WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyProtect.org / Purple, Purple Bucquet Case No. D2010-1688
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Internet Names World Wide Espana, SL, Spain.
The Respondent is PrivacyProtect.org of Moergestel, the Netherlands / Purple, Purple Bucquet of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <bbvacontinental.com> is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2010. On October 6, 2010, the Center transmitted by email to Power Brand Center Corp a request for registrar verification in connection with the disputed domain name. On October 7, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint as a change of Registrant seemed to have recently been made. The Complainant opted not to file an amendment to the Complaint as the same was filed against the respondent of record at the time of filing.
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”).
The Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Respondent did not submit any response, regardless of the electronic and hard copy notifications that were sent to the registrant’s designated address and to the billing, administrative, technical and contact information of the parties listed as Registrants. Accordingly, the Center notified the Respondent’s default on November 17, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on December 6, 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.
This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions, waivers or extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant Banco Bilbao Vizcaya Argentaria, S.A. (“BBVA”) is a large, global group and one of the major players in the European market. BBVA is a large financial group with a global reach and a strong capital base. It occupies a solid position in the Spanish market and it plays a leading role in Latin America.
BBVA is a global 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 leading franchise in South America; it is the largest financial institution in Mexico; one of the 15th largest commercial banks in the United States and one of the few large international groups operating in China.
BBVA employs 112,000 people in over 30 countries around the world, has more than 47 million customers and 890,000 shareholders. 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 the 70's, Banco de Bilbao, Banco de Vizcaya and Banco Exterior progressed to become international groups, with the incorporation of operational and representative offices in the main financial centres of Europe, Latin America and Asia. At the same time, the first local banks are established in these geographical areas, principally in Latin America. Banco Exterior founded BEX Panama in 1968, constituting the current BBVA Panama with the integration in 2000 of BBV Panama. In 1979, Banco de Vizcaya acquired Banco Comercial de Mayagüez in Puerto Rico, founded in 1967 by a group and traders and industrialists. It became BBV Puerto Rico and, in 1992, a period of growth began through acquisitions, resulting in the current BBVA Puerto Rico. But it is from 1995 onwards that BBV developed an international strategy for international expansion that led it to build a great franchise in Latin America, making a significant investment in capital, technology and human resources. In 1995 the institution expanded into Peru, with the privatisation of Banco Continental, and into Mexico, with Probursa. In 1996, BBV expanded its presence in Colombia with Banco Ganadero and in Argentina with Banco Francés.
5. Parties’ Contentions
The name "BBVA" is a contraction of Banco Bilbao Vizcaya Argentaria’s trade name, "BBVA" one of the largest commercial banks in Spain. It was formed in 1999 from a merger of Banco Bilbao Vizcaya with Banco Argentaria. In January, 15 1999 Banco Bilbao Vizcaya and Banco Argentaria issued a public announcement that they reached agreement to merge their banks to form Spain´s largest commercial bank. The announcement was widely reproduced in Spain, Latino America, United States and elsewhere. BBVA is involved in corporate, retail and international banking, and other financial services. Complainant BBVA is one of the leading banks in the Spanish market.
Complainant BBVA is listed on nine different exchanges and operates in over 35 different countries. In order to protect its "BBVA" trademark, the Complainant owns the registrations for the trademark “BBVA” in many countries around the world and by reason of the extensive use, promotion and advertising of the BBVA business by reference to the mark, it enjoys the substantial goodwill and reputation in the use of the said mark in the field of aviation, travel and leisure, and in particular, in services offered and delivered by means of their web page “www.bbva.com”.
The Complainant has registered the trademark BBVA Banco Continental in Peru with registration numbers 30731, 32123, 32124, 85091, 88124, 36937, in classes 42, 35, 38, 9, 16 and 36, respectively. It also has registered the BBVA mark in several countries including Spain, Japan, Australia, Chile, Haiti and the United States, since 1999 (as per Annex 3 of the Complaint).
In order to further protect its various marks, such as "BBVA" and to facilitate any users’ ability to locate the sites on the worldwide web, Complainant BBVA registered numerous domain names, one such domain name is <bbva.com>, <bbvabancocontinental.com> amongst many others.
The disputed domain name is confusingly similar to the Complainant’s BBVA marks as the two are almost identical. It is obvious that the Respondent has registered the disputed domain name for the sole purpose of trading on the goodwill associated with these and misleading the public into believing that it is the Complainant.
Thus, the disputed domain name could lead the Internet users to confusion (at least at a first moment), due to the inclusion of a well-known trademark clearly linked with the Complainant’s related activities.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent could have managed a legitimate online business products under any different domain name, whilst its present domain name (a) suggests that it is officially associated with BBVA which it is not; (b) prevents BBVA from registering the domain name <bbvacontinental.com> and to attract the corresponding Internet traffic. By the use of the disputed domain name the Respondent diverts traffic which would otherwise go to Complainant's web sites.
The disputed domain name was chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve. The inclusion of a trademark in a domain name suggests to consumers that the website found at that domain name is associated with the owner of the trademark.
The Complainant further submits that the Respondent’s websites are all search engines composed of sponsored links. The Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark BBVA CONTINENTAL and illegitimately trade on its fame for commercial gain and profit by diverting Internet users who mistakenly type the name <bbvacontinental.com>.
The Complainant's mark and its services are famous. Persons familiar with the Complainant's products and services are likely to conclude that the disputed domain name is simply an extension of the Complainant's business. In view of the fame of the Complainant's marks and the lack of distinctiveness afforded by the simple addition of non-distinctive or descriptive material, the disputed domain name is misleading. The disputed domain name was registered in bad faith since at the time of its registration, the Respondent had, no doubt, knowledge of the Complainant’s product sold in association with the trademark BBVA CONTINENTAL.
The Respondent has no rights or legitimate interests in the disputed domain name. There is no way that Respondent may not have been aware of the famous trademark BBVA, because the web page has finance service links. In this case, 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 disputed domain name. 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 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 by the name “bbva” and has not registered any mark containing this term. The Respondent has no relationship with, license from or specific permission from the 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, 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. 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 Respondent. 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 from the Complainant’s customers.
The Respondent must have had the Complainant in mind when registering the disputed domain name. In so doing, the Respondent is attracting visitors to its site.
The Complainant further submits that the Respondent’s bad faith is further demonstrated by the use of the disputed domain name to provide advertising links to websites promoting and/or offering products and services of third parties, especially in the bank area being the business core of the Complainant. The Respondent’s use of the disputed domain name is clearly an attempt to attract Internet users to the Respondent’s on-line location by creating a likelihood of confusion with the Complainant’s name and trade marks. This is particularly because the <bbvacontinental.com> web site contained information about BBVA. Further, as these third party web site this evidences bad faith use of the disputed domain name by the Respondent.
Given that the disputed domain name is completely comprised of the Complainant’s distinctive mark, any active use of the domain name by the Respondent would create a false impression that the Respondent and the Complainant were connected.
In sum, the notoriety of the Complainant’s BBVA marks, the Respondent’s lack of any connection to the Complainant all indicate opportunistic bad faith registration and use. The Complainant contends that the disputed domain name was registered and has been used in bad faith. Because of the national and international notoriety of the Complainant’s trademark BBVA and the Complainant’s high profile and the BBVA webite, the Respondent would have been fully aware of the Complainant’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.
It is obvious that the Respondent has registered the disputed domain name which is identical or confusingly similar to the Complainant’s mark and name and domain names, for the sole purpose of trading on the goodwill associated with these and misleading the public into believing that the disputed domain name belongs or is associated with the Complainant.
The Complainant submits that the evidence is that the Respondent (1) has adopted a confusingly similar domain name, (2) has used the trademark of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfills the bad faith requirements of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers (ICANN) – accredited registrar), agreed to be bound by all terms and conditions of the Domain Registrant Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the disputed subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar’s Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s domain name registration services may be suspended, and the domain name cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In this case, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A Identical or Confusingly Similar
This Panel finds that the disputed domain name <bbvacontinental.com> is identical to the Complainant’s widely known BBVA CONTINENTAL trademark. The Panel notes that the Complainant’s trademark was registered significantly earlier than the date of registration of the disputed domain name. In addition, the disputed domain name wholly comprises the Complainant’s BBVA CONTINENTAL trademark.
Furthermore, the addition of the gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a second level domain name. Finally, the blank spaces between trade names or trademarks in Internet domain names are omitted, and therefore do not constitute a distinctive element to any trademark, as being used by the Complainant in its main website at ”www. bbvabancontinental.com”.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s BBVA CONTINENTAL trademark nor with the disputed domain name; that the disputed domain name is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit the Complainant’s website; that the Respondent has not used nor prepared to use the disputed domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the disputed domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes that in this case where the registrant intentionally (i) failed to provide its true identity or contact data (which may include the registrant’s physical address, and also the administrative, billing, technical and contact data); or, (ii) gives false or notoriously insufficient data intended to make it difficult or impossible to communicate with such registrant, and particularly to be served or notified of the initiation of an administrative domain dispute proceeding against the same, as here, the Panel finds it to be evidence of the bad faith in which registrant has acted by registering and using a domain name. From the simple evidence here, the Panel concludes that the registrant has prepared or further intends to use such domain name in bad faith. The Panel lastly considers that according to the ICANN Registrar Accreditation Agreement, it may be a breach of the applicable registration agreement where a registrant, inter alia, willfully provides inaccurate or unreliable contact information. In the opinion of the Panel, the evidence, as in the present case, of the existence of such inaccurate contact information may well be taken as evidence of bad faith.
The Panel furthermore finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration of the disputed domain name by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark BBVA CONTINENTAL, as to the source, sponsorship, affiliation or endorsement of the website “www.bbvacontinental.com”, and therefore has made a bad faith use of the disputed domain name.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the disputed domain name <bbvacontinental.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: December 20, 2010