WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Atlántico, S.A. and Gesatlántico, S.A. v. Desarrollo de Dominios
Case No. D2001-0530
1. The Parties
The Complainant is Banco Atlántico, S.A., a Spanish company which is domiciled in Avenida Diagonal 407 bis, 08008, Barcelona, and Gesatlántico, S.A., with domicile in Calle Santa María Soledad Torres Acosta, 2, 28004, Madrid. Both companies are based in Spain (hereinafter, Complainants). The Respondent is Desarrollo de Dominios, with domicile in Palacio Valdés 9-4º, Oviedo, Spain (hereinafter, the Respondent).
2. Domain Name and Registrar
The domain name at issue is <gesatlantico.com>. The Registrar is eNom (hereinafter, the Registrar) with domicile in 16770 Northeast 79th, Suite 205, Redmon – WA, 98052, 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 for Registrar Verification. On May 4, 2001, the Registrar confirmed (i) that it had received the Complaint; (ii) that it was the Registrar of the disputed domain name; (iii) that the current Registrant is the Respondent; (iv) the administrative and other relevant contact details; (v) that the UDNDRP is applicable, and finally (vi) that the domain name is in <lock> status.
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 7, 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 (complaint with/without attachments), fax (Complaint without attachments), and e-mail (complaint 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.
On May 18, 2001, the Respondent sent an e-mail to the Center and answered the Complaint. On May 21, 2001, the Center sent both parties the Acknowledgement of Receipt of the Response of the Respondent.
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.
It must be stressed that the Respondent did send an e-mail to the Center dated April, 25, 2001, adding that the Complainants had not registered the trademark <gesatlantico>. The Respondent also stated that it had registered the disputed domain name in good faith.
The language of the proceeding is English.
4. Factual Background
BANCO ATLÁNTICO, S.A., was incorporated in 1901. During the sixties and since its foundation this entity has carried out a full and extensive bank activity not only in Spain but also and mainly 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 have developed their activity is 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. intends to broaden the international and financial areas. It is expected that the profits of the bank be tripled by 2004.
BANCO ATLÁNTICO, S.A. is also specialised in rendering banking services through the Internet.
GESATLANTICO, S.A. was incorporated in 1985, and is one of the subsidiaries of BANCO ATLÁNTICO, S.A. The main activity of GESATLANTICO, S.A. is the management of investment of financial assets, developed through mutual funds and some other relevant financial products.
The Complainants base the Complaint on the following (requested) trademarks:
- <GESATLANTICO> requested on February 19, 2001, (Class 36) as Spanish Trademark (No. 2.379.245).
- <GESATLANTICO> requested on February 19, 2001, (Class 16) as Spanish Trademark (No. 2.379.244).
Both requested trademarks have not been granted to date.
The Complainant GESATLANTICO, S.A. has used its corporate name since 1985, when it was incorporated (Annex 4 of the Complaint). GESATLANTICO, S.A. has used constantly the name GESATLANTICO in communications with clients and as an advertising tool of its commercial activities (Annex 5 of the Complaint).
The use of the word GESATLANTICO in the most important search engines of the Internet shows that the Complainant is mostly appointed in all items (Annex 6 of the Complaint).
Annexes 7 and 8 of the Complaint demonstrate the extensive use of the distinctive sign GESATLANTICO (rankings of funds, news related to GESATLANTICO, etc.).
GESATLANTICO has also registered the following domain names: <gesatlantico.net> (on November 11, 2000), <gesatlantico.org> (on November 11, 2000), and <gesatlantico.es> (Annex 9 of the Complaint).
The Respondent’s email address is linked to the Site <naranco.com> where the Respondent offers the sale of domain names (Annex 11 of the Complaint). The Respondent denies to be connected somehow with that Site or with the Site <portaldedominios.com>. It is to be remarked that the latter appears on the contact details of the Respondent though.
The Respondent is also owner of domain names identical to geographical places (see Annex 12 of the Complaint).
5. Parties’ Contentions
A. Complainants contend that
(a) The domain name at issue is identical and therefore confusingly similar to the various requested trademarks, corporate name and domain names GESATLANTICO that have been requested in favor of one of the Complainant, specifically, BANCO ATLANTICO, S.A.
(b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:
(i) The Respondent has no relationship with the Complainants.
(ii) The contents of the Sites owned or connected with the Respondent show that its activity consists of the resale of domain names.
(c) The domain name <gesatlantico.com> was registered and is being used in bad faith, due to:
(i) The Respondent has registered hundreds of domain names, most of which are identical to football teams, television programs, geographical places, etc. It seems to be the typical strategy of a cyber-squatter.
(ii) The Respondent owns the Site <naranco.com> where these domain names are offered to resale.
(iii) The Respondent is trying to seek an economic benefit of the ownership of the domain name at issue by offering it to the Complainants.
(iv) The Respondent has adopted a passive attitude, since it has not included any content whatsoever in the Site corresponding to the domain name at issue.
B. Respondent contends that
The Complainants have not registered the trademark <GESATLANTICO>. On the contrary, it has only been requested.
The Complainants have requested the trademark <gesatlantico.com> in February 19, 2001, whereas the domain name at issue was registered on July 1, 2000.
GESATLANTICO is not a well-known company.
The Respondent has legitimate interests in the domain name at issue.
The words <gestión> and <atlantico> are two common words in Spanish (sic).
The domain name at issue was registered and is being used in good faith.
The Site <naranco.com does> not have anything to do with the Respondent.
The Respondent requests from the Panel to make a finding of reverse domain name hijacking (sic).
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, particles used for the TLDs are of no significance with respect to the question of the identity or confusing similarity. It is most relevant to check whether there is a substantial identity between the words of the Complainants requested trademarks and legitimate rights (i.e. corporate name of one of the Complainants), and the Respondent’s domain name. In this case, having compared the words of each of the distinctive signs at issue, the conclusion must be that the coincidence between the trademarks, the corporate name, and the domain names of the Complaints and the disputed domain name is absolute.
Additionally, it must be stressed, as the Complainants do, that previous decisions of the Center has stated the applicability of the Policy and the Supplemental Rules to the controversies in which the Complainants have only requested the trademarks involved, and no final approval of the Trademark Office has been obtained (see Decision D2000-0131). This opinion is also confirmed by the WIPO’s Final Report on the Internet Domain Name Process (Pp. 149-150). Finally, although the Spanish trademarks have not been granted yet, unlike the opinion of the Respondent, it should be stated that the mere application of the trademark grants the applicant a limited scope of protection. As a result, the applicant may oppose to any application of similar or identical trademarks.
It should be noted that the corporate name of the Complainant GESATLANTICO, S.A. has been used for more than ten years, since it was incorporated. As I said, the Policy and the Supplemental Rules do protect not only granted trademarks, but also any other legitimate interest that should be protected (D2001-0016, D2001-0017, inter alia). Corporate names must be included amongst those legitimate interests concept, since they can be considered as distinctive signs and as evidence of continuous commercial activity that is subject to be protected (cfr. Paragraph 3(a) of the Supplemental Rules). The Complainants have proved the extension and notorious scope of the distinctive sign <GESATLANTICO>.
Finally, the Panel does not accept the argument of the Respondent pursuant to which the words <gestion> and <atlantico> are to be considered as generic words. Even though those two words could be considered, as separate words, like generic signs, this is not precisely the case, since the requested trademarks of the Complainants, as well as the corporate name of GESATLANTICO, S.A. are combined into a specific word or sign that has got per se no generic meaning at all.
As a result, it is beyond question that the requested trademarks <GESATLANTICO> as well as the corporate name of one of the Complainants are identical to the domain name <gesatlantico.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 Name <gesatlantico.com>
The domain name at issue does not coincide with whole or part of the Respondent’s name, trademark, trade name, corporate name or any other legitimate interest of its own. Despite the assertions of the Respondent, the Respondent has not proved at all the existence of any right or legitimate interest of its own in the referenced domain name.
The Complainants have proved to request Spanish Trademarks and to register domain names, all of which are similar or identical to the domain name at issue. The commercial activity protected through those distinctive signs has been initiated in the mid eighties and ever since this legitimate activity has been continued to date. Under those circumstances, and given the fact that the Respondent is connected somehow with a Web Site where domain names are offered to resale, the Panel must conclude that the Respondent does not have any legitimate interest in the disputed domain name.
Finally, the Complainants confirm expressly that the Respondent is not duly authorized through a license agreement or any other sort of right or entitlement to use the name GESATLANTICO. The Respondent has not any relationship whatsoever with the owner of the rights (trademark rights, corporate name and so on) 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 Name in Bad Faith
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 or well-known 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 third party’s potiur iure. This damage may consist not only of an economic (valuable) damage (transfer or misappropriation of competitor’s customers), but also of moral damage (attacks to the commercial fame of a competitor or obstruction for the competitor may have access to the disputed domain name).
Due to the fact of the requested trademark, the Complainants’ well-known name, their registered domain names and the extension of their activity, mainly along the Spanish market, and the fact that the Respondent is domiciled in the same cultural and commercial area where the Complainants develop their activity, I consider that the Respondent should have known or been aware of the unfair use of the requested trademark GESATLANTICO (which in addition, is similar to the corporate name of one of the Complainants), either in the moment of purchasing the domain name, or afterwards when using them (actively or passively).
In addition, it should be stressed that the Respondent is offering the domain name <gesatlantico.com> for resale (see Annex 12 of the Complaint). This use is to be considered as made in bad faith at any case. Likewise, the Respondent was directly or indirectly involved in other disputes related with the use of well-known trademarks (see Decision D2000-1026). The assertions of the Respondent must be dismissed, since it is obvious, by comparing details of the registration of the disputed domain name and the domain name <naranco.com> and <portaldedominios.com>, that those details are all the same.
The Panelist must come to the reasonable conclusion that the Respondent was completely aware that the registration of the domain name <gesatlantico.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 <gesatlantico.com> is an evidence of its bad faith.
According to previous decisions of the Center (see Decisions D2000-0018, D2000-0020, D2000-0239 and D2000-0277, 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 <gesatlantico.com> in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Web Site 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 name <gesatlantico.com> was registered and is being used in bad faith.
The Complainants have proved that the domain name is identical to specific and legitimate distinctive signs of the Complainants, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and use the domain name 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 name <gesatlantico.com> to be transferred to BANCO ATLÁNTICO, S.A., as requested.
Jose Carlos Erdozain
Dated: June 13, 2001