WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria, S.A. v. Latin American Trade
Case No. D2010-1279
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A., of Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
The Respondent is Latin American Trade of San Jose, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name <bbvabancomer.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email a request for registrar verification in connection with the disputed domain name. On July 30, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on August 3, 2010.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 10, 2010. 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
Banco Bilbao Vizcaya Argentaria (“BBVA”) is a global banking group that offers individual and corporate customers the most complete range of financial and non-financial products and services. It enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago. It also has a strong presence in Latin America; it is the largest financial institution in Mexico; one of the 15th largest U.S. commercial banks and one of the few large interrnational groups operating in the People’s Republic of China. BBVA employs 112,000 people in over 30 countries around the world, has more than 47 million customers and 890,000 shareholders.
In the year 2000 Mexico was the site of a merger between BBV Probursa and Bancomer to create BBVA Bancomer, the premier bank in that country.
Grupo Financiero BBVA Bancomer (“GFBB”) is a controlling affiliate of Banco Bilbao Vizcaya Argentaria, one of the largest financial groups in the Euro Zone. The main subsidiary of GFBB is BBVA Bancomer (Bancomer), a leading banking institution which operates under a universal model through a retail network in GFBB of 1,796 branches and 6,370 ATMs as of March 2010, representing 16.7% and 18.5% respectively, of the Mexican banking system, as of December 2009.
The Complainant is the owner of various registered trademarks, including:
Trademark BBVA, File N°0002264652, class 35, registered on March 7, 2000 in Spain.
Trademark BBVA, File N°0002264653, class 36, registered on May 22, 2000 in Spain.
Trademark BBVA, File N° 0002264654, class 38, registered on March 7, 2000 in Spain.
Trademark BBVA, File N° 24887978, class 35, registered on June 11, 2001 in Costa Rica.
Trademark BBVA, File N° 652575, class 35, registered on April 28, 2000 in Mexico.
Trademark BBVA, File N° 1822928, class 36, registered on March 22, 2001 in Argentina.
Trademark BBVA, File N° 130917, class 35, registered on January 22, 2001 in Cuba.
Trademark BBVA, File N° 242LO.119, class 36, registered on October 18, 2000 in El Salvador.
Trademark BBVA, File N° 103448, class 36, registered on August 24, 2001 in Panama.
Trademark BBVA, File N° 20499, class 36, registered on February 29, 2000 in Peru.
Trademark BBVA, File N° 0001349943, classes 35, 36, and 38 registered on July 7, 2003 in the European Union.
Trademark BBVA, File N° 2562869, class 36, registered on April 23, 2002 in United States.
Trademark BBVA BANCOMER, File N°005224019, classes 9, 16, 35, 36, 38, 42 registered on November 23, 2007, Community Trade Mark.
5. Parties’ Contentions
The Complainant asserts that the <bbvabancomer.com> domain name is confusingly similar to the Complainant’s BBVA marks as the two are almost identical: The Complainant alleges that this is a typical case of “typosquatting”‘ and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademarks.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant adds that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the BBVA mark in a domain name or in any other manner. The Complainant asserts that the Respondent is not known in the market by the name BBVA and has not registered any mark containing this term.
The Complainant alleges that the Respondent diverts traffic now to “www.bancomer.com” site but he could change the redirection and attract Internet users to the Respondent’s on-line location by creating a likelihood of confusion with BBVA’s name and trade marks. The Complainant adds that the notoriety of the Complainant’s BBVA marks and the Respondent’s lack of any connection with the Complainant indicates opportunistic bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove the following:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the trademark BBVA in several countries and also in the trademark BBVA BANCOMER. The domain name <bbvabancomer.com> combines both of the registered trademarks BBVA and BBVA BANCOMER in their entirety. In consequence, the domain name incorporates the Complainant’s marks in their entirety and is either “confusingly similar” or identical to these trademarks in which the Complainant has rights.
The Panel finds that the Complainant, therefore, has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Respondent is in default in this matter, it has not presented any claim in its rights to the disputed domain name or that it has a legitimate interest in this domain name, and the Complainant convincingly denies that the Respondent could have any such rights or legitimate interests.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has exclusive rights in the BBVA and BBVA BANCOMER trademarks, and no license, permission or authorization was granted to use those trademarks in the domain name. The Respondent has not provided any evidence of rights or legitimate interest in the domain name. A significant number of the Complainant’s trademarks precede the Respondent’s registration of the domain name.
The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; and Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that the domain name is used in connection with a bona fide offering of goods or services or that any of the other circumstances listed in paragraph 4(c) of the Policy apply in this case.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must establish that the domain name was registered in bad faith and is being used in bad faith (See Sanofi-aventis, Avnetis Pharmaceutical Holdings, Inc. v. Babak Azizzadeh, WIPO Case No. D2007-1727).
The Respondent has provided no explanation as to why the domain name consists of two trademarks BBVA and BBVA. It is clear that the domain name can only refer to the Complainant. Moreover the two words used in the domain name are so obviously connected with Complainant´s widely known trademarks that its registration by someone with no connection with the services associated with the trademarks suggests opportunistic bad faith (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Consequently, given the circumstances of the case, it is reasonable to infer that the Respondent did not ignore the existence of the Complainant’s trademarks when it registered the disputed domain name. These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.
Additionally, the Panel has visited the Internet site linked to the disputed domain name in order to obtain more information about the Respondent use of the domain name (See Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070). The Panel was able to corroborate that the content of the disputed domain name is very similar, if not identical, to the one available in one of the Compainant’s web site, namely “www.bancomer.com” to the point that Internet users may think that the disputed domain name is an official web site of the Complainant. Thus, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website and of the services on its website. This is evidence of both bad faith registration and use. Policy, paragraph 4(b)(iv) (See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández, WIPO Case No. D2006-1506; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419 and Atento Inversiones y Teleservicios, S.A.U. v. Atento Services, S.A , WIPO Case No. D2010-1165).
Finally, the record shows that the courier service failed to physically deliver the Complaint explaining as a reason the following “Incomplete address, not delivered”. Thus the Respondent has provided, or failed to correct or update, incorrect contact details, in breach of its registration agreement. This has been held, in appropriate circumstances, to constitute evidence of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111; Royal Bank of Scotland Group v. Stealth Commerce a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155).
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith for the purposes of paragraph 4(a)(iii).
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 <bbvabancomer.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: September 24, 2010