("the Domain Name"). The Registrar of the Domain Name is Network Solutions, Inc. and it is addressed at 505 Huntmar Park Drive, Herndon, VA 20170, USA ("the Registrar").

 

3. Procedural History

A complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 18, 2001/January 19, 2001, in email version and hardcopy respectively, pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 24, 1999 ("the Complaint").

This was done satisfying the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

On January 18, 2001, Supplemental filing was received by email, and by hardcopy on January 26, 2001("the Supplement").

On January 23, 2001, Acknowledgement of Receipt of Complaint was sent to the Complainant.

On January 25, 2001, a Request for Registrar Verification was transmitted to the Registrar and the Registrar confirmed by e-mail that the domain name <bolsabilbao.com> is registered with the Registrar and that the Respondent is the current registrant of the Domain Name.

Subsequently, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted by email to the Respondent setting a deadline by which the Respondent could submit a response to the Complaint.

A Response was submitted by the Respondent to the WIPO Center on due time.

On March 6, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel to the parties, in which Mayer Gabay was appointed as Sole Panelist. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

 

4. Factual Background

On the basis of the documents submitted by the parties the following facts can be established as agreed between the parties or insufficiently disputed.

The Complainant is the owner of the following trademarks registered at the Spanish Patents and Trademarks Registry (Oficina Española de Patentes y Marcas), regarding this Complaint:

"BOLSA DE BILBAO", registered on December 5, 1991 as a Class 14 trademark, with registration number 1562089.

"BOLSA DE BILBAO", registered on December 5, 1991 as a Class 16 trademark, with registration number 1562090.

"BOLSA DE BILBAO", registered on March 5, 1992 as a Class 35 trademark, wih registration number 1562091.

"BOLSA DE BILBAO", registered on March 5, 1992 as a Class 36 trademark, with registration number 1562092.

"BOLSA DE BILBAO", registered on March 5, 1992 as a Class 41 trademark, with registration number 1562094.

Likewise, the Complainant is the registrant of the following domain names:

<bolsabilbao.es>, registered by SOCIEDAD RECTORA DE LA BOLSA DE VALORES DE BILBAO, S.A. at NIC-ES on April 3, 2000.

<bolsabilbao.net>, registered by SOCIEDAD RECTORA DE LA BOLSA DE VALORES DE BILBAO, S.A. at Network Solutions.

The Complainant is the managing corporation of the "Bolsa de Bilbao" (Bilbao Stock Exchange), which is one of the four Stock Exchanges existing nowadays in Spain, incorporated on July 26, 1989. Besides serving as a trading centre, it offers to its users other value added services through its websites.

The Bilbao Stock Exchange is a well-known institution in the Basque and the Spanish financial system, and has an increasing and recognised international projection, being a member of the most important European and Latin American Stock Exchanges.

The volume of purchases and sales realised in the Bilbao Stock Exchange was, in the year 1999, 12.478.950.000 Pesetas (75.000.000 Euro).

The Respondent is the registrant of domain names in several areas, such as the development of websites designed for the distribution of software for the Palm Pilot organiser. In particular, the Respondent developed a program called "Stock Manager" ("the Stock Manager") for the management of stock portfolios through the Palm Pilot that updates stock information/statistics by connecting the handheld organiser to a wireless modem or a mobile telephone. Most of the domain names registered by the Respondent are devoted to such program: in particular, those related to the Spanish Stock Exchanges (Madrid, Barcelona, Valencia and the disputed Domain Name for the one in Bilbao,<bolsabilbao.com>, which was registered on February 21, 2000) and the Amsterdam Stock Exchange.

Users may freely download a limited version of the Stock Manager, but if they are interested in getting a complete version of the program, they must register as users and pay a small fee ($24.95).

After filing the Complaint, on January 18, 2001, the Respondent notified the Complainant that it had changed the presentation of the website related to the Domain Name. The Respondent included the following:

"UNDER CONSTRUCTION!

Coming soon, everything you wanted to know about shopping in Bilbao!

Dentro de poco, todo sobre la bolsa de la compra en Bilbao"

No such change was made in any of the other Respondentís websites related to Stock Exchanges on the same date (as evidenced by the printings the Complainant printed out on January 18).

 

5. Applicable Rules

Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:

(i) the domain name at issue is identical or confusingly similar to Complainant's trademark, and

(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.

Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interest to the domain name for the purpose of paragraph 4(a)(ii) above.

 

6. Parties' Contentions

6.1 The Complainant

In the Complaint and the Supplement, the Complainant states that there are circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of promoting the Stock Manager, by linking the web site devoted to this program to the Domain Name (and other domain names related to other Spanish Stock Exchanges and to the Amsterdam Stock Exchange).

The grounds for the Complaint are:

(1) the Domain Name <bolsabilbao.com>is identical or confusingly similar to the "BOLSA DE BILBAO" trademark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interest in respect of the Domain Names as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy regarding <bolsabilbao.com>. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without an intent for commercial gain to misleadingly divert consumers of the Complainant or to tarnish the Complainantís trademark.

(3) The Domain Name<bolsabilbao.com>, was registered in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy. Given the fact that the Domain Name was to be included in the Stock Manager for the management of stock portfolios through the Palm Pilot and that the Respondent had no relation with the Bilbao Stock Exchange that would make it legitimate for him to use such trademark, it is clear that the Respondent merely used the Domain Name with the intent to mislead and divert consumers or to tarnish Complainantís trademark for commercial gain.

In the Complaint, the Complainant requests that the Respondent transfer the ownership of the Domain Name in issue to it.

6.2 The Respondent

In his Response, the Respondent states that the Complainantís trademark ("Bolsa de Bilbao") has nothing to do with the Domain Name (<bolsabilbao.com>), since it is made up of the Spanish word "Bolsa" that may have different meanings (not only related to the stock exchange area). Therefore, it does not violate the Complainantís Spanish trademark. In any event, the Respondent alleges that since the Complainantís trademark is not an international trademark, it has the right to register the Domain Name.

The Respondent also states that it has not benefited commercially from the use of the Domain Name, since his only intention has been to provide free information. Consequently, it has not registered the Domain Name in bad faith.

Finally, the Respondent declares that it has never stated anything that may associate him with the Complainant.

 

7 Discussion and Findings

7.1 Identical or confusingly similar

The Domain Name <bolsabilbao.com> is clearly confusingly similar to the Complainant's trademarks "BOLSA DE BILBAO". And absence of the word "DE" makes no difference since it is only a Spanish preposition used as a link between two nouns and may not be understood as an essential part of the denomination that contributes it to be identified from another domain name.

On the other hand, even though the word "Bolsa" may have other meanings, when used together with the word "Bilbao" and in the context of the Stock Manager, there is no doubt it may lead to confusion.

Moreover, due to the fact that the Complainantís web site is provided at the Domain Name <bolsabilbao.es>, it may be clearly misleading to Internet users.

7.2 Rights or legitimate interest

According to the Complainant the registration by the Respondent of the Domain Name was not guided by a legitimate purpose, but only intended to divert to his own benefit Internet users, who could be under the impression they were visiting the Complainantís web site, in order to promote the software programs developed by the Respondent.

If we try to take a look at the purpose of the Respondent when registering the domain name, the fact that the Domain Name was connected to the Stock Manager jointly with other domain names related to the stock exchange field makes it difficult to think that the Respondent wanted to give only general information about the shopping in the city of Bilbao (as stated in the email from January 18, 2001 from the Respondent to the Complainant). It is quite suspicious that the Respondent also added the "Under Construction" statement just after receiving the Complaint and only to this website and not to the rest. It looks more as if the Respondent, by registering and using a third partyís trademark as his domain name, wished to assure himself visits from website users.

Paragraph 4(c) of the Policy states circumstances which demonstrate a Respondent's rights or legitimate interest to a domain name. The Paragraph sets out by providing:

"Any of the following circumstances (...) found by the Panel to be proved on its evaluation of all evidence presented shall demonstrate your rights or legitimate interest to a domain name (...)".

Therefore, on the basis of this Paragraph, the Respondent has the burden of proof of its rights or legitimate interest in the Domain Name.

The Respondent states that it is not obtaining any commercial benefits from the use of the Domain Name. However, the Respondent admits that the Stock Manager is a "shareware" program, which means that it may be used for free, but "if you want to be able to use it to its limit, you must register it for a small fee". Therefore, since the Domain Name is devoted to such program, any exhaustive use of it will bring him some benefit (no matter if high or low or if it the web page itself is one of the most/least downloaded pages).

The Respondent also alleges that it has every right to register the Domain Name since it does not infringe any international trademark and the Domain Name "is made up of words deemed to be in the public domain".

This second part of the allegation was already dealt with in Section 7.1, where it was rejected.

Concerning the first part of the allegation, the following must be stated. The "BOLSA DE BILBAO" trademarks were registered at the Spanish Patents and Trademarks Registry, which means this registration had a national character. However, the fact that the Bilbao Stock Exchange is a Stock Exchange, a well-known institution in the financial system of any country gives it a special character, not only in Spain, but also in the European Union (in which the Respondent is a citizen), if not worldwide. Moreover, territoriality applies to trademarks but definitely not to domain names, which are not limited to one country. Consequently, the fact the Complainant has not registered its trademark internationally makes no difference in this case. In this regard, in WIPO Case No. D-2000-1326

(Societť des Bains de Mer et du Cercle des Etrangers de Monaco limited v International Lotteries), where the respondent claimed that the complainant had no world mark and no trademark outside Monaco, "which is a very small country", the Decision in such case stated the following: "It is also important to note that the size of a country of origin is not to be considered as relevant, and particularly so in matters regarding Internet and domain names."

And, on the other hand, the Respondent had no right on the trademarks referred to the name "BOLSA DE BILBAO" or any relation with the Bilbao Stock Exchange that would make it legitimate for him to use such trademark.

In view of the above, since no conclusive evidence has been provided that the Respondent used the Domain Name in connection with a legitimate noncommercial or fair use of the Domain Name prior to receiving the notice to him of the dispute, no rights or legitimate interest may be seen as proven. Therefore, it seems to be that the only goal of such a registration was to obtain a commercial gain, by misleadingly diverting consumers or tarnishing and diluting the trademark at issue.

In conclusion, under the circumstances of this case, it should be held that the Respondent has no rights or legitimate interest in the Domain Name <bolsabilbao.com>, in accordance with Paragraph 4(c) of the Policy.

7.3 Bad faith

Paragraph 4(b) (iv) of the Policy establishes that there is bad faith if there are circumstances indicating that registration and use of the domain name were done primarily for the purpose of intentionally attempting to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís website.

The fact that the Respondent intended to register the Domain Name (and the other domain names related to the Spanish and Amsterdam Stock Exchanges) in order to promote the Stock Manager is clear.

Furthermore, the Respondent had no legitimate right on the Complainantís trademarks, and the Respondent was even obliged by Clause 17 of the Registration Agreement with the Registrar to agree that the registration was not made in bad faith, infringing the rights of a third party.

It may also be stated that the use of the Domain Name could induce the Stock Manager users to believe that the Respondent had been licensed, authorized or endorsed by the Complainant or that there was some kind of connection between the Respondent and the Complainant. And this issue could be especially sensitive in the event that users expected to get the same level of quality and reliability to be guaranteed by the Complainant since, due to its special character as a Stock Exchange institution (a member of the securities markets), the Complainant is obliged by the Spanish legislation to have an Operations Register, a computerized register of all the operations and orders executed daily.

In view of the above, the Panel finds that, by having registered the Domain Name, the Respondent has infringed a previous trademark right, and it should be held that the Respondent has acted in bad faith.

 

8. Decision

In light of the foregoing, the Sole Panelist finds that the Domain Name <bolsabilbao.com> at issue is confusingly similar to the Complainant's trademark "BOLSA DE BILBAO", that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name has been registered and used in bad faith. Consequently, the Sole Panelist decides that the Domain Name be transferred by the Registrar from the Respondent to the Complainant.

 


 

Mayer Gabay
Sole Panelist

Dated: March 30, 2001