WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria, S.A. v. Cesar Arias
Case No. D2012-1230
1. The Parties
Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
Respondent is Cesar Arias of Bogota, Colombia.
2. The Domain Name and Registrar
The disputed domain name is <bbvabogota.com> which is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On June 18, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. On July 12, 2012 the Center received two email communications from Respondent.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 18, 2012. This Panel finds that it was properly constituted. This 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
Complainant is a banking and financial institution located in Spain.
Complainant has rights in the BBVA trademark for which it holds several trademark registrations, such as: registration No. 1355270 with the European Office for Harmonization in the Internal Market, granted in 2000 in classes 1 - 42; and registration No. 229701, file No. 99 067622, with the Colombian Office of Industry and Commerce, granted in 2000 in class 38.
Complainant also has rights in the BBVA and device trademark for which it holds several trademark registrations, such as: registration No. 1457746 with the European Office for Harmonization in the Internal Market, granted in 2001 in classes 1 - 42; and registration No. 268422, file No. 00 005507, with the Colombian Office of Industry and Commerce, granted in 2001 in class 36.
The disputed domain name was created on June 1, 2012.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant 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. In addition to Complainant’s prominence in Colombia, Spain and Latin America, it has an international network providing support to corporate customers. Complainant employs 104,000 people in over 30 countries around the world, has more than 47 million customers and 900,000 shareholders.
Complainant is the registered proprietor of numerous trademarks comprising the term “BBVA” both alone and together with devices and other words. These numerous variants of the BBVA mark are registered in many countries.
Complainant is also the registrant of a portfolio of domain names, including <bbva.com>, <bbva.com.co> and <bbva.co>. Complainant uses these domain names to promote and offer its banking and financial related goods and services throughout the world.
The disputed domain name is confusingly similar to the BBVA trademark. The first and dominant element of the disputed domain name is the BBVA trademark. The disputed domain name includes Complainant’s BBVA trademark in its entirety with the addition of the term “Bogota”. The addition of the nondistinctive, geographic modifier “Bogota” does not serve to distinguish the disputed domain name from the trademark in any way and is not sufficient to avoid any likelihood of confusion.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was chosen by Respondent to cause Internet users to believe that Complainant endorses or is associated with any website to which the disputed domain name 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.
Complainant’s evidence shows that the disputed domain name resolves to a website with a BBVA look and feel, including BBVA logo and stripes. It clearly shows that Respondent is intentionally using the disputed domain name to misleadingly divert customers.
There exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the disputed domain name. There is no evidence of any commercial relationship between Complainant and Respondent which would entitle Respondent to the BBVA trademark. Complainant has not consented to Respondent’s use of the BBVA trademark in the disputed domain name. Furthermore, Respondent is not commonly known by the disputed domain name nor is using the disputed domain name in connection with a bona fide offering or goods or services.
Even if Respondent is using the disputed domain name in order to fully exercise free speech rights, it is not indispensable to use someone else’s identical or confusingly similar trademark. Respondent could have managed a legitimate website under any different domain name, whilst the disputed domain name (a) suggests that it is officially associated with Complainant, which it is not; and (b) prevents Complainant from registering the disputed domain name and to attract the corresponding Internet traffic. By using the disputed domain name Respondent diverts traffic which would otherwise go to Complainant’s websites. Respondent can very well achieve his objective of criticism by adopting a domain name that is not identical or substantially similar to Complainant’s mark. Given the free nature of the media which is the Internet, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.
Respondent used the disputed domain name to intentionally attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website.
The disputed domain name was registered and is being used in bad faith.
Respondent was certainly aware of the existence of Complainant’s trademark at the time of registration of the disputed domain name, in view of the content of the disputed domain name website clearly referring to Complainant.
Respondent’s true purpose in registering the disputed domain name and publishing the attendant website is to disrupt Complainant’s business, by publishing malicious, damaging, untruthful and unsupported information aimed at tarnishing Complainant’s trademarks and destroying their goodwill and reputation among their customers and amongst the general public who will surely access the website and having done so be likely to believe the assertion. This in itself, according to Complainant, constitutes bad faith registration.
The disputed domain name was registered intentionally to misdirect customers looking for Complainant’s website. This constitutes bad faith registration. It also creates confusion for consumers as to Complainant’s trademark as to the source, affiliation, or endorsement as addressed within the meaning of paragraph 4(b)(iv) of the Policy.
Given that the disputed domain name is completely comprised of Complainant’s distinctive mark, any active use of the disputed domain name by Respondent would create a false impression that Respondent and Complainant were connected, the notoriety of Complainant’s BBVA marks, Respondent’s lack of any connection to Complainant, all indicate opportunistic bad faith registration and use.
Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The disputed domain name website creates a false association with Complainant and Complainant’s BBVA trademark. As such, it may be inferred that Respondent intentionally registered the disputed domain name to trade-off the goodwill and reputation of Complainant.
Due to Complainant’s reputation, the unauthorized use by Respondent of the BBVA mark in conjunction with the “bogota” term, Respondent is seeking to benefit from the goodwill of Complainant and pass itself off as a business of Complainant or its licensee or affiliated with Complainant and therefore it may be assumed that Respondent acquired the disputed domain name in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent’s assertions may be summarized as follows.
Complainant is the one acting in bad faith, trying to censor some accusations Respondent is making public since the local authorities are acting very slowly.
Respondent understands that the disputed domain name uses Complainant’s trademark, but Respondent relies on legitimate fair use and free speech rights and interests, and the tests of fair use, which Respondent contends the website at the disputed domain name complies with.
Respondent claims that there is plenty of evidence that the disputed domain name is not trying to divert costumers, and refers that a Google search for the contents of the website under “www.google.com/search?q=site%3Abbvabogota.com” reveals that all the descriptions of the pages contain the Spanish text: “No estamos afilados con el Banco BBVA. Soy un cliente perjudicado por el mal servicio”, that translates to “We are not affiliated with the BBVA Bank. I am a customer victim by the bad service”.
Respondent asserts that the website at the disputed domain name shows a clear and notable mark on the upper left that reads: “Blog denuncias BBVA Colombia No afiliado con el banco BBVA” that according to Respondent translates into “Blog about complaints on BBVA Colombia Not affiliated with BBVA bank”.
Respondent asserts that the disputed domain name website shows (i) on the top of every page the following: “Enterese como el banco que más gana, opera con tecnología ineficaz, inconsistencias y fallas sistematicas”, which according to Respondent translates into “Find out how the bank with higher income is operating with inefficient technology, inconsistencies and systematic failures”; (ii) on the bottom of every page the following: “Somos clientes afectados por el BBVA. Esta NO es la defensoría del cliente de el banco BBVA ni tenemos relación con BBVA o alguna de sus empresas” which according to Respondent translates into “We are customers affected by the BBVA. This is NOT the ‘defensoría del cliente’ [n.t: Local authority], nor we have any further relationship with the bank or its enterprises”; (ii) the title of the home page is: “El BBVA trata de censurarnos” which according to Respondent translates into “BBVA tries to censor us”; and (iv) on the body of every page the complaints and the proof of the allegation.
Respondent contends that the use of Complainant’s trademark in the disputed domain name is for the purpose of identifying the company that is the basis of the complaint site. Respondent argues that he cannot be liable because of the fair use exemption under the United States of America (U.S.) Federal Anti-Dilution Act of 1996 for use of a famous mark if the use is for noncommercial purposes or for news reporting and commentary. Respondent asserts that the website at the disputed domain name is a criticism site with no commercial activity and that in using Complainant’s trademark in the disputed domain name Respondent is protected by the guarantee of free speech under the First Amendment of the U.S. Constitution.
Respondent argues that he is using his right to freedom of speech and there is a legitimate interest in using Complainant’s trademark as part of the disputed domain name, since Respondent is discussing and criticizing the facts and matters related to his personal experiences as a costumer of Complainant.
Respondent asserts that he is not trying to misleadingly divert consumers, that the disputed domain name website is noncommercial, nor has been, nor will be, and hence the use is fair.
The Complaint implies that Complainant understands the legitimacy of the site, therefore Complainant’s other accusations of bad faith render its previous claims dubious.
Respondent contends that certain Complainant’s accusations are false statements and show lack of due diligence and refers (i) that Respondent still is a costumer of Complainant in Colombia, that Respondent has been its customer for more than 5 years, and the proof of that is on the website at the disputed domain name itself, which just relates to Respondent and the bank; and (ii) it is false that Respondent used the disputed domain name to intentionally attract Internet users to his website for commercial gain since Respondent is gaining nothing.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
6.1 Procedural Issues
Respondent’s first email communication was received by the Center at 07:09 hours on July 12, 2012, and contains Respondent’s substantive allegations. Respondent’s second email communication was received by the Center at 07:27 hours on July 12, 2012, and it contains Respondent’s assertion that it was July 11, 2012, 20:55:00, UTC-8 hours, the time at which he sent out the second email communication. This Panel could validly infer that such email communications were sent from Bogota, Colombia, where Respondent resides according to the Registrar’s WhoIs database and the Registrar’s verification response, and which is seven (7) hours behind the Center’s local time at Geneva and five (5) hours behind UTC (Coordinated Universal Time). Although Respondent did not clarify from which place he sent such email communications, this Panel has decided to accept such Respondent’s assertion absent any evidence to the contrary.
Respondent’s email communications do not comply with all the requirements applicable to a proper response as set forth in the Rules, paragraph 5(b). However, it seems that Respondent is an individual who is not assisted by legal counsel. Thus in this case, this Panel has decided to take into account such email communications as Response.1 In any event, if this Panel had not taken into consideration such Response, that would not have changed the outcome of this proceeding.
Further, the Response asked for an extension in order to submit a better defense, without providing further reasons to support such request. Paragraph 10(c) of the Rules directs the panel to ensure that the administrative proceeding takes place with due expedition, and empowers the panel to extend, in exceptional cases, a period of time set forth by the Rules or by the panel. Nothing in the file indicates there is an exceptional case to support the granting of such extension, thus this Panel decided not to grant it and move forward with no delay.
6.2 Substantive Issues
The lack of a proper and elaborated Response does not automatically result in a favorable decision for Complainant. The burden for Complainant, under paragraph 4(a) of the Policy, is to show:2 (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
As past UDRP panel decisions have demonstrated, it is not enough to merely rely on the stated strength of a company or the international recognition of a trademark.3 The Complaint is full of bare assertions and assumptions. The evidence adduced by Complainant in support of its substantive allegations is limited to copies of the trademark registrations on which the Complaint is based, nothing else. Complainant did not even submit a screenshot of the website at the disputed domain name in order for this Panel to be able to evaluate the merits of the Complaint. On his part, Respondent makes reference to some of the specific contents of the website at the disputed domain name without supplying any evidence thereof.
As set forth in other UDRP cases, this Panel reiterates that it is not its role to look for evidence not supplied by the parties.4 Notwithstanding the aforesaid, due to the lack of evidence adduced by the parties and the lack of the corresponding certification in the Response, in this particular case this Panel decided, reluctantly, to quickly access the website at the disputed domain name.5
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the BBVA trademark.
The disputed domain name entirely incorporates the BBVA trademark, adding the suffix “bogota”. The addition of such geographic term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (see Volvo Trademark Holding AB v.SC-RAD Inc., WIPO Case No. D2003-0601; PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s BBVA trademark.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the disputed domain name, that Complainant has not consented to Respondent’s use of the BBVA trademark in the disputed domain name and that Respondent is not commonly known by the disputed domain name, all of which was not challenged by Respondent.
The litis here is whether a domain name that is used for criticism may generate any rights or legitimate interests on a registrant for purposes of the Policy.
This Panel is aware of the different views reflected in UDRP panel decisions in that respect6, including those relied on by Complainant (Westminster Savings Credit Union v. Hart Industries Inc. and Gregory Hart, WIPO Case No. D2002-0637; and Bett Homes Limited and Bett Brothers PLC v Bill McFadyen, WIPO Case No. D2001-1018) and by Respondent (Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190).
It is clear to this Panel that the Policy was designed to deal with abusive domain name registration only and not with all issues pertaining to trademark disputes. It is noteworthy to point out that the Final Report of the WIPO Internet Domain Name Process expressly states7 that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would likewise not be considered to be abusive”. Paragraph 4(c) of the Policy establishes that any of the circumstances listed therein, in an illustrative and not limitative way, shall demonstrate registrant’s rights or legitimate interests to a domain name, and it is in that context that subparagraph (iii) thereof establishes as one of those circumstances if “you [registrant] 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”.
In connection with the above, this Panel coincides with the following statements in Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947: “[paragraph 4(c)(iii) of the Policy] does not merely recognize a right to place legitimate non-commercial or fair content on an Internet website; it recognizes a right to use a domain name which is identical or confusingly to the Complainant’s mark, provided the use is legitimate non-commercial or fair use and without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue [...] the Policy does not confer a right on a registrant to use a domain name identical to a complainant’s mark where the conditions of its paragraph 4(c)(iii) are met; it merely recognizes that such cases are not egregious abuses which should be addressed by the mandatory administrative proceeding provided by the Policy”.
Respondent contends that the disputed domain name is used for noncommercial purpose as it resolves to a criticism website from which he derives no commercial gain. On the other hand, Complainant’s contrary assertions in that respect are totally unsupported by any type of evidence.
As set forth above, this Panel accessed the disputed domain name and the website to which it resolves and found nothing that might denote a commercial use or a use for commercial gain. Such website seems to this Panel to be of a criticism and commentary nature only.
Further, the website at the disputed domain name clearly displays all captions and disclaimers mentioned in the Response, which make immediately apparent to any Internet user that such website is not Complainant’s website. Contrary to Complainant’s assertions, there is nothing therein that might suggest that Complainant endorses or is somewhat associated to such website. Complainant’s contention that such website has a “BBVA look and feel” is completely unsupported.
The criticism and commentary reflected on such website does not seem to this Panel, on its face, to be malicious or plainly unfounded or aimed at tarnishing Complainant’s trademark. In any event, it corresponds to a court of competent jurisdiction and not to this Panel to determine whether such criticism is really unfounded or whether it might constitute defamation or libel or other type of legal wrongdoing.8
In view of all the above, this Panel finds that Complainant has failed under paragraph 4(a)(ii) of the Policy.
Given the aforesaid, this Panel considers it unnecessary to address paragraph 4(a)(iii) of the Policy.9
For all the foregoing reasons, the Complaint is denied.
Dated: August 1, 2012
1 Similar situations in Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., WIPO Case No. D2005-0603 and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
2 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Each of the three stated elements are made up of a number of facts, each of which has to be proven in order for the Complainant to succeed [...] Facts are proven through evidence [...] Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”.
4 In The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661, it was established: “The [p]anel suspects [...] that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”.
5 See Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057: “UDRP panels frequently avail themselves of resources not supplied or mentioned by the parties, when these are publicly available and have a high degree of credibility for a relevant purpose [...] such resources may include the [...] websites associated with the domain names [...] The panel will use these resources, for example, to [...] fill in the factual gaps left by a silent respondent, or test the credibility and completeness of the parties’ statements”.
6 See paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), available at “www.wipo.int/amc/en/domains/search/overview2.0/index.html”
7 See Section 172 of The Management of Internet Names and Addresses: Intellectual Property Issues.- Final Report of the WIPO Internet Domain Name Process, April 30, 1999, available at: “http://www.wipo.int/export/sites/www/amc/en/docs/report-final1.pdf”.
8 See Coast Hotels Ltd. v. Bill Lewis and UNITE HERE, WIPO Case No. D2009-1295: “fair-use criticism does not necessarily constitute tarnishment, and in cases such as this is not prohibited by the Policy. Claims based on commercial libel must be brought in other legal venues”.
9 However, this Panel wants to point out that the issue of bad faith registration and use has to be supported by appropriate evidence and, as set forth above, Complainant chose not supply any evidence to support its substantive allegations. See 2Advanced Studios LLC v. Dreamrack, Inc., WIPO Case No. D2003-0923: “Mere allegations of bad faith registration and use are not enough to warrant a finding for the Complainant. Despite the suspicious circumstances surrounding the registration of a known trademark [...] because the Complainant has put forward no tangible evidence supporting its accusation of the Respondent’s bad faith registration and use of the Domain Name, the Panel has no choice but to find that the element of bad faith has not been proven”; Enrique Bernat F., SA v. Marrodan, WIPO Case No. D2000-0966: “The burden of proof lies with the Complainant in all cases to establish actual bad faith by the Respondent”.