WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banco Bilbao Vizcaya Argentaria S.A. v. Nicolas Zalcberg, Z & A Group

Case No. D2003-0475

 

1. The Parties

The Complainant is Banco Bilbao Vizcaya Argentaria S.A., of Madrid, Spain, represented by Enrique J. Sirvent of Spain.

The Respondent is Nicolas Zalcberg, Z & A Group, of Montevideo, Uruguay.

 

2. The Domain Name and Registrar

The disputed domain name <wwwbbva.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2003. On June 19, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 21, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 18, 2003.

The Center appointed Daniel Peña as the sole panelist in this matter on July 28, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant owns the registrations for the trademark "BBVA" in many countries around the world. The Complainantís rights in several of the trademarks "BBVA" pre-date the Respondentís registration of the disputed domain name.

The Complainant's registered trademarks include, amongst many others, the following:

European Community Trademarks:

FILE NUMBER

TIPO

TM

DATE APPL. AFSOLICITUD

DATE REG.

CLASS

A 0001355270

D

BBVA

 

 

21/10/1999

20/11/2000

1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 37, 39, 40, 41, 42.

A 0001952746

M

BBVA

14/11/2000

16/01/2002

35, 36, 38.

A 0001973965

M

BBVA

24/11/2000

30/01/2002

9, 16, 42.

A 0001457746

M

BBVA

11/01/2000

02/07/2001

1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42.

US Trademarks:

FILE NUM.

TIPO

TM

APPL. DATE

REG. DATE

CLASES

MX 2562867

D

BBVA

23/11/1999

23/04/2002

16.

MX 2561023

D

BBVA

23/11/1999

16/04/2002

35.

MX 2562869

D

BBVA

23/11/1999

23/04/2002

36.

MX 2562866

D

BBVA

23/11/1999

23/04/2002

38.

MX 2561073

M

BBVA

28/01/2000

16/04/2002

36.

MX 2562931

M

BBVA

28/01/2000

23/04/2002

38.

MX 2569053

M

BBVA

28/01/2000

14/05/2002

9.

MX 2562929

M

BBVA

28/01/2000

23/04/2002

16.

Spain Trademarks:

FILE NUMBER

TM

APPL. DATE-

REG. DADateFRESOLUCIO

CLASES

M 0002264652

BBVA

19/10/1999

07/03/2000

35.

M 0002264653

BBVA

19/10/1999

22/05/2000

36.

M 0002264654

BBVA

19/10/1999

07/03/2000

38.

M 0002265322

BBVA

22/10/1999

07/03/2000

39.

M 0002265324

BBVA

22/10/1999

07/03/2000

41.

M 0002265323

BBVA

22/10/1999

07/03/2000

40.

M 0002265325

BBVA

22/10/1999

07/03/2000

42.

M 0002265320

BBVA

22/10/1999

06/03/2000

34.

M 0002265319

BBVA

22/10/1999

06/03/2000

33.

M 0002265318

BBVA

22/10/1999

06/03/2000

32.

M 0002265317

BBVA

22/10/1999

06/03/2000

31.

M 0002265316

BBVA

22/10/1999

06/03/2000

30.

M 0002265315

BBVA

22/10/1999

06/03/2000

29.

M 0002265314

BBVA

22/10/1999

06/03/2000

28.

M 0002265313

BBVA

22/10/1999

06/03/2000

27.

M 0002265312

BBVA

22/10/1999

06/03/2000

26.

M 0002265311

BBVA

22/10/1999

06/03/2000

25.

M 0002265310

BBVA

22/10/1999

06/03/2000

24.

M 0002265309

BBVA

22/10/1999

06/03/2000

23.

M 0002265306

BBVA

22/10/1999

06/03/2000

20.

M 0002265307

BBVA

22/10/1999

06/03/2000

21.

M 0002265308

BBVA

22/10/1999

06/03/2000

22.

M 0002265305

BBVA

22/10/1999

06/03/2000

19.

M 0002265304

BBVA

22/10/1999

06/03/2000

18.

M 0002265303

BBVA

22/10/1999

06/03/2000

17.

M 0002265302

BBVA

22/10/1999

06/03/2000

16.

M 0002265301

BBVA

22/10/1999

06/03/2000

15.

M 0002265300

BBVA

22/10/1999

06/03/2000

14.

M 0002265299

BBVA

22/10/1999

06/03/2000

13.

M 0002265298

BBVA

22/10/1999

06/03/2000

12.

M 0002265297

BBVA

22/10/1999

06/03/2000

11.

M 0002265296

BBVA

22/10/1999

06/03/2000

10.

M 0002265295

BBVA

22/10/1999

06/03/2000

9.

M 0002265287

BBVA

22/10/1999

06/03/2000

1.

M 0002265289

BBVA

22/10/1999

06/03/2000

3.

M 0002265290

BBVA

22/10/1999

06/03/2000

4.

M 0002265291

BBVA

22/10/1999

06/03/2000

5.

M 0002265292

BBVA

22/10/1999

06/03/2000

6.

M 0002265293

BBVA

22/10/1999

06/03/2000

7.

M 0002265294

BBVA

22/10/1999

06/03/2000

8.

M 0002265288

BBVA

22/10/1999

06/03/2000

2.

M 0002265321

BBVA

22/10/1999

07/03/2000

37.

Uruguay Trademarks:

FILE NUM.

TM

APPL. DATE

REG. DATE

CLASS

MX 317965

BBVA

27/10/1999

24/07/2000

9.

MX 317966

BBVA

27/10/1999

18/08/2000

16.

MX 317967

BBVA

27/10/1999

18/08/2000

35.

MX 317968

BBVA

27/10/1999

18/08/2000

36.

MX 317969

BBVA

27/10/1999

18/08/2000

38.

The Complainant has also protected its trademarks internationally. BBVA registrations also exist in Andorra, Argentina, Benelux region, Brazil, Costa Rica, Cyprus, Dominican Republic, Egypt, Germany, Ireland, Italy, Lebanon, Mexico, Peru, Puerto Rico, South Africa, Swaziland, Venezuela and Zimbabwe.

 

5. Partiesí Contentions

A. Complainant

BBVA is one of the major players in the European banking market. The more than 90 thousand persons who together make up the BBVA Group, serving 35 million customers in 37 countries through a network of 7,500 branches, will continue to manage 400 million Euros to our characteristic high standards of excellence and individual responsibility, to the benefit of the organization, customers, shareholders and society as a whole. The international presence of BBVA now dates back a century. In 1902, Banco de Bilbao opened a branch in Paris and, in 1918, another in London. In this respect, the group was several decades ahead of other Spanish banks.

BBVA is involved in corporate, retail and international banking, and other financial services. The Complainant BBVA is one of the leading banks in the Spanish market. The Complainant BBVA is listed on nine different exchanges and operates in over 35 different countries.

The <wwwbbva.com> domain name is confusingly similar to the Complainantís BBVA mark as the two are almost identical. In fact, the Respondentís Domain Name incorporates the BBVA mark in its entirety combined with the letters "www".

The Respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term "bbva" alone or combined with the denomination of the products or services that could eventually offer in the market. The Respondent is not known in the market with the name BBVA and has not registered any mark containing this term.

The Complainant contends that the disputed domain name was registered and has been used in bad faith. Because of the international notoriety of the Complainantís trademark BBVA and the high profile of the bank and the BBVA web site, the Respondent would have been fully aware of the Complainantís and/or BBVA's rights and reputation prior to the registration of the disputed domain name and was in any event on constructive notice of the trademark registrations and other domain name registrations. The disputed domain name represents an example of "typo-squatting," which is a deliberate attempt to exploit a common typographical mistake of Internet users or search engines to lure Internet users to the Respondentís site. The disputed domain name is used to divert Internet users to gambling services offered by the Respondent's site directly or by an organization for which the Respondent acts as a portal.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Given that the domain name <wwwbbva.com> is not identical to trademark BBVA, registered and used in several countries by the Complainant, the Panel must examine if both expressions are confusingly similar.

The inclusion of the letters "www" as the initial part of the domain name registration allows this Panel to infer that the Respondent wanted to use this group of letters that stand for "world wide web".

With respect to the first requirement, the Panel considers that the fact of including the letter "w" three times does not make a sufficient difference between the domain name and the Complainantís trademark. On the contrary, and considering the requirement that the disputed domain name and the trademark must be confusingly similar, this Panel believes that the expression <wwwbbva> is similar to trademark BBVA and, therefore, may confuse the public about the business origin, the quality of products or services, about the title-holder of the domain name and, above all, about the actual owner of the web page published under the disputed domain name.

B. Rights or Legitimate Interests

The Complainant has shown sufficient evidence about his legitimate rights over the expression "bbva" not only in his country of origin but also in a number of other countries. The Complainant has also shown evidence about the extensive use of such expression in trade during several years so as to reach the recognition of the public.

The Complainant contends that the Respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term "bbva" alone or combined with the denomination of the products or services that could eventually offer in the market. By not replying to the Complainantís contentions, the Respondent has failed to show evidence to this Panel about his possible legitimate rights in the disputed domain name.

C. Registered and Used in Bad Faith

In accordance with the Rules, the Panel shall first examine whether bath faith existed at the time of registration and then whether the use of the disputed domain name is also a bad faith use.

With regard to the domain name registration, the Panel considers that bad faith existed since the Respondent registered the domain name mainly in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name Policy 4(b)(ii). This is particularly due to the ample recognition that trademark BBVA possess internationally.

With respect to bad faith use, both the evidence presented by the Complainant and the Panel's own investigations, show that the disputed domain name has been re-directed to an on-line casino page located at "www.elcasino.com". This suggests that the use of the domain name by the Respondent has intentionally attempted to attract, for commercial gain, internet users to his web site 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 his web site or location or of a product or service on his web site or location.

Additionally, there is evidence that during these proceedings, the parties exchanged e-mails regarding the price of a possible transfer. In such e-mails the Respondent refers to a price of four thousand US dollars, an amount that exceeds the customary cost of acquisition of a domain name. In accordance with the Policy, the foregoing is another argument supporting what has been previously indicated by this Panel about the existence of bad faith in the registration and use of the disputed domain name.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwbbva.com> be transferred to the Complainant.

 


 

Daniel Peña
Sole Panelist

Dated: August 8, 2003