World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Nacional de Mexico, S.A., Banamex USA (formerly known as Citibank (Banamex USA)) v. Domain Privacy / Whois Privacy Protection Service, Inc. (Banamex Mortgage Corp., USA)

Case No. D2011-1600

1. The Parties

The Complainant is Banco Nacional de Mexico, S.A., of Delegación Cuauhtémoc, Mexico and Banamex USA (formerly known as Citibank (Banamex USA)), Los Angeles, California, United States of America, represented by Sheppard, Mullin, Richter & Hampton, United States of America (the “United States” or “US”)

The Respondent is Domain Privacy of, Fareham, Hampshire, United Kingdom of great Britain and Northern Ireland, Whois Privacy Protection Service, Inc. of Washington, United States of America and (Banamex Mortgage Corp., USA), Miami, Florida, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <banamexmortgage.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 22, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 22, 2011, eNom. transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 18, 2011.

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”).

On October 12, 2011, the Center transmitted an email to eNom copied to the Parties, in relation to the expiration date of the Disputed Domain Name October 30, 2011). On the same day, eNom replied the Center’s query by stating the following:

“The domain will remain LOCKED until the UDRP proceedings are concluded or terminated. The domain will also remain locked after expiration should the UDRP process extend beyond the expiration date. However, should the domain go into redemption status after its expiration, the domain may be deleted if the domain is not renewed.

Prior to expiration, no action is necessary to maintain the lock on the domain. Should the domain expire prior to completion of the UDRP process, the complainant has the option to renew the domain to prevent deletion should they wish to do so. eNom will be more than happy to assist with this and provide instructions to the complainant should the UDRP process extend beyond the domain's expiration date.”

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 19, 2011.

On October 27, 2011 the Center was copied on an email sent from Mr. White the Customer Support Manager representing the company JustHost who is the webhosting provider and domain reseller for the Respondent with the registrar eNom. Stating that he had made sure that the domain name <banamexmortgage.com> has been locked at its registrar, eNom and further informed the Complainant that the domain name was nearing its expiration date (October 30, 2011).

As the Center had not received any response back from either Party regarding the expiry issue, the Center sent a further reminder to them on October 31, 2011 advising the Parties to contact eNom directly, further reminding that it is not the role of the Center to arrange payment of any renewal / registration fees that may be required.

In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.

The Center appointed Nicholas Weston as the sole panelist in this matter on November 24, 2011. 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.

The language of this administrative proceeding is English, being the language of the registration agreement.

4. Factual Background

The Complainant operates a bank in the Mexican Republic with more than 1,700 branches. The Complainant holds registrations for the BANAMEX trademark and variations of it in various countries including the United States, which it uses to designate banking and other financial services. Its United States registration No. 1614211 has been in effect since 1990 but has been used in Mexico since 1884. Approximate global revenue for sales of BANAMEX brand services in 2010 was USD 18 billion.

The Complainant conducts business on the Internet using numerous domain names containing the word “banamex” including <banamex.com> and <citibanamex.com> with banking and financial business websites resolving from these domain names.

The Respondent registered the Disputed Domain Name <banamexmortgage> on October 29, 2010 which resolves to a web page containing advertisements and links in connection with BANAMEX brand financial services.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademark BANAMEX in various countries as prima facie evidence of ownership.

The Complainant submits that the mark BANAMEX is well-known throughout Mexico, the United States (U.S.) and Latin America. The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <banamexmortgage.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BANAMEX trademark (citing Dell, Inc., v. George Dell & Dell Net Solutions, WIPO Case No. D2001-0602) and that the similarity is not removed by the addition of the descriptive word “mortgage”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055). The Complainant also contends that use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services (presumably alluding to Drexel University v. David Brouda, WIPO Case No. D2001 0067, “rights or legitimate interests cannot be created where the user of the Domain Names at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”).

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s BANAMEX mark in the (Disputed) Domain Name, the Respondent is “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks” (alluding to Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946). The Complainant further contends that Respondent “advertising services and product in the same industry” is another factor indicating bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:

(i) that the domain name 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 domain name; and

(iii) that the domain name has been registered and is being used in bad faith

A. Identification of Respondent or Respondents

Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. In the amendment of October 18, 2011 the Complainant has named and proceeded against both Domain Privacy / Whois Privacy Protection Service, Inc. (“the first Respondent”) and “Banamex Mortgage Corp., USA/Registered Agent: Leandro Maria” (“the second Respondent”).

The use of a privacy service by the second Respondent raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondents or Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.

The first task requires the panel to decide who is the registrant of the domain name under the Policy. In The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438 the panel stated that in cases like this where the information is provided by the privacy service, either from a change in the WhoIs information or from a communication to the Center by the registrar or the privacy service as to the identity of the underlying registrant panels have 1) treated the underlying registrant and the respondent jointly as respondent or 2) elected to disregard the privacy service entirely and to analyze only the acts of the underlying registrant.

Other decisions point out that a registrant may have legitimate reasons to use a privacy service or, on the other hand, that it may do so in an attempt to evade contact in the event of a domain name dispute (see: TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). The Rules already place a significant burden on a complainant attempting to communicate with an alleged wrongdoer. In addition, under paragraph 2(a) of the Rules, it is “the provider’s (the Center’s) responsibility to employ reasonably available means calculated to achieve actual notice to Respondent.” Under paragraph 2(a)(i) of the Rules the complaint is also required to be forwarded to “all postal-mail and facsimile addresses shown in the domain name’s registration data in the Registrar’s WhoIs database for the registered domain-name holder, the technical contact, and the administrative contact.” Under paragraph 3(b)(v) of the Rules, the Complaint is required, inter alia, to provide the name of the respondent and contact information. The ICANN Registrar Accreditation Agreement (2001) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them.” In other words, the registrant and the registrar are required to keep in contact.

The obstacles that a privacy service causes to a complainant do not end there, even where there has been a later disclosure of the true registrant. Under paragraph 3(b)(ix) of the Rules, the complaint is required to specify the grounds on which the respondent lacks rights or legitimate interests in the disputed domain names. Under paragraph 3(b)(xiii) the complainant is required to submit in the complaint to a mutual jurisdiction of the Respondent’s domicile in circumstances where the registrant has not agreed in its registration agreement to be bound by the courts at the location of the principle office of the registrar. In the present case the issue is moot, as the Complainant has submitted to the jurisdiction of the courts at the location of the principal office of the registrar and indeed the registrar has confirmed that the Respondents have submitted to the courts at that location. In determining who the proper Respondent should be here, this Panel has had regard to the following:

(a) the fact that the privacy or proxy registration service was the registrant publicly listed in the WhoIs at the time the Complaint was initiated;

(b) that the privacy or proxy registration service and underlying registrant as disclosed have both received notice of the present dispute;

(c) balancing between the interests of the Complainant, registrar, privacy service, registrant and third parties (e.g.: providers such as the Center) who may be affected;

(d) the apparently wide spread use by many registrants of privacy or proxy services;

(e) proportionality of the downside of joining the privacy service to the benefits gained by the Complainant from such joinder;

(f) the diversity of jurisdictional norms and of different degrees of privacy protection by privacy services; and

(g) whether the election made provides certainty and transparency to complainants and respondents about their rights and obligations.

Having regard to the commercial benefit derived by the privacy service and onerous obligations already incumbent on a complainant, and for the foregoing reasons, this Panel finds it is procedurally efficient, and equitable, to permit joinder of a privacy service as a respondent in a wide range of circumstances, including these.

Accordingly, the Panel finds that Domain Privacy / Whois Privacy Protection Service, Inc. of, Fareham, Hampshire, United Kingdom of great Britain and Northern Ireland, and (Banamex Mortgage Corp., USA), Miami, Florida. Name and Address of Registered Agent: Leandro Maria, 332 Glenn Parkway, Hollywood, Florida 33021, United Kingdom are the proper respondent parties, and they will hereafter be referred to jointly and severally as “Respondent.”

As noted having regard to the location of the principal office of the registrar, it is uncontentious that the applicable mutual jurisdiction is the USA.

Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information on official record or provided in the Complaint. Proof of service is not required. Paragraph 2 of the Rules use the words “calculated to achieve actual notice”, not “actually achieve actual notice”. As no response was filed, the Panel has reviewed the record to ensure that the October 18, 2011 amendment to the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility.

B. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BANAMEX in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark BANAMEX in the Respondent’s relevant jurisdiction, the United States, pursuant to United States Trademark Registration No. 11614211. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark BANAMEX.

The Panel also finds that the mark BANAMEX is well-known: see Banco Nacional de México, S.A. Integrante del Grupo Financiero Banamex and Citibank (Banamex USA) v. Domain Park Limited

WIPO Case No. D2008-1457 (“their equally well-known marks BANAMEX and BANAMEX USA”).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the BANAMEX trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) conjoined with the descriptive word “mortgage” (c) followed by the top level domain suffix “.com”.

It is well established that the top level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the Disputed Domain Name <banamexmortgage>.

It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a descriptive word: (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel finds that the additional element, specifically the word “mortgage”, after the Complainant’s registered trademark, is an obvious descriptor of the Complainant’s services that several previous WIPO decisions have found do not serve to adequately distinguish a disputed domain name and therefore the Disputed Domain Name in this matter remains confusingly similar to the registered trademark: (see Expedia, Inc. v. Miles Pennella, WIPO Case No. D2001-1416; Wachovia Corporation v. Marcus Sims d/b/a Domains for Sale and d/b/a Key Option, WIPO Case No. D2002-0809; HSBC Holdings Plc v. domainchronicle, WIPO Case No. D2002-1173; Equifax Inc. v. PabloPalermao / Registrant [225148]: Moniker Privacy Services, WIPO Case No. D2008-0506).

In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000 1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the BANAMEX trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) 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.

The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)

It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)

However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a parking web page advertising or offering for sale products or services in connection and competition with the Complainant’s mark and thereby illegitimately “holding itself out as somehow affiliated with or connected to the Complainants”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Names.

This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its web page.

The Panel finds for the Complainant on the second element of the Policy.

D. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):

ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See: Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The trademark BANAMEX is so well-known in the United States, Mexico and Latin America for financial services that it is inconceivable that the Respondent might have registered a domain name similar to or incorporating the mark without knowing of it.

Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark BANAMEX, U.S. Registration No. 1614211 from 1990 predating its rights from the Respondent’s registration by over 20 years.

A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the web site operated by the Complainant. In this Panel’s view, it is in breach of the “eNom Inc. Registration Agreement” for breach of the required acknowledgment: “You represent and warrant that neither the registration of a domain name nor the manner in which it is directly or indirectly used nor the use of other of the services infringes the legal rights of a third party.”

The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

This Panel finds that the Respondent has taken the Complainant’s trademark BANAMEX and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web page offering competing products and services for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <banamexmortgage.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Dated: December 8, 2011

 

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