WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Atlántico S.A. v. Olivier de Quiqueran-Beaujeu
Case No. D2001-0527
1. The Parties
The Complainant: Banco Atlántico, S.A., Avenida Diagonal 407 Bis, 08008 Barcelona, Spain.
The Respondent: Olivier de Quiqueran-Beaujeu, A.P> 17-21-1354, Quito, Picincha 17-21-1354, Ecuador.
2. The Domain Name and Registrar
The domain name in issue is <bancoatlantico.com>, registered by Network Solutions Inc, of Herndon, Virginia, USA, on March 6, 1995.
3. Procedural History
(1) The Complaint in Case D2001-0527 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 not filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) Despite taking all proper procedural steps within the UDNDRP to notify the Respondent of the Complaint no Response was filed by him within due time. Subsequently, on May 22, 2001, the Respondent sent a brief communication by way of response to the Complainant. In the circumstances, I am prepared to take account of the Respondent's position, so far as it can be ascertained from this document.
(5) The date scheduled for issuance of a decision is: June 10, 2001.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) 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 and various domain names have been registered by the Complainant.
(3) According to his communication of May 22, 2001, the Respondent is the Ecuadorian representative of The Image Bank, a photographic agency and holder of a bank of images of world renown and associate of Getty Images of Seattle, the giant of the industry. He is also the Graphic Director of the newspaper, El Comercio de Quito.
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 this mark. He has no commercial relationship with the Complainant. He does no business under the domain name in issue, nor does he own any trade mark rights in "Banco Atlantico".
(3) The Respondent registered and used the domain name in bad faith, since his only "use" of it has been entirely passive. From that, in the circumstances, it must be deduced that his motive was "the 'capture' of a strategic domain name for the legitimate owner of the corresponding trademark".
The respondent asserts that he is legally entitled to register the domain name in issue and has done so for three years in the full exercise of his liberties. He intends to use it when he considers it opportune.
6. Discussion and Findings
(1) While not ranking with the largest such institutions, the Complainant is nonetheless a well-known Spanish bank with overseas connections. There is adequate evidence of a reputation established and sustained chiefly through its mark and name, "Banco Atlantico". The domain name at issue, save for the gTLD suffix, <.com>, is identical with this mark. There is thus an inherent likelihood of its being taken as referring to the Complainant.
(2) In submitting only a very limited response, the Respondent has failed to draw attention to any legitimate reason why he might nonetheless justify registering and maintaining the domain name. He has stated what his professional background is, thereby perhaps implying that any use to which he may in future put the domain name will be connected with the realm of image bank provision and not with banking as a financial institution or activity. However, he does not tie himself to any plan or project.
(3) The one issue of substance is accordingly whether his registration and passive maintenance of the domain name must be considered to be in bad faith within the meaning of the UDNDRP, Article 4(2). The onus of establishing bad faith lies with the Complainant and, where a case is made out, this is usually achieved by reference to one of the four categories there specified. However, the list of instances given in that Article is stated to be "in particular but without limitation". It is therefore open to Panels to reach the same conclusion in analogous circumstances. In many cases this has called for an examination of the use to which the Respondent has put, or proposes to put, websites or other outlets identified by the domain name.
(4) The issue which this case raises concerns the proper inference to be drawn where the registrant declines to give any explanation of his purpose or activities related to the registration. In previous cases of this kind, such as D2000-0163 Veuve Cliquot Ponsardin v. The Polygenix Group Co.; D2000-0226, Parfums Christian Dior v. Quintas; and D2000-0277, Deutsche Bank v. Bruckner, Panels have been prepared, having regard to all the particular circumstances, to find that the direct incorporation of the Complainant's well-reputed mark as a domain name must have been without good faith and must continue to be so. In this case likewise, in the light particularly of the Respondent's refusal to offer any adequate explanation of his actions, I am driven to the same conclusion.
I accordingly decide that the domain name <bancoatlantico.com> should be transferred forthwith to the Complainant.
William R. Cornish
Dated: June 7, 2001