WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Atlántico S.A. v. V.G. Peris
Case No. D2001-0526
1. The Parties
The Complainant: Banco Atlántico, S.A., Avenida Diagonal 407 Bis, 08008 Barcelona, Spain.
The Respondent: Virginia Goldaraz Peris, Biberstrasse 3/12, Vienna 1010, Austria.
2. The Domain Name and Registrar
The domain name in issue is <bancoatlantico.net>, registered by Register.com, 575, 8th Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
(1) The Complaint in Case D2001-0526 was filed on April 10, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) On receiving the Response, the Complainant requested time to make a further submission and then made that submission. In the interim the Respondent presented an argument against granting the extension of time and admitting the second submission. After the filing of the Complainant's submission, the Respondent again requested that it not be admitted by the panel and herself made answer to the submission. It is in the Panel's discretion to admit further submissions and numerous Panels have made it plain that such submissions should be allowed only in exceptional cases; otherwise the simplicity and expedition of the UDNDRP will be jeopardised. In this case I do not find it necessary to admit the Complainant's second submission or the Respondent's counter-submission since I am able to decide the case by reference to the original Complaint and Response, as will appear below.
(4) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(5) The date scheduled for issuance of a decision is: June 10, 2001.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Complainant is a well-established Spanish commercial bank which has been in operation since 1901 and has used "Banco Atlantico" since 1946 as its principal trade mark and name. It now has 260 branches in Spain and operates in over twenty other countries, with fully operational branches in the United States, Portugal, and the Cayman Islands. It has subsidiary companies specialising in financial services and insurance.
(2) In Spain the Complainant holds "Banco Atlantico" as a registered trade mark in Classes 16, 35 and 36, as likewise for Class 36 in 72 other countries. In Spain the same title is registered as a trade name. The Complainant has also registered a number of domain names in which "banco" (sometimes abbreviated) and "atlantico" are combined with gTLD suffixes.
(3) The Respondent, Virginia Goldaraz Peris, is the wife of an international banker and financier, Dr Joaquin Abos Torres.
5. Parties’ Contentions
The Complainant asserts the following:
(1) The domain name in issue is identical (or, if necessary, confusingly similar) to the Complainant's well-known trade mark and name.
(2) The Respondent has no rights or legitimate interests in respect of the Complainant's mark. She has no commercial relationship with the Complainant. She does no business under the domain name in issue, nor does she own any trade mark rights in "Banco Atlantico".
(3) The Respondent registered and used the domain name in bad faith, in that she was actually seeking to impede the holder of the corresponding trade mark from registering that name. This is confirmed by the fact that the domain name is not in use through economic activity based in good faith through the website related to the disputed domain name. Any use of the domain name in dispute by her would accordingly constitute opportunistic bad faith.
(4) The Respondent's bad faith is also demonstrated by her registration of four other domain names which combine the names, "Urbis" (a leading real estate company in Spain) and "Dragados" (a leading construction company in Spain).
The Respondent asserts the following:
(1) The Complainant's mark, "Banco Atlantico" is only well-known in Spain and even there its banking business ranks eighteenth among financial institutions. In Latin America its business is small and in world terms it ranks 721st. Other banks use "Atlantic" and "Bank" in their English language titles, ""Banque" and "Atlantique" in their French titles, etc., though there does not appear to be any use of "Banco Atlantico" by a bank not associated with the Complainant.
(2) The domain name in issue was registered by the Respondent on behalf of her husband, because he is planning the establishment of an international financial consultancy together with associates of similar standing. He, however, is currently on the staff of The OPEC Fund for International Development and his intended associates occupy similar positions elsewhere. It was therefore advisable to obtain the registration in the Respondent's name and to hold it in readiness until such time as the associates should become free to launch their consultancy.
(3) Neither the Respondent nor her husband intended to gain from misleadingly diverting consumers or tarnishing the Complainant's mark; neither has ever sold or attempted to sell a domain name; neither has registered a domain name other than to comply with the confidential request of the top management of companies whose names were involved; neither secured acquisition of the domain name in suit in order to transfer it to the Complainant above cost or to prevent the Complainant from reflecting its trade or service mark in a corresponding domain name or to disrupt the Complainant's business.
(4) Neither the Respondent nor her husband, by using the domain name, "had attempted to attract, for commercial gain internet users to my web site (still to be developed) 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 my website or location or of a product or service on my web site or location, as the activity of the future potential company to be created would have nothing to do with the commercial banking services provided by the complainant." This quotation is taken from the Affidavits of the Respondent and her Husband filed in Attachment B of the Response.
6. Discussion and Findings
(1) While not ranking with the largest such institutions, the Complainant is nonetheless a well-known Spanish bank with some overseas connections. There is adequate evidence of a reputation firmly established in Spain and sustained chiefly through its mark and name, "Banco Atlantico". The Respondent appears to accept this. Her husband is in a position to know since, according to his Curriculum Vitae and to letters from executives in European financial institutions (Response, Attachments N, G and H), he was Director General of the International and Finance Division of Banco Atlantico from 1989-1992. The fact that, in different languages, banks use "atlantic" in their title does not undermine the conclusion that a large number of persons recognise "Banco Atlantico" as the distinctive indication of the Complainant's business.
(2) The domain name at issue, save for the gTLD suffix, <.net>, is identical with the Complainant's mark. There is thus an inherent likelihood of its being taken as referring to the Complainant by those who know of Banco Atlantico's reputation.
(3) The Respondent's husband's plan in the future to establish an international financial consultancy is evidenced by his own affidavit and by copies of letters to him from some of the intended associates. None of these letters, however, mentions the use of "Banco Atlantico" as the name or mark of the new organisation. Indeed, the letter from a Mr. Victor Agius suggests the names "Advisory Banking Overseas" or "International Financial Services Associates" (Response, Attachment J).
(4) The Response claims that the consultancy plan provides a legitimate interest in the domain name and that its acquisition and maintenance have accordingly been undertaken in good faith. The affidavits sworn by the Respondent and her husband follow the language of the UDNDRP, Article 4, in supporting these claims. Much stress is laid in the Response on the well-settled principle that the onus of establishing bad faith lies with the Complainant. While that is so, Article 4 also makes it clear that the Respondent must demonstrate any countervailing right or legitimate interest. That is a necessary counter-balance, given that it is the Respondent who knows why the registration was secured and used. Where an explanation of that purpose is given in detail, as in the present case, then it is for the Panelist to draw conclusions from the circumstances revealed in the statements and supporting documentation provided by each side.
(5) From the Response and the accompanying affidavits, it appears that the Respondent and her husband do not understand the nature of a trade mark and the reputation which in law it exists to protect. They claim the freedom to adopt the Complainant's trade mark in a domain name which they will use in connection with a business in an overlapping field because it "would have nothing to do with the commercial banking services provided by the complainant" (see above, Paragraph 5(4)). But precisely because there will be no connection between the two enterprises, the identity between the domain name and the Complainant's mark will confuse consumers in Spain and elsewhere where the reputation of that mark is established. Such consumers will wrongly be led to think that there is such an association.
(6) In consequence, the Respondent cannot maintain that she has any right or legitimate interest in the domain name for use in connection with the proposed consultancy. On the contrary the proposed use is evidence of bad faith within the meaning of the UDNDRP, Article 4(b). In particular it shows that the registration has been undertaken primarily for the purpose of disrupting the business of the Complainant contrary to Article 4(b)(iii). This must inevitably occur once the proposed consultancy for financial services is established using a domain name identical to the Complainant's mark.
(7) The Complainant has also argued that the Respondent has shown bad faith within Article 4(b)(ii) because she obtained the other domain name registrations mentioned above in Paragraph 5 A(4) and so engaged in a pattern of preventative conduct. The Respondent has explained the securing of these composite marks as a secret arrangement on behalf of the named companies and at their request in anticipation of their merger. This statement is not, however, supported by any confirmation from executives in the companies concerned, an omission which is the more striking given the numerous letters of support which have been attached to the Response on other matters. Accordingly, while my decision in this case does not need to turn on this particular matter, it serves to increase my doubts concerning the Respondent's motives in obtaining the domain name in dispute.
In accordance with my reasoning in Paragraphs 6 (1)-(6) above, I decide that the domain name <bancoatlantico.net> should be transferred forthwith to the Complainant.
William R. Cornish
Dated: June 6, 2001