WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Santander Central Hispano S.A. v. Taiwan Motorbikes Netherland BV Panamá
Case No. D2002-0192
1. The Parties
Complainant is Banco Santander Central Hispano S.A., Paseo de Pereda, 9-12, Santander, Spain.
Respondent is Taiwan Motorbikes Netherland BV Panamá, Catalunya nr 5a 6 floor, Palma de Mallorca, Baleares 07011, Spain.
2. The Domain Name and Registrar
The Domain Names at issue are <santandercentralhispano.net> and <santandercentralhispano.org> hereinafter referred to also as the "Domain Names".
The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) on February 27, 2002 (by email), and on March 5, 2002 (hardcopy and exhibits). The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), 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). Complainant made the required payment to the Center.
On March 6, 2002, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On March 11, 2002, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Taiwan Motorbikes Netherland BV Panamá and that the Domain Name registrations are in "active" status.
Having verified that the Complaint satisfied all the formal requirements of the Policy and the Rules, the Center transmitted on March 13, 2002, to Taiwan Motorbikes Netherland BV Panamá at the address originally indicated in the whois, the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email (without enclosures), indicating April 2, 2002, as the deadline to file the response.
On April 2, 2002, the Respondent filed a comprehensive request for a sixty days extension on such a deadline. The Center, after having consulted the Complainant –who, in an exhaustive letter dated April 5, 2002, did not agree to the extension, indicated that Sunday April 14, 2002, would be the final deadline for the Respondent to file the Response.
The Respondent filed the response on April 14, 2002, via email, as duly acknowledged by the Center on April 15, 2002.
The Complainant elected to have the Complaint decided by a single Panelist while the Respondent elected a three-person panel. Both parties have paid the fees due to the WIPO Center.
The process of appointing the three member Panel, which required a long time due to the lengthy submission by the Respondent on the possible impartiality of some of the candidates indicated by the Complainant, ended on June 7, 2002, with the appointment of Mr. Luca Barbero, Italy, as the President of the Panel and Mr. Gervaise Davis III, United States of America, and Mr. Mario Sol Muntañola, Spain as Panelists. All the Panelists have duly submitted the statement of acceptance and the requested declaration of impartiality and independence. On June 7, 2002, the Complainant and the Respondent were notified of the final appointment of the current Panel.
The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On June 20, 2002, the Panel issued a Procedural Order, deciding that pursuant to Article 11(a) of the UDRP rules and in light of the language of the registration agreement, the language of the instant administrative proceeding should have been English. The Complaint was originally filed in Spanish while the Respondent had filed documents both in English and in Spanish. The Center had, since the very early stages of the Procedure, accepted these documents but had rightly indicated to the parties that it would have to be up to the Panel, once appointed, to decide the language of the procedure. By the Procedural order the parties were, therefore, requested to provide the Center with a certified English translation of the documents as filed. The Panel did not require the translation in English of the Annexes to the Complaint and Response, filed in Spanish and indicated that any new document or statement filed together with the translations requested after the deadline indicated by the Center would not be considered. July 8, 2002, was the deadline indicated by the Panel to file the translations.
Since the Complainant requested a clarification on some aspects of the Procedural Order 1 and the Responded filed a request for a further extension of the procedure, a second Procedural Order was issued on June 25, 2002, stating that all the translations to be submitted to the Center by the Complainant and the Respondent pursuant to the Procedural Order 1, must be certified by a sworn declaration of a Professional Translator attesting that these are a true and exact translation in English of the documents as submitted in Spanish to the Center.
It was also indicated that only the documents filed within the deadlines allowed by the Center to the parties in the instant procedure could be translated in English and submitted to the Panel. Therefore, only the documents filed on or before April 14, 2002, the final deadline allowed by the Center to the Respondent to submit the Response, should have been translated in English pursuant to Procedural Order 1 and the Panel would not consider any new statement or rewording of the filings already made. It was then confirmed that all the Panelists have a sufficient command of Spanish to examine and fully understand all the Annexes to the Complaint and Response and therefore no translation would be required
The Panel then confirmed the final deadline indicated in the Procedural Order 1 to file all the aforesaid documents was July 8, 2002.
Pursuant to article 10 (d) of the Rules stating that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence, the appointed Panel have decided to consider all the documents submitted to the Center in the present case according to the above Procedural Orders. The Panel has indicated as a projected date for the decision August 9, 2002, which was subsequently extended for good cause to August 20, 2002.
4. Factual Background
The Complainant, was originally established as Banco Santander S.A. on January 14, 1857. On April 13, 1999, Banco Santander, S.A. and Banco Central Hispanoamericano, S.A. merged by the take over of the former by the latter, with the name of the company doing the take over, Banco Santander S.A. being changed to that of "Banco Santander Central Hispano, S.A." with a deed entered in the Mercantile Registry of Cantabria on April 17, 1999.
The Complaint is based upon, inter alia, the following Spanish trademark registrations:
SANTANDER CENTRAL HISPANO n. 2209245 filed on January 22, 1999, and registered on June 21, 1999, in class 1
SANTANDER CENTRAL HISPANO n. 2209246 filed on January 22, 1999, and registered on June 21, 1999, in class 6
SANTANDER CENTRAL HISPANO n. 2209247 filed on January 22, 1999, and registered on June 21, 1999, in class 3
SANTANDER CENTRAL HISPANO n. 2209248 filed on January 22, 1999, and registered on June 21, 1999, in class 4
SANTANDER CENTRAL HISPANO n. 2209249 filed on January 22, 1999, and registered on June 21, 1999, in class 5
SANTANDER CENTRAL HISPANO n. 2209250 filed on January 22, 1999, and registered on June 21, 1999, in class 6
SANTANDER CENTRAL HISPANO n. 2209251 filed on January 22, 1999, and registered on June 21, 1999, in class 7
SANTANDER CENTRAL HISPANO n. 2209278 filed on January 22, 1999, and registered on July 5, 1999, in class 37
SANTANDER CENTRAL HISPANO n. 2209279 filed on January 22, 1999, and registered on July 5, 1999, in class 39
SANTANDER CENTRAL HISPANO n. 2209280 filed on January 22, 1999, and registered on July 5, 1999, in class 40
SANTANDER CENTRAL HISPANO n. 2209281 filed on January 22, 1999, and registered on July 5, 1999, in class 41
SANTANDER CENTRAL HISPANO n. 2209282 filed on January 22, 1999, and registered on July 5, 1999, in class 42
SANTANDER CENTRAL HISPANO n. 220928 filed on January 22, 1999, and registered on July 5, 1999, in class 40.
The Complainant has also enclosed copy of the certificate of the Spanish registration of the above trademark SANTANDER CENTRAL HISPANO in all the other classes, but for the classes 35 36 and 38 (as in the documents produced the date of registration was still missing).
The Complainant has also produced a copy of the certificate of registration of the community trademark 001048651 SANTANDER CENTRAL HISPANO of March 22, 2000, in classes 16, 35, 36 and 38.
The Domain names <santandercentralhispano.net> and <santandercentralhispano.org> were registered on August 19, 2001. According to Network Solutions, Inc.'s Verification Response, the registrant of <santandercentralhispano.net> and <santandercentralhispano.org> is Taiwan Motorbikes Netherland BV Panama, Catalunya nr. 5a 6 floor, Palma Mallorca, Baleares 07011.
5. Parties’ Contentions
The Complainant is the largest financial group in Spain and it is the leader in volume with respect to shareholders’ equity, assets, earnings and stock market capitalization. In the Complaint it is indicated that the Santander Central Hispano Group, backed by Spanish largest branch network (5,518 branches), has consolidated its domestic market leadership position in the most important areas of financial business, reaching leading positions in terms of market share in loans and deposits.
Furthermore, the presence of Banco Santander Central Hispano extends throughout all major countries and financial centers. Among others, it has a prominent position in London, Paris, Frankfurt, New York and Miami, generating important financial flows in all of the aforementioned centers. With respect to retail banking abroad, this area embraces the commercial banking activities developed by the Group in Europe (Germany, Belgium, Italy and Portugal) and Latin America (Argentina, Bolivia, Brazil, Colombia, Chile, Mexico, Panama, Paraguay, Peru, Puerto Rico, Uruguay and Venezuela). At the end of 2001, the area had a network of 5,076 branches and 75,857 employees. The bank is also firmly established in Europe through affiliate banks.
The Complainant informs the Panel that on January 22, 1999, the year in which the Banco Santander Central Hispano name was first used, applications was made to the Spanish Industrial Property Register for the trademarks BANCO SANTANDER CENTRAL HISPANO in the 42 classes and the trademark SANTANDER CENTRAL HISPANO (and have provided copies of the applications/registrations in Spain). Since then, both trademarks have been used continually in numerous advertising campaigns for products and services of the Bank and also in daily references in the press and in sponsoring cultural events. The Complainant concludes that the result is that the SANTANDER CENTRAL HISPANO trademark is, without doubt, extremely well known in the Spanish and international financial markets.
The Complainant has also provided a comprehensive list of countries, besides Spain and European Union mentioned above, where applications or registrations for the trademark SANTANDER CENTRAL HISPANO are pending or completed (without enclosing copies of the certificates).
The Complainant is also the holder of <santander-centralhispano.com> <santander-centralhispano.org>, <santander-centralhispano.net> <santandercentral-hispano.com> <santandercentral-hispano.org>, <santandercentral-hispano.net>, <santander-central-hispano.com> <santander-central-hispano.org>, <santander-central-hispano.net> and <santandercentralhispano.es>.
Pursuant to the WIPO Case No. D2001-1180, the domain name <santandercentralhispano.com> was also transferred to the Complainant. A copy of the decision was annexed for ease of reference by the Panel.
As to the issue of identity or similarity of the domain name and the trademark, the Complainant states that the Domain Names <santandercentralhispano.org>and <santandercentralhispano.net> are absolutely identical – to the point of creating confusion – to the trademark "SANTANDER CENTRAL HISPANO". Furthermore, they are very similar, coinciding letter by letter (except for the word "banco") to the trademark BANCO SANTANDER CENTRAL HISPANO.
The Complainant then states that leaving the Domain Name in the hands of third parties who have no relationship with or authorization from the bank, will lead to confusion among consumers. Reference is also made to article 30 of the Spanish trademark act on the issue of confusion.
As to the issue of legitimate rights, the Complainant states that "the Respondent has no legitimate right or interest with respect to the Domain Names in question. Also, given the fact that the trademarks ‘Santander Central Hispano’ and ‘Banco Santander Central Hispano’ are so well-known, among other things, it is difficult to believe that the choice and registration of these marks is due to an involuntary and accidental act, since these are not new words or fantasy terms, nor do they coincide with the name of the registering party or with any of its previous distinguishing signs. Complainant argues that the holder of the Domain Names has no rights of any type because it has no authorization or permission from the legitimate holder of the conflicting trademark.
It is also stated in the Complaint that "since the Respondent holding the Domain Names has no right over the trademarks mentioned by us, or any other similar trademarks, and since it cannot protect itself under any pre-existing law, it must be concluded that it lacks any interest other than the non-legitimate and abusive interest in deliberately taking advantage of the trademarks belonging to Banco Santander Central Hispano, to the serious detriment of the latter."
Then the Complainant highlights the present non-use of the Domain Names for six months, underlining that non-use was considered "use in bad faith" in numerous WIPO decisions. The Complainant alleges that it would, therefore, constantly be under the threat that the final intent and true motivation of the holder is the appropriation and use of the Domain Names in order to subsequently sell them for a considerable amount to the owner or to third parties or simply to leave them without any use. The Complainant concludes that all such acts would be contrary to Law.
Then the Complainant analyses the issues mentioned in paragraph 4(c) of the Policy indicating that as to the prior use or preparation to use, over six months have elapsed from registration and the Domain Names still point at an "under construction" web site.
It is then stated that "it is unthinkable that the domain holder would have been known beforehand by the name "santandercentralhispano," as it refers to services which are provided by an institution which is extremely well-known at both the domestic and international level".
With reference to the legitimate use, the Complainant affirms that the domain holder is not making legitimate or fair use since, to the date of drafting of the Complaint, no use was made of the domain name. The Complainant then states "… It can therefore be deduced that the sole intention of the domain name holder in making the registration, if not attempting to obtain commercial gain, was at least that of preventing the legitimate holder of the trademark from exercising its activity on the Net".
With reference to the issue of bad faith, reference is made to the prior WIPO Cases Nos. D2000-0018 and D2000-0239. Quoting from the decision in WIPO Case No. D2000-0003 the Complainant states that "in accordance with what is established in this and many other resolutions of the WIPO, it can be affirmed that a registration in bad faith implies use in bad faith. In this particular case, the aspirations of Banco Santander Central Hispano are fully justified as the owner of the trademarks already mentioned, since it is suffering the consequences of the registration of an identical domain name, with the exclusive aim of depriving its presence on the Net".
Complainant argues that the registration of the Domain Names <santandercentralhispano.org> and <santandercentralhispano.net> was carried out in spite of the fact that it is public knowledge and a well-known fact that this is a registered trademark, and therefore with full awareness that it was an invasion of the trademark rights of Banco Santander Central Hispano, S.A.
According to the Complainant the action taken by the Respondent damages the interests of the Bank, since the registration of the disputed domains prevents it from establishing itself with its name in the sites corresponding to it on the Net. Therefore, it makes it impossible for it to use the domain for its own services and activities, creating confusion among users. Furthermore, the Complainant asserts that "it is probable that the registrant intends to take advantage of the advertising strength of the Domain Names in order to attract users to its web page in the future [the web page is not developed at present]".
The Complainant quotes the paragraph 4(b)(ii) of the UDRP (registration of the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, "provided that you have engaged in a pattern of such conduct") and alleges that "in this sense the Respondent, for no reason we can think of, has registered the domains, leading us to believe that its sole intention when registering the aforementioned Domain Names was to prevent the actual presence of Banco Santander Central Hispano on the Net. Every aspect of the Respondent’s behavior is objectively contrary to good faith, leading to the confusion of the consumer and the exploitation of the reputation of another, with obvious violation of the rights granted to Banco Santander Central Hispano by international and domestic ruling on Intellectual Property and Competition. To sum up, the registration of the domains by the Respondent prevent the holder of the aforementioned trademarks of products or services (Banco Santander Central Hispano, S.A.) from reflecting them in its respective Domain Names, and regardless of the objectives leading to registration and being a competitor or otherwise, what is certain is that the registration of the Domain Names disrupts the Bank’s commercial activity".
The Complainant then makes reference to other applicable laws (such as International Law and Spanish Legislation) and issues like fraudulent conduct and practices of unfair competition, inviting the Panel to consider, also, those principles since the bad faith circumstances indicated in the UDPR do not constitute an exclusive list.
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests the Panel to order that the domains <santandercentralhispano.org> and <santandercentralhispano.net> be transferred to the Complainant.
The Respondent is Taiwan Motorbikes Netherland B.V. Panama, S.A., and is the registered owner of the Domain Names. Taiwan Motorbikes Netherland B.V. Panama, S.A. is the head office in Latin America of TAIWAN MOTORBIKES, having factories in Taiwan and in Jeddah (Saudi Arabia), dedicated to the production of motorcycles, cycle motors and motorized tricycles and quadricycles, portable and folding micro scooters or cycle motors for sporting vessels. Taiwan Motorbikes Netherland B.V. Panama S.A. is a result of the participation of the main office in Taiwan and Taiwan Motorbikes Netherland B.V., a Dutch branch office for the trading and distribution in Europe. The group is present in Asia (Taiwan, China and Thailand), in Latin America and the Caribbean (in Panama, Nicaragua, Ecuador, Costa Rica and Jamaica and distributing from Jamaica to St. Kitts and Nevis, Bermuda, Barbados, Grenadines, Trinidad and Tobago, Cayman, Aruba and Grenade), in Middle East, in Saudi Arabia (Jeddah) and the Arab Emirates (Dubai and Abu Dhabi). The production of the second factory in Jeddah is distributed in India. In India representation exists in Bombay and New Delhi. There is also presence in Maldives. In Europe it has representation in Holland, England, Greece and currently it is opening a representation office in Spain.
The "star product" of the company is the portable and folding motorcycles, auxiliary vehicle of the sporting vessels (yachts to sailing boats and motor boats), of which Taiwan Motorbikes is the second largest world manufacturer. In result, its establishment in areas such as the Caribbean Islands and Spain, the island of Majorca, where different ports and marinas shelter 20,000 yachts.
Taiwan Motorbikes Netherland B.V. Panama S.A., owns the Panamanian company "Talleres Santander-Central Hispano Latina de Vehículos Motorizados y Eléctricos" using the name "Consorcio Santander" as the Latin marks of the company in the countries of Latin America, except Panama, since it has been demonstrated that in Latin countries, less Americanized than Panama, the name Taiwan Motorbikes is neither well understood nor accepted.
Both Taiwan Motorbikes Netherland B.V. Panama S.A. and "Talleres Santander-Central Hispano Latina de Vehículos Motorizados y Electricos" are companies organized in Panama and of Panamanian nationality and residence.
The Respondent states that, by error at the time of registration of the Domain Names, the address of the new establishment to be opened in Spain, was used instead of the address of Panama. The Respondent highlights that whoever reported the mentioned address was not a Spanish speaking person, as he wrote "Catalunya nr. 5a 6 floor", quoting erroneously "nr." like the abbreviation of "number" and "5a" instead of 5-A, following the Spanish custom to numerate with letters. In addition, both the addresses are in the Spanish language and both begin with the letters PA and perhaps these circumstances caused this error.
The Respondent states, however, that the registration data indicated in the register of Network Solutions are different with respect to the WHOIS, where a Panamanian registrant appears, with Panamanian name, domicile, telephones and contact persons. The Respondent has therefore requested a certification to Network Solutions to accredit that the registration of the domain name was registered correctly and under a Panamanian company.
The Respondent claims then to have requested – and be ready to provide – a negative certification of registration of the branch in the Spanish registrar of companies, a negative certification of the Spanish tax governmental Agency or Office, which indicates that no commercial activity exists, and a negative certification regarding the registration of employees in charge of the company and social security of the same, except one delegate, future agent of the organization, which status is still in process (and who is in contact with real estate agency, personnel selection companies, etc.).
According to the Respondent, the Complainant claims the ownership of two territorial marks, which however does not give it exclusive rights over every other territory, without showing evidence of other registered or applied trademarks in the countries of the geographical areas of the Respondent or in other continents (Asia and Africa). In support of this argument, the Respondent refers to a previous decision in WIPO Case No. D2001-0118, related to the domain <santandercentralhispano.com> where the Panel highlighted that "the title of ownership of the international trademarks that he invokes has not been accredited".
The Respondent then discusses the identity/confusingly similarity of the Complainant’s trademarks and the Domain Names. The Complainant’s trademarks are "Banco Santander Central Hispano" and "Santander Central Hispano".
According to the Respondent, the Complainant’s trademark "Banco Santander Central Hispano" cannot be considered confusingly similar to the Domain Names, as in a number of Countries the use of the word "bank" and its variations is protected and reserved to banking entities. As the activity of the Respondent is completely different and not related to the banking field, there cannot be any conflict.
As to the designation "Santander Central Hispano", the Respondent states that it is not notorious, not even well known, neither in the geographical area of the Respondent, nor is it widely known in Europe, nor even Spain, since at the time of the fusion of the banks that gave place to the new denomination in discussion, the denomination adopted and announced before the press and which was maintained during two years was BANCO SANTANDER CENTRAL HISPANO. The denomination SANTANDER CENTRAL HISPANO does not officially appear in Spain until the month of March of 2002; until this date, said denomination was unknown in the rest of Europe and the world, even though it is known as "BANCO SANTANDER".
As to the notoriety of the trademark, the Respondent states that the introduction of the Complainant, in Latin America has not yet occurred, nor does it exist, under the trademark Santander Central Hispano, nor even under the trademark "Banco Santander Central Hispano" which also does not exist, as such, in Latin America. The Respondent supports its assertions with the following facts:
- The denomination Banco Santander Central Hispano is an entity of recent existence (merely three years), resulting from the merger of the previous "Banco Santander" and "Banco Central Hispano".
- Its introduction in the geographic area comes from the network of the Banco de Santander, a very active bank in Latin America. Also the Banco Central Hispano had presence in Latin America, likewise Santander, through the participations in local banks of said region. The Respondent emphasizes that the actual mega bank resulting from the merger of the aforementioned banks in any case only has a minority interest in the banking entities of Latin America.
- In determined cases, the original "Banco de Santander" was introduced in some Latin American countries under its own banking trademark, much before the merger with the Central Hispano.
In all Central America, the Bank does not have any commercial network of offices, neither its own, nor through any of the banks participating in said zone or geographical area, under any mark. In Panama, the Respondent’s domicile, the Bank does not have any commercial network of offices and therefore it is not known, neither in Costa Rica, Nicaragua, Ecuador or Jamaica, all places where Taiwan Motorbikes Netherland B.V. Panama, S.A. and Talleres Santander Central Hispano Latina de Vehiculos Motorizados y Electricos, operates its commercial network. Among the others, in Argentina, the claimant acquired a majority participation in the Banco Rio de la Plata and operates in said country, but only under said name: in the site home page of Banco Rio de la Plata, "www.bancorio.com.ar", no reference is made regarding its owner, the Banco Santander. Thus, it does not appear in Argentina the mark "Banco Santander Central Hispano" nor "Santander Central Hispano" are in use, nor has it been demonstrated that the bank operates in said country, likewise in other countries of South America, under different trademarks that of the main office or by means of participations in local banks, also of different names. In Brazil, the Banco Santander (and not Banco Santander Central Hispano) has a representation office. In Chile, the bank operates under the trademark "Banco Santander Chile" and through the "Banco of Santiago," which was one of the participating banks by the former "Banco Central Hispano".
Therefore, the Respondent concludes that neither Santander Hispano nor Banco Santander Central Hispano are notorious marks, as they are not even known in Latin America where the Bank has its major new development, outside of Spain, while Latin America is the continent where the Respondent has its domicile and activity.
The Respondent argues against the "universal" character of the trademarks based on the fact that the Complainant cannot make a universal offer of its services, since its business names and conditions vary in each of the countries in which it is located. As a proof, the Respondent highlights that the Complainant did not even register the domain name <santandercentralhispano.com>, that was registered by a third party, and waited more than a year and a half to claim it, as evidenced in the previously mentioned decision in WIPO Case No. D2001-1180. The domain was transferred to Banco Santander Central Hispano on the date December 3, 2001, and at the time of writing the Response, it was still not yet used.
The Respondent claims a legitimate prior interest in the Domain Names on the basis of the company "Talleres Santander Central Hispano Latina de Vehiculos Motorizados y Electricos" incorporated in 1997, while the Complainant’s trademark was registered only in 1999.
In addition, the Respondent reports that the Complainant made two offers to purchase the domain "santandercentralhispano.net" from Respondent, through a broker. In both circumstances, the Respondent refused the offers and there is no evidence that any sum of money was requested in exchange for the domains.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of trademark registrations for SANTANDER CENTRAL HISPANO in Spain and the European Union.
The Panel carefully considered the issue of the generic and geographic nature of the trademark, as well as the level of the territorial extension of the registrations in the name of the Complainant. After some debate, the Panel concluded that for the purpose of the present procedure the only requirement is that the Complainant should possess rights in a mark, which is identical or confusingly similar to the disputed names.
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is identical to, obviously excluding the suffix ".com", the trademarks of the Complainant, according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel feels that it may be difficult if not impossible for the Complainant to prove the lack of rights or legitimate interests of the Respondent in many cases; this requirement should therefore be applied in a broad sense, allowing a certain inversion of the burden of proof.
In the Response, reference is made to a company fully owned by the Respondent with the name of "Talleres Santander-Central Hispano Latina de Vehículos Motorizados y Eléctricos". It is then argued that such a company is using the name "Consorcio Santander" as the Latin marks of the company in the countries of Latin America, except Panama, since it has been demonstrated that in Latin countries, less Americanized than Panama, the name Taiwan Motorbikes is neither well understood nor accepted.
The Panel observes that, according to the document enclosed to the Response, such a company would have been the result of joint venture between the Respondent and another company named Proman S.A. to be established according to the following "The parties agree and engage that upon the merger of both corporations, the surviving corporation shall amend its articles of incorporation in relation to the trade or firm name, in order that the trade or firm name be "TALLERES SANTANDER CENTRAL HISPANO LATINA DE VEHICULOS MOTORIZADOS Y ELECTRICOS, S.A.", trade or firm name which the parties shall jointly use in this Joint Adventure before third parties".
Despite the impressive amount of annexes enclosed to the Response, the Panel was not provided with any evidence of the actual existence of such a new company nor any convincing proof of the use of the name. In addition the Panel notes that the name adopted by the Respondent as a short version of such a long name is "Consorcio Santander" for the countries of Latin America. The Respondent has failed to provide the Panel with a convincing explanation as to the rationale of the choice of the Domain Names, instead of any other possible different combination of the words which could constitute the name of the company.
The Panel therefore, after some debate, finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances set forth in Paragraph 4(b) of the Policy, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the 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 your website or location or of a product or service on the holder’s website or location.
It is acknowledged that this is not an exhaustive list, but merely provides illustrations of what may amount to bad faith, should the Complainant meet its burden to provide convincing evidence.
In the Complaint, reference is made to the registration by the Respondent of the Domain Names aimed at preventing the owner from reflecting the mark in a corresponding domain name. It has to be noted, though, that this instance of bad faith is expressly linked in the Rules to the condition that the Respondent be engaged in a pattern of such conduct; since any registration of a domain name in a given top level domain is de facto preventing third parties to obtain the same registration in light of the technical characteristics of the Domain Name System. No evidence that the Respondent was engaged in such a pattern was produced in the Complaint, so this argument fails.
Furthermore, the Complainant was granted in the WIPO Case No. D2001-1180 the transfer of <santandarcentralhispano.com> (already linked to the same web site published under <santandarcentralhispano.es>) and is also the owner since September 2001 of <santander-centralhispano.com> <santander-centralhispano.org>, <santander-centralhispano.net> <santandercentral-hispano.com> <santandercentral-hispano.org>, <santandercentral-hispano.net>, <santander-central-hispano.com> <santander-central-hispano.org>, <santander-central-hispano.net> (all of them, to date, which do not point to any active web page).
Furthermore, the Respondent did not offer or agree to sell the domain name for valuable consideration to the Complainant and did not even respond to the, in fact, anonymous offer received for <santandercentralhispano.net>, as per copy of the correspondence annexed to the response. The Respondent is not presently using the domain name for commercial gain nor attempting to create a likelihood of confusion with Complainant’s trademark.
According to the Policy, the Complainant must provide evidence that the Domain Names were registered and used in bad faith. The Panel, after a thorough debate on the issue, finds that Complainant has not produced convincing evidence that establishes both aspects of this issue. The non use for six months by the Respondent could be considered an element of bad faith, but it has to be preceded by the bad faith registration as is that is presently required by the Policy.
The Panel finds that the Complainant has not met its burden of proof that the new name recently adopted (which may also be considered - at least in some areas of the world - rather generic) has become so well-known in Latin America as to lead the Respondent to register the Domain Names in bad faith. (This is particularly so in light of the detailed evidence produced by Respondent as to how the Bank operates around the world with many different names, which are not the same as the disputed Domain Names here.)
It should also be noted that apparently the Complainant has not made any approach to the Respondent seeking an explanation for the registrations or manifesting its claim based on its prior trademark rights that the Domain Names were registered and are being used in bad faith.
The Complainant simply observed that no third party would register the Domain Names unless to sell them or use them to confuse its customers, but the Panel finds that the Complainant is required under the present UDRP to produce, at least on this point, some convincing evidence beyond the mere assertion that this is a fact -- like proposals for sale, evidence of ownership of many other domains corresponding to trademarks, or at least some elements to show general bad faith conduct.
It is the Complainant that should bear the onus of proving that the domain name was registered and is being used in bad faith, and this is an essential aspect of the UDRP as presently drafted. It is acknowledged that in some cases it might be more fair if the rule were different and were to provide for instance for "or" instead of an "and" in the bad faith section of the Policy.
Nevertheless, should the Respondent start, in the future, to make a use of the web page corresponding to the Domain Names (e.g. by attempting to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the instant website), the Complainant might at that time provide convincing evidence of registration and use in bad faith, in which situation Complainant might have a better case. However, even in that situation, Complainant would have to show that the use being made of the Domain Names was actually likely to cause confusion. The argument of Respondent that the two companies are in such different lines of business could still prevail over Complainant’s position.
To deal with this future situation, the Panel expressly makes this decision without prejudice to the right of Complainant to raise these facts in the future, if they should exist, and a future Panel can examine the allegations at such date and reach its own conclusions. On the facts before this Panel, it cannot conclude that Respondent has been shown to have registered or used the Domain Names in bad faith.
The Panel decides (a) that the Domain Names <santandercentralhispano.net> and <santandercentralhispano.org> are identical to the trademark SANTANDER CENTRAL HISPANO and (b) that Respondent has no rights or legitimate interest in the Domain Name. However, the Panel concludes that Complainant has failed to prove (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies that the Domain Names <santandercentralhispano.net> and <santandercentralhispano.org> be transferred from Respondent to Complainant, without prejudice to the right of Complainant to refile its Complaint in the future should the facts change at a later date.
Gervaise Davis III
Mario Sol Muntañola
Dated: August 19, 2002