WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria, S.A. v. Alan Sullivan
Case No. D2010-1448
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Internet Names World Wide España, S.L., Spain.
The Respondent is Alan Sullivan of Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bbvacompassexperience.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2010. On August 30, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 31, 2010 GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the originally named respondent and contact information in the Complaint (which was a privacy shield organization). The Center sent an email communication to the Complainant on September 1, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to Complaint and an amended Complaint on September 6, 2010.
Save for a word limit breach and non-payment of the filing fee (both of which non-conformities were subsequently remedied by the Complainant) the Center verified that the amended 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 September 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2010.
The Center appointed Philip N. Argy as the sole panelist in this matter on October 7, 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.
All other procedural and administrative requirements appear to have been satisfied.
4. Factual Background
The following salient facts, taken from the amended Complaint, were uncontested:
a) The Complainant employs 112,000 people in over 30 countries around the world, has more than 47 million customers and 890,000 shareholders, having commenced business in Spain over 150 years ago;
b) It operates a conglomeration of businesses supplying a diverse range of both financial and non-financial products and services;
c) It is the registered proprietor of word marks for BBVA and BBVA COMPASS in numerous countries around the world. "BBVA" is a contraction of Banco Bilbao Vizcaya Argentaria´s trade name, and "BBVA" is one of the largest commercial banks in Spain;
d) The BBVA Compass division of the Complainant is a leading banking franchise located in the Sunbelt region of the USA. BBVA Compass is the 15th largest United States commercial bank based on deposit market share and ranks as the third largest bank in Alabama, fourth largest bank in Texas and fifth largest bank in Arizona. Headquartered in Birmingham, Alabama, it operates 741 branches throughout Texas, Alabama, Arizona, California, Florida, Colorado and New Mexico.
5. Parties’ Contentions
The Disputed Domain Name is confusingly similar to the Complainant’s BBVA and BBVA Compass trademarks, the addition of “experience” doing nothing to dispel the confusion.
The Respondent has no rights or legitimate interests in the Disputed Domain Name, it having been registered “to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve”. Complainant further submits that the Respondent’s websites are all search engines composed of sponsored links. Respondent’s only reason in registering and using the domain names in dispute is to benefit from the reputation of the trademark BBVA COMPASS and illegitimately trade on its fame for commercial gain and profit by diverting Internet users who mistakenly type the name “BBVACOMPASSEXPERIENCE.COM”.
According to the Complainant, the Respondent “obviously knows about BBVA services and products and it is as a consequence obvious that it is familiar with this trademark. The Complainant has not consented to the Respondent's use of the domain name. 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 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. And finally, the Respondent has no relationship with, license from or specific permission from Complainant for the use of the BBVA mark.
The Complainant asserts that the Respondent registered the Disputed Domain Name and is using it in bad faith. Specifically:
(1) The Respondent registered the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade-marks, trade name and domain names as to the source of the Respondent’s website and services.
(2) The Respondent registered the Disputed Domain Name in order to divert traffic intended for the Complainant’s websites, using the identical domain name of the Complainant. This can be inferred by the Respondent’s conduct, in creating a website with links of the Complainant’s websites. Specifically, the Respondent’s conduct is enabling it to divert traffic to the Complainant’s well-known domain names for the benefit of the Respondent’s website that does not in fact offer legitimate services, in order to obtain confidential information of the Complainant’s customers.
The Respondent’s use of the domain name is clearly an attempt to attract internet users to the Respondent’s on-line location by creating a likelihood of confusion with BBVA’s name and trademarks within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions in a formal response or otherwise.
6. Discussion and Findings
The Complainant bears the onus of proof in relation to the three limbs of the Policy which have to be established. It is apparent from a brief review of the number of times that the Complainant appears as complainant in cases brought under the Policy, that it is a frequent victim of cybersquatting conduct. However, being a weary frequent filer does not accord the Complainant latitude in relation to the onus of proof or the need to present its case in a cogent fashion.
The Complaint is excessively verbose and repetitive with whole slabs of text sometimes repeated. Despite it having filed an amendment formally substituting the name of the Respondent for the name of the privacy shield named in the original Complaint, the amended Complaint was filed with the name of the original respondent remaining. It is poorly assembled, and in some areas is poorly adapted in respect of the Disputed Domain Name. The Panel does not condone such an approach, especially when submissions under one limb of the Policy appear under subheadings in relation to another limb, and when formulaic language is used without linkage to the specific conduct of the Respondent in this specific proceeding. Of greater concern is the inclusion of assertions and submissions that do not seem to be supported by any of the evidence filed in this proceeding.
When there is no Response, a panel should not need to exert significant effort to unravel the case sought to be made by a complainant. The consequence of the approach taken by the Complainant is that the Panel has had to examine with some care the evidence submitted to ensure that it did not inadvertently rely on evidence that was not clearly related to the use of the Disputed Domain Name by the Respondent.
Against that background, the Panel’s formal findings and reasoning follow.
A. Identical or Confusingly Similar
The Disputed Domain Name plainly includes the Complainant’s primary trade mark, BBVA. It more specifically include the Complainant’s BBVA COMPASS registered trademark. And finally it appends the ordinary English word “experience”.
The addition of the word “experience” to the Complainant’s BBVA COMPASS trademark does nothing to alleviate and everything to compound the likelihood that Internet users will be confused about the trade source of any products or services referred to on any website to which the Disputed Domain Name resolves. The Disputed Domain Name is self evidently confusingly similar to the Complainant’s trademark and the Panel so finds.
B. Rights or Legitimate Interests
To the extent to which the Panel could identify and isolate in the Complaint the submissions and evidence relating to this limb of the Policy, the Complainant has at least negated any consent to the Respondent’s use of its trademarks and has also negated the application of any of the provisions of subparagraph 4(c) of the Policy that might have afforded comfort to the Respondent. Although the Panel would have been prepared to accept a plausible explanation for the use of the initials BBVA in the Disputed Domain Name, the use of the much more distinctive BBVA COMPASS trademark is conduct that almost precludes the Panel from being able to contemplate any legitimate explanation. The absence of a Response leaves the Panel with little choice but to find in the Complainant’ favour on this limb of the Policy.
C. Registered and Used in Bad Faith
Given the Panel’s findings under the first two limbs of the Policy, and the fact that the Disputed Domain Name resolves to a website the sole purpose of which appears to be domain monetization, with links that frequently resolve to websites promoting products and services offered by the Complainant’s competitors, the Panel more easily concludes that the Disputed Domain Name was registered in bad faith with the Complainant’s trademarks in express contemplation, and is being used in bad faith to attract Internet users to the Respondent’s landing page. The Panel nevertheless regards it as most improbable that any Internet user would, as the Complainant contends, “mistakenly type the name BBVACOMPASSEXPERIENCE.COM”. The Panel does not see any evidence that the Respondent is engaged in typosquatting, and the Disputed Domain Name does not lend itself to that characterization. Far more likely is that Internet users, seeing a URL that includes the Disputed Domain Name, would simply click on it in the belief that they would be taken to a site that was sponsored or approved by, or in some way affiliated with, the Complainant.
There is no evidence to support the Complainant’s assertion that the Disputed Domain Name is being used “to obtain confidential information of the Complainant’s customers” and in the Panel’s view that submission should not have been made.
Inelegantly and poorly expressed though the Complaint may be, the third limb of the Policy is still established to the Panel’s satisfaction in this case.
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 <bbvacompassexperience.com> be transferred to the Complainant.
Philip N. Argy
Dated: October 23, 2010