WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Davivienda S.A. v. Domain Name, Privacy Protection Service INC d/b/a PrivacyProtect.org. / Domain Admin, Private Registrations Aktien Gesellschaft

Case No. D2014-1922

1. The Parties

The Complainant is Banco Davivienda S.A. of Bogotá, Colombia, represented by Posse Herrera Ruiz, Colombia.

The Respondent is Domain Name, Privacy Protection Service INC d/b/a PrivacyProtect.org. of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and The Grenadines.

2. The Domain Name and Registrar

The disputed domain name <bancodavivienda.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2014, 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 November 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to the email communication on November 3, 2014 and a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 7, 2014 and November 13, 2014.

The Center verified that the Complaint together with 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 November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2014.

The Center appointed Mladen Vukmir as the sole panelist in this matter on December 22, 2014. 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

The Panel has determined the following non-contested facts:

(i) the disputed domain name was created on December 28, 1999 (Annex 1 to the Complaint);

(ii) the Registrar disclosed that the Respondent is the registrant of the disputed domain name (the Registrar's verification response transmitted to the Center on November 1, 2014);

(iii) the Complainant is the owner of a number of DAVIVIENDA trademark registrations in different classes, including 35, 36, and 38, as listed and evidenced in the Complaint and Annexes 3 and 4 to the Complaint, particularly,

– Registration No. 202618 DAVIVIENDA word trademark registered in Colombia on October 29, 1997;

– Registration No. 314440 word and device trademark registered in Colombia on May 10, 1997;

– Registration No. 21286 DAVIVIENDA word and device trademark registered in Colombia on July 22, 1997;

– Registration No. 4,237,555 DAVIVIENDA word trademark registered in the United States of America ("USA") on November 6, 2012;

– Registration No. 34370346 word and device DAVIVIENDA trademark registered in Salvador on January 23, 2013;

– Registration No. 2187-13 word and device DAVIVIENDA trademark registered in Ecuador on February 13, 2013;

– Registration No. 857-13 word and device DAVIVIENDA trademark registered in Ecuador on January 5, 2013;

– Registration No. 220198 word and device DAVIVIENDA trademark registered in Costa Rica on May 10, 1997;

– Registration No. 1064325 DAVIVIENDA trademark registered in Chile on December 18, 2013 etc;

(iv) the Complainant and its affiliates are owners of several domain name registrations incorporating the respective DAVIVIENDA trademark, amongst other, <davivienda.com> registered in 1996, <davivienda.com.co> registered in 1998, <davivienda.com.ec> registered in 2012, <davivienda.ec> registered in 2012 and <davivienda.us> registered in 2012 (Annex 10 to the Complaint);

(v) the Complainant's advertising campaigns which included the use of its DAVIVIENDA trademarks have won different advertising awards, both in Colombia and internationally (Annexes 11, 12 and 13 to the Complaint).

It should be noted that a great portion of the materials submitted by the Complainant along with the Complaint are in Spanish language. Although the language of the subject proceedings is English, the Panel was nevertheless in a position to review and take into consideration said materials in Spanish because of the Panel's knowledge of Spanish language.

5. Parties' Contentions

A. Complainant

The Complainant, essentially, asserts that:

(i) they are one of the biggest and most important banks in Colombia founded in 1972 by Grupo Empresarial Bolivar;

(ii) they own numerous DAVIVIENDA trademark registrations registered worldwide, including Colombia, United States of America, Salvador, Ecuador, Costa Rica and Chile (Annexes 3 and 4);

(iii) since 1996 they have been using the domain name <davivienda.com> as their official website (Annex 10);

(iv) the disputed domain name is confusingly similar to their DAVIVIENDA trademarks, since the only difference between the DAVIVIENDA trademarks and the disputed domain name <bancodavivienda.com> is the descriptive word "banco", which in Spanish means "bank";

(v) the likelihood of confusion of the disputed domain name with the Complainant's trademarks is more dangerous considering the social and financial responsibility of banks, entities that capture savings from the public and in consequence, the protection of the bank's trademarks is absolutely important to avoid frauds in the financial system. In this respect, the Complainant invokes previous practice before the Center in which the panel has reached the same conclusion (Banco De Bogotá S.A., v. Fernando Díaz Bueno, WIPO Case No. D2004-1093 (<bancodebogota.net>));

(vi) the Respondent has neither prior rights nor legitimate interests in respect of the disputed domain name. To support this claim, the Complainant invites the Panel to consider that: the Complainant has sent a couple of letters (Annexes 5 and 6 to the Complaint) to the Respondent, to which letters Respondent failed to answer; the Respondent has used a proxy service to hide its identity, and for that reason has no interest in distinguishing services with the word "davivienda" which in Spanish means "home giver"; the Respondent is not recognized as a person who offers financial services and products and has shown no intention to distinguish itself from the Complainant and its DAVIVENDA trademarks.

(vii) the Respondent has registered and is using the disputed domain name in bad faith, since: on the website operated under the disputed domain name, the Respondent offers the same services as the Complainant does on the Complainant's website <davivienda.com> and for which the Complainant's DAVIVIVENDA trademarks are registered for in the class 36, all with the purpose of capturing visits from the customers of the Complainant who accidentally add the word "banco" when typing the legitimate domain name of the Complainant <davivienda.com>.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is confusingly similar to a trademark in which the Complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition, ("WIPO Overview 2.0")).

The Complainant has submitted sufficient evidence to show that it is the owner of numerous DAVIVIENDA trademarks worldwide (both word and word and device trademarks), including Colombia, USA, Salvador, Ecuador, Costa Rica and Chile.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of WIPO Overview 2.0).

It is evident that the disputed domain name <bancodavivienda.com> incorporates the Complainant's DAVIVIENDA trademark in its entirety, and that the same DAVIVIENDA trademark of the Complainant is clearly recognizable within the same.

The Panel must further answer the question, whether adding the term "banco" (meaning "bank" in Spanish) to the word "davivienda" is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant's DAVIVIENDA trademark.

With respect to the above, this Panel upholds the Complainant's contention that the term "banco" (meaning "bank" in Spanish) is clearly generic and non-distinctive, and that used by the Respondent in combination with the Complainant's DAVIVIENDA trademark in the disputed domain name is insufficient to prevent a finding of confusing similarity. Moreover, in this Panel's view, adding said generic word may, in fact, reinforce consumer confusion as to the connection between the Complainant's DAVIVIENDA trademark and the disputed domain name. As the Complainant asserts, it would be entirely reasonable for anyone seeking information regarding the Complainant and its business to type the word "banco" in front of the word "davivienda". Especially, if one takes into the account that the Complainant's company name is Banco Davivienda S.A. and that it is engaged in providing of different banking services.

Furthermore, this Panel finds that the Complainant has presented sufficient evidence showing that their DAVIVIENDA trademark has been used on the Internet since 1996, primarily through the Complainant's domain name <davivienda.com>, as well as in different advertising campaigns.

Therefore, in this Panel's view, it is safe to conclude that the Respondent clearly did not intend to distinguish the disputed domain name from the Complainant's trademark by adding the generic term "banco" which in Spanish means "bank" to the Complainant's DAVIVIENDA mark when creating the disputed domain name.

To the contrary, in this Panel's opinion, it is very likely that the Respondent's intention was for the disputed domain name to trade on the renown of the Complainant's trademark. The presence of the Complainant's DAVIVIENDA trademark in the disputed domain name certainly bears weight as a signal to potential customers and the disputed domain name benefits from the same. The latter especially, if one bears in mind that the term "banco" by itself has no distinctive character, and as such can be considered as a common/generic term. Further, the fact that the Respondent, who is apparently situated in Saint Vincent and The Grenadines where the official language is English while most people speak Vincentian Creole (not Spanish), used in the disputed domain name the Spanish word "banco" in addition to the Complainant's DAVIVIENDA trademark indicates that the Respondent must have been aware of the Complainant and it's trademarks and their renown on Spanish-speaking markets and intended to illegitimately benefit from the Complainant's DAVIVIENDA trademark and confuse Internet users.

It should be noted, that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself. See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0, and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. Also, see the numerous UDRP decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyProtect.org Domain Admin / Trade Out Investments Ltd, WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil, WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji, WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena, WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan, WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca, WIPO Case No. D2007-0252; Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947; and see Siebel Systems, Inc v. Implementation Services Group, Inc., WIPO Case No. D2002-1070.

Regarding the applicable generic Top-Level Domain ("gTLD") ".com" suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. has proven that the disputed domain name is confusingly similar to their DAVIVIENDA trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

"(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [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 trade mark or service mark at issue. "

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".

In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.

Namely, the Complainant has established that it is the owner of a number of trademarks DAVIVIENDA registered in various jurisdictions around the world, as well as that they have widely used the same trademarks on the market and the Internet.

The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

Furthermore, from the records, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its DAVIVIENDA trademark, or to apply for or use any domain name incorporating the same trademark. On the contrary, the Complainant has presented evidence (Annexes 5 and 6 to the Complaint) that it has sent several letters both to the Registrar and the Respondent, informing them about the Complainant's rights in DAVIVIENDA trademarks and the infringing nature of the disputed domain name and its content; however it appears that the Respondent never replied to said letters.

In this Panel's view, it can be safely concluded that the Respondent deliberately chose to include the Complainant's DAVIVIENDA trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use. Especially taking into account that the Respondent who is apparently situated in Saint Vincent and The Grenadines where the official language is English while most people speak Vincentian Creole (not Spanish) paired the word "banco" with the Complainant's trademark DAVIVIENDA, and that therefore, it is not likely that the Respondent's choice of words in the disputed domain name was random (as stated earlier the Complainant's company name is Banco Davivienda S.A. and the Complainant is engaged in providing of banking services).

Moreover, after having inspected the website operated under the disputed domain name, this Panel established that the Complainant's assertions are correct and that the Respondent offers links to third party websites, without any other actual content that would represent bona fide offering of goods and services. In this regard, this Panel finds that use of the disputed domain name as a portal to third-parties' websites, including websites of the Complainant's competitors does not constitute a bona fide offering of goods or services. See Canadian Tire Corporation, Limited v. Texas International Property Associates, WIPO Case No. D2007-1407.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant's making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent's failing to produce any arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

Owing to a lack of the Response or any other evidence to the contrary, the Panel accepts the Complainant's arguments substantiated by evidence that, at the time of registration of the disputed domain name, the Respondent was in bad faith, since the Respondent knew or should have known about the Complainant's DAVIVIENDA trademarks, because of its numerous DAVIVIENDA trademark registrations worldwide and use of the same trademarks on the market and Internet.

Moreover, the Respondent must have been aware of the risk of deception and confusion that would result from the registration of the disputed domain name and the posting of the content of the website linked thereto, particularly, because the Internet users, who access the website operated under the disputed domain name, are redirected to third party websites offering services and products that compete with those offered by the Complainant under their DAVIVIENDA trademarks. Especially, and as already stated earlier, taking into account that the Respondent who is apparently situated in Saint Vincent and The Grenadines where the official language is English while most people speak Vincentian Creole (not Spanish) paired the word "banco" with the Complainant's trademark DAVIVIENDA, and that therefore, it is not likely that the Respondent's choice of words in the disputed domain name was random (the Complainant's company name is Banco Davivienda S.A. and the Complainant is engaged in providing of banking services).

Therefore, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent's website, for commercial gain by means of links to third party websites, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or the service on the Respondent's website, when, in fact, the Respondent's website redirects Internet users, amongst other, to the Complainant's competitors' sites.

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent's registration and use of the disputed domain name interferes with the Complainant's business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the Respondent's website. See, e.g., the following decisions issued by panels in some of earlier UDRP proceedings:

(i) Sanofi v. PrivacyProtect.org / ICS INC., WIPO Case No. D2012-1293 (<sanofiadventis.com>): "[…] previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)";

(ii) Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (<rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>): "The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant's competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant's business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its websites.";

(iii) PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>): "The fact that the Respondent elected to register a domain name substantially comprising the "PEPSI" trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant."

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 <bancodavivienda.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: January 5, 2015