WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Atlántico, S.A. and Atlántico Vida, S.A. v. Dominio Registrado tras la presentación de la UDRP menos disputar y más trabajar
Case No. D2001-0529
1. The Parties
The Complainant is Banco Atlántico, S.A., a Spanish company which is domiciled in Avenida Diagonal 407 bis, 08008, Barcelona, and Atlántico Vida, S.A., with domicile in Calle Nuñez de Balboa, 71, 28001, Madrid. Both companies are based in Spain (hereinafter, Complainants). The Respondent is Dominio Registrado tras la presentación de la UDRP menos disputar y más trabajar, with domicile in 8345 NW 66 Street, Miami, Florida-33166, USA (hereinafter, the Respondent).
2. Domain Names and Registrar
The domain names at issue are <atlanticovida.com> and <atlantico-vida.com>. The Registrar is Network Solutions (hereinafter, the Registrar) with domicile in 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on April 10, 2001 and in hardcopy on April 11, 2001. On April 12, 2001 the Center sent the acknowledgement of Receipt.
On April 12, 2001, the Center sent the request to Register.com on the grounds of the initial data provided by the Complainants. This request was intended for the verification of the particulars of the domain names at issue. The request was answered on April 13, 2001, and it was confirmed that Register.com was not the Registrar of the domain names at issue.
On April 19, 2001, the Center sent again an e-mail to the Registrar requesting the Verification of Registrar and other relevant information related with the disputed domain names. On April 20, 2001, the Registrar confirmed (i) that it was the Registrar of the domain names involved in the dispute; (ii) that the current Registrant is the Respondent (and not the company against which the Complaint was initially addressed); (iii) the administrative and billing contact person details’; (iv) that the domain names are in "Active" status, and finally (v) that the NSI Version 5 Service Agreement is in effect; consequently, the Uniform Domain Name Dispute Resolution Policy applies to the case.
The Center sent a new e-mail to the authorised representatives of the Complaints on April 23, 2001, whereby it pointed out the necessity of an amendment to the Complaint. This amendment was referred not only to the Registrar, but also to the details of the Respondent. The Center requested the Complainants to send an amended version of the Complaint.
The Center sent a reminder to the Complaints on April 30, 2001, pursuant to which the Complaint should be filed before or on May 4, 2001.
The amended Complaint was received in the Center on May 2, 2001.
After verifying that the Complaint met with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification of Complaint and Commencement of Administrative Proceeding under Paragraph 2(a) of the Rules together with copies of the Complaint on May 3, 2001. The same notification was sent to the administrative and technical contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (with enclosures), fax (Complaint with/without attachments), and e-mail (complaint with/without attachments). Both the Complainants and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.
The Respondent did not answer the Complaint. Accordingly the Center sent by e-mail the parties the Notification of the Respondent’s Default on May 23, 2001.
On May 31, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed
Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. On the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panel’s decision is before June 13, 2001.
The language of the proceeding is English.
4. Factual Background
BANCO ATLÁNTICO, S.A., was incorporated in 1901. Eversince this entity has carried out a full and extensive bank activity not only in Spain but also in South America.
Since early 80’s BANCO ATLÁNTICO, S.A. has become one of the largest banks in Spain, having more than 260 branches throughout the world. The main sector in which both Complainants are developing their activity are financial services and insurance, where they are considered as being between the most important and largest banks and insurance companies in Spain and part of the world.
BANCO ATLÁNTICO, S.A. is also specialised in rendering banking services through the Internet.
The Complainants base their Complaint on the following trademarks and domain names inter alia:
- <ATLANTICO VIDA> that was requested on May 19, 1997 (Class 36) and granted on October 6, 1997 as Spanish Trademark (Registration number 2.092.808).
- <ATLANTICO VIDA> that was requested on May 19, 1997 (Class 16) under registration number 2.092.807, as Spanish Trademark. This trademark was granted on November, 20, 1997.
- <ATLANTICO-VIDA.ORG> that was registered on November 11, 2000.
- <ATLANTICOVIDA.ES> which was registered on December 26, 2000.
5. Parties’ Contentions
5.1 Complainants contend that:
a) The domain names at issue are identical and therefore confusingly similar to the various trademark registrations and domain names ATLANTICO-VIDA that are registered or requested in favour of one of the Complainant, specifically, BANCO ATLANTICO.
b) The Respondent does not have any right or legitimate interest in the domain names at issue due to the following:
i) The Respondent has no relationship with the Complainants.
ii) The Respondent has not been known under the domain names, or under any other related name to such domain names.
iii) The Respondent does not own any right or interest on the trademark ATLANTICO-VIDA.
iv) The Respondent is using the domain names as platform for the criticism against international bodies such as the WIPO, the ICANN, or the parties to this proceeding.
c) The domain names <atlanticovida.com> and <atlantico-vida.com> were registered and are being used in bad faith, due to:
i) The Respondent has registered the domain names to impede the Complainants a fair and legitimate use of the virtual space of the domain names.
ii) The Respondent has published in Isla Tortuga’s Bulletin a declaration where the Respondent comes to threaten with unpleasant consequences, should a friendly transfer of the disputed domain names not take place.
iii) The domain name <atlantico-vida.com> appears under construction, whereas the domain name <atlanticovida.com> is linked to Websites including critic and offensive contents.
5.2. Respondent did not answer to the Complaint
Having been notified of the Complaint, the Respondent did not answer it.
6. Discussion and Findings
The Policy sets forth in Paragraph 4(a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements as follows:
"4.a.(i) Identity or Confusing Similarity"
The generic TLD ".com" cannot be taken into consideration as part of the comparison, since it does not add any particularity or difference to the domain names chosen by the registrant. That particle is only a way to theoretically differentiate sectors and activities advertised through domain names.
As a consequence, the particles used for the TLDs are of no significance with respect to the question of the identity or confusing similarity. On the contrary, it is most relevant to check whether there is a substantial identity between the words of the Complainants trademarks and legitimate rights, and the Respondent’s domain names. In this case, it is plain to see that, from an objective point of view, taking into account the phonetic and graphical analysis, the coincidence between the trademarks and legitimate interests of the Complaints and the disputed domain names is absolute.
As a result, it is beyond question that the trademark <ATLANTICO-VIDA> as well as the domain names of the Complainants are identical to the domain names <atlanticovida.com> and <atlantico-vida.com>.
In conclusion, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Names <atlanticovida.com> and <atlantico-vida.com>
The domain names at issue do not coincide with whole or part of the Respondent’s name, trademark, trade name, corporate name or any other legitimate interest of its own.
In having failed to answer the Complaint, the Respondent has missed to submit any evidence of legitimate interest or right in the domain name <atlanticovida.com> and <atlantico-vida.com>, if there were any.
Therefore, on the grounds of the Paragraph 14 b) of the Rules ("if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate), I conclude that if the Respondent had had any legitimate interest or right in the words forming the domain names <atlanticovida.com> and <atlantico-vida.com>, it should have had an active disposition in order to defend such interest or right (e.g. by submitting evidences of registration rights or previous commercial activity under the names). However, this is not the case. On the contrary, the Complainants have proved that they registered Spanish Trademarks and domain names which are similar or identical to the trademarks of their own. Therefore, it is fair to conclude that the Respondent does not have any legitimate interest in the disputed domain names that should be of a potior iure.
Furthermore, the Respondent has not only adopted a passive attitude regarding the domain name <atlantico-vida.com>, but also has linked the domain name <atlanticovida.com> to specific pages where offensive contents are published without any control and without any legitimate reason. Unlike the assertions of the Defendant, which can be accessed in the above mentioned Site, freedom of speech cannot be considered as a legitimate base to launch offensive contents and sentences against any one (see too Decision on Case D2000-0299).
Likewise, it should be stressed that the Complainants clearly confirm that the Respondent is not duly authorized, on the grounds of a license agreement or any other sort of right or entitlement, to use the name ATLANTICO VIDA. The Respondent has not any relationship whatsoever with the owner of the trademark rights which are involved in the present controversy.
Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondent’s Registration and Use of the Domain Names in Bad Faith"
As to the bad faith requirement, it should be stressed that one of the Complainants is the trademark holder of several trademark rights and domain names substantially similar to the domain names at issue (see Annex 3 to the Complaint).
The concept of bad faith has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent when purchasing a domain name similar to a relevant trademark, it must also be decisive the sole fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.
Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainants’ trademarks, domain names and activity, mainly along the Spanish market, and the knowledge that the Respondent seems to have of the activities and cultural world of Spain, I consider that the Respondent should have known or been aware of the unfair use of the trademark ATLANTICO-VIDA, either in the moment of purchasing the domain names at issue (it must not be forgotten that they were acquired in an auction Site), or afterwards when using them (actively or passively). There must be a iuris tantum presumption that the Respondent is using in bad faith the domain names if the foregoing conditions are met, since otherwise it would be very difficult for any Complainant to demonstrate the internal animus of the Respondent when registering the disputed domain names, or when using them, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainant a so-to-speak diabolical prove. Consequently, the burden of the prove must be for the Respondent who must prove that the domain names at issue were purchased or are being used in good faith.
In addition, it should be stressed that the Respondent is using the domain name <atlanticovida.com> to publish offensive contents against the parties, the authorised representatives of the parties, the WIPO and the ICANN. This use is to be considered as made in bad faith at any event.
The Panelist must come to the reasonable conclusion that the Respondent was completely aware that the registration of the domain names <atlanticovida.com> and <atlantico-vida.com>, on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainants.
On the other hand, the lack of use by the Respondent of the disputed domain name <atlantico-vida.com>is an evidence of its bad faith. Annex 7 of the Complaint clearly shows that the Respondent does not use the Website of the above mentioned domain name.
According to previous decisions of the Center (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp , D2000-0239 J. García Carrión, S.A. v. Mª José Catalán Frías and D2000-0277 Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
Accordingly, the Panelist considers that the Registrant is using the domain name <atlantico-vida.com> in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Website corresponding to the domain name at issue, since this sort of use eventually prevents the Complainants from making a legitimate use of it on the grounds of previous trademark or any other legitimate rights.
Therefore, the domain names <atlanticovida.com> and <atlantico-vida.com> were registered and are being used in bad faith.
The Complainants have proved that the domain names are identical to the trademark of one of the Complainants, that the Respondent has no rights or legitimate interest in the domain names at issue, and that the Respondent did register and use the domain names in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain names <atlanticovida.com> and <atlantico-vida.com> to be transferred to BANCO ATLÁNTICO, S.A., as requested.
Jose Carlos Erdozain
Dated: June 13, 2001