WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Bilbao Vizcaya Argentaria. S.A. v. WhoisGuard / Timona Por Motin

Case No. D2013-0366

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 WhoisGuard of Los Angeles, California, United States of America / Timona Por Motin of Lima, Peru.

2. The Domain Names and Registrar

The disputed domain names <bbvapanamaa.com> and <bbvapanamas.com> are registered with eNom

eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2013. On February 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 28, 2013.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2013.

The Center appointed Enrique Ochoa as the sole panelist in this matter on March 30, 2013. 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 Complainant Banco Bilbao Vizcaya Argentaria, S.A. is a large global financial group with a global reach and a strong capital base and one of the major players in the European market. According to the Complainant, it occupies a solid position in the Spanish market and it plays a leading role in Latin America.

The Complainant offers individual and corporate customers a range of financial and non-financial products and services. According to the Complainant, it enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago; has a leading franchise in South America; is the largest financial institution in Mexico; is one of the 15 largest commercial banks in the United States of America and one of the few large international groups operating in China.

The Complainant employs 104,000 people in over 30 countries around the world, has more than 47 million customers and 900,000 shareholders. The international presence of the Complainant now dates back a century. In 1902, Banco de Bilbao opened a branch in Paris and, in 1918, another in London.

The Complainant is the owner of numerous trademark registrations, especially for banking services, including in the European Community, United Stats of America and Peru. The Complainant has registered, among others, the following trademarks which are in full force and effect:

The Complainant has also registered numerous domain names, such as <bbvapanama.com >, <bbva.com> and <bbva.com.pa>, as well as other country code domain names, for the needs of its activities on the Internet as evidenced in “http://www.networksolutions.com/whois/index.jsp”.

Also, the fame of the Complainant’s has been evidenced in prior WIPO UDRP cases, among others: Banco Bilbao Vizcaya Argentaria, S.A. v. X company, WIPO Case D2005-0289 (<bbva-support.com>), Banco Bilbao Vizcaya Argentaria S.A. v. Nicolas Zalcberg, Z & A Group, WIPO Case No. D2003-0475 (<wwwbbva.com>) and Banco Bilbao Vizcaya Argentaria v. Master Inc., WIPO Case No. DPE2010-0001 (<bbvacontinental.com.pe>).

The disputed domain name was created on February 7, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant is a global group that offers individual and corporate customers the most complete range of financial and non-financial products and services. The Complainant enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago. The Complainant also has a leading franchise in South America; it is the largest financial institution in Mexico, one of the 15 largest United States commercial banks and one of the few large international groups operating in China and Turkey. The Complainant employs 104,000 people in over 30 countries around the world, has more than 47 million customers and 900,000 shareholders.

The Complainant’s international activities are already a hundred years old. The Complainant opened a branch in Paris in 1902 and a London branch in 1918. It was thus several decades ahead of other Spanish banks. During the 1970s Banco de Bilbao, Banco de Vizcaya and Banco Exterior became international groups with branches and representative offices in the main capitals of Europe, the Americas and Asia. They also started to acquire local banks in these areas, mainly in Latin America.

The Complainant is the registered proprietor of numerous trademarks comprising the word “BBVA” both alone and together with devices and other words. These numerous variants of the BBVA mark are registered in many countries. The Complainant is also the registrant of a portfolio of domain names including <bbva.com>, <bbvapanama.com> and <bbva.com.pa>. The Complainant uses these domain names to promote and offer consumer, corporate and small-company banking services.

The disputed domain names are confusingly similar to the Complainant’s BBVA marks as they are almost identical. The disputed domain names contain the BBVA trademark in its entirely combined with misspelling of the name of a country where the Complainant carries on business under or by reference to the BBVA name, namely, Panama. The addition of the word “panamas” or “panamaa” to BBVA in the disputed domain names has minimal impact on what the viewer focuses on, namely, BBVA. It is well established that the mere addition of letters or misspelling to a famous trademark results in a domain name that is confusingly similar to the Complainant’s mark (Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362, quoting America Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495. Rather than removing or reducing the risk of confusing similarity from the disputed domain names when compared with the trademarks in question, in such situations confusing similarity was regarded as inevitable. The only difference between the disputed domain names and <bbvapanama.com> owned by the Complainant are one more letter: “a” or “s”. The Respondent has deliberately added the word “panamaa” or “panamas” to BBVA in the disputed domain names because the Complainant’s BBVA trademark is so well-known to consumers that they will assume that a domain name containing BBVA is that of or associated with the Complainant. Further, the Respondent must have had the Complainant in mind when registering the disputed domain names because the disputed domain names with typos are similar to the domain name <bbvapanama.com> used by the Complainant in Panama and the websites at the disputed domain names are both redirected to www.bbvapanama.com.

Upon the Complainant’s information and belief, the Respondent has no rights or legitimate interests in respect of the disputed domain names. Simply adding geographic name, or the letters “a” or “s” to a domain name consisting of a well-known trademark does not establish a right, or a legitimate interest, to own the corresponding domain name. Quite clearly the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant’s website, See Verisign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446. The Respondent has not been authorized in any way to use the Complainant’s mark, nor does it engage in the business of selling products or services related to those offered by the Complainant. The disputed domain names <bbvapanamaa.com> and<bbvapanamas.com> wholly encompass the word mark BBVA which constitutes the sole relevant and distinctive element within the disputed domain names. As BBVA is a well-known trademark worldwide, Internet users may wrongfully assume that both disputed domain names belong to the Complainant. Given such bad faith registration, the Respondent’s use of these confusingly similar disputed domain names to redirect Internet traffic to the Complaints portal websites cannot be relied on to establish rights or legitimate interests under paragraph 4(c)(i).

Further, the disputed domain names are intentional mistyping of the Complainant’s BBVA mark, and have been used to divert Internet traffic seeking the Complainant’s website in order to generate traffic. The Respondent has intentionally attempted to attract for gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. Therefore, the Respondent registered and has used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.

B. Respondent

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

6. Discussions and Findings.

The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyProtect.org /Purple, Purple Bucquet, WIPO Case No. D2010-1688. “The Panel considers that the Respondent, by registering the disputed domain name[s] 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 [the disputed] domain name[s] nor the manner in which it may intend to use such domain name[s] 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 [disputed] domain name[s] 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; t hat 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[s] 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[s]; and (iii) that the disputed domain name[s] ha[ve] been registered and [are] being used in bad faith.”

A. Identical or Confusingly Similar

The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyProtect.org /Purple, Purple Bucquet, WIPO Case No. D2010-1688. “This Panel finds that the disputed domain name[s <bbvapanamaa.com> and <bbvapanamas.com> are confusingly similar] to the Complainant’s widely known [BBVA] trademark. The Panel notes that the Complainant’s trademarks were registered significantly earlier than the date of registration of the disputed domain name[s]. In addition, the disputed domain name[s] wholly comprise the Complainant’s [BBVA] trademark.”

The addition of the word “panamaa” and “panamas” grants no distinguishing attributes to the disputed domain names, since the dominant and distinctive component of the disputed domain names is “bbva”, which is identical to the Complainant’s BBVA trademark and the addition of the generic geographical indicator, “panama” or the misspelled “panamaa” and “panamas” do not make the dominant and distinctive element “bbva” less distinctive; and the ending “.com” is a generic Top- Level Domain (“gTLD”) that is not sufficient to render a domain name dissimilar or to prevent consumer confusion. See Ticketmaster Corporation v. IM Panama, Donna Hawley, WIPO Case No. D2008-0577 (<ticketmasterpanama.com>)

Consequently, this Panel considers that the first element of the Policy has been evidenced.

B. Rights or Legitimate Interests

The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyProtect.org /Purple, Purple Bucquet, WIPO Case No. D2010-1688. “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] trademark nor with the disputed domain name[s]; that the disputed domain names [are] 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[s] 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[s] 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[s], 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[s] under paragraph 4(a)(ii) of the Policy.”

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy establishes circumstances that, without limitation, constitute evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(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 Panel notes and agrees with the points that have been made by the panel in the earlier decision of Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717. “Based on the evidence submitted by [the] Complainant, this Panel has found that [the] Respondent had or should have had knowledge of the existence of [the] Complainant’s business and trademark […]. Additionally, the Panel has found that the Respondent has not used or made demonstrable preparations to use the disputed domain name[s] in connection with a bona fide offering of goods or services, that [the] Respondent has not been known by the [disputed domain names <bbvapanamaa.com> and <bbvapanamas.com>] and therefore that [the] Respondent has no rights or legitimate interests the [disputed] domain name[s].

[The] Respondent registered domain name[s] that fully incorporate [the] Complainant’s registered trademark. Considering that it is undisputed that such trademark is distinctive […], it is difficult to infer that [the] Respondent’s act of registration was a mere coincidence or a result of good faith.”

The disputed domain names redirect to a website that: i) in the banner displays the following: http://www.bbvapanama.com/kqpa/esp/home/index.jsp (exactly the same address as in WIPO Case D2013-0365) which clearly makes reference to the BBVA mark of the Complainant and appears to be a website that relates to the country of Panama; and ii) that appears to be a website of the Complaint since it copies and uses its trade dress. These are the institutional colors and fonts and the Complainant.

The Panel notes and agrees with the points that have been made by the panel in the earlier decision of Banco Bilbao Vizcaya Argentaria, S.A. v. PrivacyProtect.org /Purple, Purple Bucquet, WIPO Case No. D2010-1688. “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[s] 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], as to the source, sponsorship, affiliation or endorsement of the web site[s] [“www.bbvapanamaa.com’’ and “www.bbvapanamas.com’’], and therefore has made a bad faith use of the disputed domain name[s].”

Based on the foregoing analysis, the Panel concludes that the Complainant has provided sufficiently evidence that the Respondent registered and uses the disputed domain names in bad faith.

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 names <bbvapanamaa.com> and <bbvapanamas.com> be transferred to the Complainant.

Enrique Ochoa
Sole Panelist
Date: April 21, 2013