WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Davivienda S.A. v. Pavol Icik
Case No. D2014-1926
1. The Parties
The Complainant is Banco Davivienda S.A. of Bogotá, Colombia, represented by Posse Herrera Ruiz, Colombia.
The Respondent is Pavol Icik1 of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <wwwdavivienda.com> (the "Domain Name") is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.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 Domain Name. On November 4, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 10, 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 above email communication and a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 15, 2014.
On November 10, 2014, the Center notified the Parties in both English and Slovak that the language of the Registration Agreement for the Domain Name was Slovak. On November 15, 2014, the Complainant submitted a request for English to be the language of the proceeding, to which the Respondent has not replied.
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 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2014.
The Center appointed Olga Zalomiy as the sole panelist in this matter on December 29, 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 Complainant is a bank in Colombia that owns numerous trademark registrations in the DAVIVIENDA mark.
The Complainant owns and operates the domain name <davivienda.com>, which resolves to a website that offers banking services.
The registrant of record for the Domain Name, as disclosed by the Registrar, is Pavol Icik. Pavol Icik registered the Domain Name through Chen Xiaojie, a privacy protection service on or around August 1, 2005.
The Domain Name consists of a prefix "www", the word "davivienda" and the generic Top-Level Domain ("gTLD") ".com". The Domain Name resolves to a pay-per-click website that displays various advertising for financial services.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name <wwwdavivienda.com> is confusingly similar to its DAVIVIENDA trademark. The Complainant argues that "www" and ".com" are commonly used designations for domain names, which should be excluded from comparison.
The Complainant claims that the Respondent has no rights or legitimate interests concerning the Domain Name because the Respondent failed to respond to the Complainant's cease and desist letters and used a privacy service to hide his identity. The Complainant further argues that because the Respondent is from Slovakia, he cannot have rights or legitimate interests in a domain name that has a meaning in Spanish and not in Slovak. Further, the Complainant alleges that the Respondent is not using the Domain Name in a way that may confer rights or legitimate interests because he is not known as a provider of financial services.
The Complainant also claims that the Respondent registered and is using the Domain Name in bad faith because he registered and is using the Domain Name to attract Internet users to his website by creating confusion with the Complainant's website and mark. The Complainant argues that the Domain Name that was registered in 2005 is virtually identical to the Complainant's domain name <davivienda.com> that was registered in 1996 and that has been used for the Complainant's financial services. The Complainant also points out that the advertising links displayed on the website to which the Domain Name resolves, advertise financial services, which exacerbates the confusion.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
The Respondent's default does not automatically result in a decision in favor of the Complainant. However, the Respondent's failure to file a Response may cause in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences flowing from the Complaint as true. See, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
6. Discussion and Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
On November 10, 2014, the Center notified the Respondent in both English and Slovak that the Complaint was submitted in English, that the language of the registration agreement for the Domain Name was Slovak, and provided the Complainant with either an opportunity to translate the Complaint or to submit a request for English to be the language of the proceeding. The Respondent was given time for any submissions or comments regarding the language of the proceeding. In response, the Complainant requested that the language of the proceeding would be English. The Respondent chose not to respond.
It is a consensus among UDRP panelists that the Panel's discretion to choose the language of the proceeding must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. The Panel finds that English is a fair choice for the language of the proceeding under the circumstances of this case.
First, it is likely that the Respondent understands English because the content of the website associated with the Domain Name is in English.
Second, the Respondent has been involved in at least seven UDRP cases where English was the language of the administrative proceedings: Clarins v. Chen Xiaojie / Pavol Icik, WIPO Case No. D2014-0284; Dillard's. Inc. v. Pavol Icik, WIPO Case No. D2013-1013; La Fee v. Pavol Icik / Privacy Protect, WIPO Case No. D2013 0526; Alliance Pharmaceuticals Limited v. Pavol Icik / Chen Xiaojie, Privacy Protection Service, WIPO Case No. D2014-1669; ICICI Prudential Life Insurance Corporation Limited v. Privacy protect / Pavol Icik, WIPO Case No. D2012-2521; OSRAM GmbH v. wwwosram.com / Privacy Protection Service / Pavol Icik, WIPO Case No. D2013-1571; Philip Morris USA Inc. v. Pavol Icik, Poste restante / Chen Xiaojie, Privacy Protection Service, WIPO Case No. D2014-1295; Delta Dental Plans Association v. ICS INC. aka ORM Ltd./Balticsea LLC/Contact Privacy Inc.; Registrant [4459713]: Taranga Services Pty Ltd/Moniker Privacy Services; ICS INC./Private Registrations Aktien Gesellschaft/Privacy Protection Service INC d/b/a PrivacyProtect.org; ICS INC./GEORGE WASHERE/WHOIS PRIVACY PROTECTION SERVICE, INC.; Diamond Point Enterprises Limited/Whois Privacy Services Pty Ltd; Transure Enterprise Ltd/Above.com Domain Privacy; Online Management/Domains By Proxy, LLC; Ryan G Foo, PPA Media Services/Fundacion Private Whois; Pham Dinh Nhut/Vietnam Domain Privacy Services; Pavol Icik, Poste Restante/Dragan Platic, Poste restante/Privacy Protection Service, WIPO Case No. D2014-0474.
Third, the Respondent did not object to the Complainant's request for the proceeding to be conducted in English despite the opportunity. Finally, the Complainant will be unfairly disadvantaged by being forced to translate the Complaint into Slovak, especially because there has been no demonstrated need for such a translation.
The Panel, therefore, accepts the Complaint in the English language and determines that English should be language of this proceeding.
6.2. General Discussion
In this UDRP proceeding, the Complainant bears the burden of proof, by a preponderance of the evidence2 , to demonstrate each of the following UDRP elements3 :
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy the first UDRP element, a domain name must be "identical or confusingly similar" to a trademark, in which a complainant has rights. The Complainant demonstrated its rights in the DAVIVIENDA mark by submission of copies of multiple trademark registrations for the mark DAVIVIENDA.4
The test for confusing similarity should be a comparison between the mark and the domain name.5 The Domain Name consists of the prefix "www", the word "davivienda" and the gTLD ".com". The Panel finds it confusingly similar to the Complainant's trademark because the Complainant's trademark that constitutes the dominant part of the Domain Name is incorporated in its entirety.6 The addition of merely generic or descriptive wording to a complainant's trademark, like the prefix "www", where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.7 It is also well established that adding the gTLD ".com" or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Name is confusingly similar to the trademark DAVIVIENDA in which the Complainant has rights.
B. Rights or Legitimate Interests
To satisfy the second UDRP element, the Complainant must make out a prima facie9 case showing that the Respondent has no rights or legitimate interests in the Domain Name.10
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because of the following:
- the Respondent failed to respond to the Complainant's cease and desist letters;
- the Respondent used a privacy service to hide its identity;
- the word "davivienda" is a Spanish word that has no meaning in Slovak11 ;
- the Respondent is not known as a provider of financial services and did not use the Domain Name in a way that would allow to prevent confusion with the Complainant's clients.
It is a consensus view of UDRP panelists that the general "standard of proof under the UDRP is 'on balance' - often expressed as the 'balance of probabilities' or 'preponderance of the evidence' standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient."12
Using the balance of probabilities test, the Panel finds that the Respondent's failure to respond to the Complainant's cease and desist letters is unlikely an indication of lack of rights or legitimate interests in the Domain Name. In the Complaint, the Complainant claims to own trademark rights in the DAVIVIENDA marks since at least 1997, however, its letters to the Respondent solely refer to DAVIVIENDA trademark registrations dated from 2009 to 2013 (and even 2016). Because it is undisputed that the Respondent registered the Domain Name four years prior to any of the Complainant's trademark registrations referenced in the Complainant's letters, the Respondent's failure to respond to the Complainant's letters is not indicative of a lack of rights or legitimate interests in the Domain Name.
Similarly, the Respondent's use of a privacy registration service by itself is unlikely an indication of the Respondent's lack of rights or legitimate interests in the Domain Name because the WhoIs records show that the Complainant also used a privacy registration service to register the <davivienda.com> domain name, which the Complainant claims to own.
Nevertheless, the Panel finds that it is more likely than not that the Respondent lacks rights or legitimate interests in the Domain Name for three reasons. It is unlikely that the Respondent Pavol Icik has been commonly known by the Domain name. Nor is it likely that the Respondent made any legitimate noncommercial use of the Domain Name. The evidence in the available record shows that the Respondent used the Domain Name to refer to a pay-per-click website offering a variety of services such as: debit cards, business accounts and hedge funds, which are competitive with the Complainant's banking services. It is well established that "use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' […] or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder."13 Finally, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Instead, it appears that the Respondent attempted to trade on the Complainant's goodwill by offering services similar to the Complainant's services. Therefore, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name.
It is a consensus view of UDRP panelists that "[o]nce [a] 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." 14 Because the Respondent has failed to satisfy its burden of production, the Panel finds that the Complainant has satisfied the second UDRP element.
C. Registered and Used in Bad Faith
To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith.15
The Panel finds that it is more likely than not that the Respondent attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark for the purpose of financial gain, which is considered evidence of bad faith registration and use of a domain name under paragraph 4(b) of the UDRP. The Complainant asserts that it has been using the website "www.davivienda.com" to offer its financial services to the public since 1996. While use of Wayback Machine at "www.archive.org" shows that the Complainant's website was only used for banking services since 2000, such use predates the Respondent's 2005 registration of the Domain Name. In addition, the Complainant has owned trademark rights in the DAVIVIENDA mark at least since 1997, i.e. eight years prior to the date when the Respondent registered the Domain Name. It is, therefore, not unreasonable to assume that the Respondent knew about the Complainant's services when he registered the Domain Name. In these circumstances, and given the current use of the Domain Name for no purpose other than a pay-per-click16 website to redirect users to financial services websites, the Panel readily accepts the evidence and arguments of the Complainant as showing that the Domain Name was registered and is being used in bad faith.
Moreover, the Respondent has engaged in a pattern of registering domain names that bear striking resemblance to third-party marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the UDRP.17 See Section 6.1., infra.
The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP.
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 <wwwdavivienda.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: January 9, 2015
1 The Complaint was originally filed against Chen Xiaojie. The Registrar has confirmed that the registered owner of the Domain Name is Pavol Icik. Accordingly, the Panel will treat Pavol Icik as the sole Respondent.
2 Paragraph 4.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")
3 Paragraph 4(a) of the Policy.
4 Under Paragraph 1.1 of the WIPO Overview 2.0, "[i]f the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights."
5 Paragraph 1.2 of the WIPO Overview 2.0.
6 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
7 See, paragraph 1.9 of the WIPO Overview 2.0.
8 See, paragraph 1.2 of the WIPO Overview 2.0.
9 See, paragraph 2.1 of the WIPO Overview 2.0.
10 Paragraph 4(a)(ii) of the UDRP.
11 The Panel gives no weight to this argument because in its applications for registration of the DAVIVIENDA marks with the United States Patent and Trademark Office (USPTO), the Complainant asserted that the word "davivienda" has no meaning in Spanish.
12 Paragraph 4.7. of the WIPO Overview 2.0.
13 Paragraph 2.6. of the WIPO Overview 2.0.
14 Paragraph 2.1. of the WIPO Overview 2.0.
15 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
16 UDRP panels have found "that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an 'automatically' generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks." Paragraph 3.8 of the WIPO Overview 2.0.