WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Davivienda S.A. v. Milen Radumilo
Case No. D2016-0912
1. The Parties
The Complainant is Banco Davivienda S.A. of Bogota, Colombia, represented by Posse Herrera Ruiz, Colombia.
The Respondent is Milen Radumilo of Bucharesti, Romania.
2. The Domain Name and Registrar
The disputed domain name <accionesdavivienda.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2016.
The Center appointed John Swinson as the sole panelist in this matter on June 22, 2016. 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 Banco Davivienda S.A. The Complainant is one of the largest banks in Colombia and was founded in 1972.
The Complainant owns a number of registered trade marks for DAVIVIENDA in various jurisdictions including Colombia and the United States, in both word and composite form, since at least 2012.
The Complainant also owns a number of domain names which incorporate the Trade Mark, including <davivienda.com>, at which its primary business website is hosted. The Complainant registered this domain name on November 2, 1996.
The Respondent is Milen Radumilo of Romania. The Respondent did not provide a response to the Complaint, so the Panel has little further information regarding the Respondent.
The Disputed Domain Name was registered on November 30, 2015. The website at the Disputed Domain Name contains pay-per-click (“PPC”) links, most of which are in Spanish, and which relate to the banking and finance industry. There is a banner in the top right corner of the webpage which says “Buy this Domain”, and which redirects to a Sedo webpage allowing Internet users to purchase the Disputed Domain Name.
5. Parties’ Contentions
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name adds the Spanish word “acciones” to the Trade Mark, which in English means common shares or ordinary shares of the stock market.
The website at the Disputed Domain Name shows links about credit cards, investment opportunities, prepaid debit cards and sale of shares. These services are offered by the Complainant.
Rights or Legitimate Interests
The Complainant sent letters to the Respondent in relation to the Disputed Domain Name, but did not receive a response.
The Complainant is located in Colombia, which is a Spanish-speaking country. The Respondent is located in Romania. The Respondent does not have a legitimate interest in the Disputed Domain Name.
The Respondent has no interest in using the Disputed Domain Name in a legitimate or fair way. The Respondent does not offer financial services or products. The Respondent has not shown any intention to use the Disputed Domain Name in such a way as to avoid confusion with the Complainant.
Rgistered and Used in Bad Faith
The Complainant has been offering financial services, including investment opportunities, to consumers since 1972. The Respondent offers the same services on his website at the Disputed Domain Name with the purpose of capturing visits from consumers who are looking for the Complainant.
The Complainant has been offering its financial services to the public from a website at <davividenda.com> since 1996. Despite knowledge of this fact, the Respondent registered the Disputed Domain Name in 2015. The Disputed Domain Name is confusingly similar to the Trade Mark.
The Respondent has engaged in behavior that confuses the public and clients of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.
A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark.
The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e. “acciones”, which in English means stocks or shares). As the Complainant submitted, “acciones” is a term which can be readily associated with the Complainant and the financial services industry in which the Complainant operates. This term also describes a service (i.e., investment in shares) offered by the Complainant.
It is more likely than not that a person would interpret this descriptive addition as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., Statoil ASA v. N/A Alex, WIPO Case No. D2013-0713).
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name displays PPC advertising links. These links relate to the Complainant’s industry, and redirect Internet users to third party websites offering information about financial services. In the circumstances, the Respondent’s use is not bona fide.
- The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the Trade Mark or the Disputed Domain Name.
- The Respondent has not been commonly known by the Disputed Domain Name, and has no trade marks which incorporate the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel considers it likely that the Respondent is generating advertising or affiliate referral revenue from the PPC links provided at the Disputed Domain Name.
- The website at the Disputed Domain Name contains a banner inviting Internet users to “buy this domain”. This supports the Panel’s finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has held registered rights in the Trade Mark since at least 2012, and has been operating for almost 50 years. It is clearly an established business and brand.
Previous panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Given that the Disputed Domain Name wholly incorporates the Trade Mark and adds a term in Spanish, the language in which the Complainant operates, which relates to financial services, the Panel finds it highly unlikely that the Respondent was not aware of the Trade Mark at the time he registered the Disputed Domain Name.
The website at the Disputed Domain Name contains a notice which states that the PPC links on that website are displayed automatically by a third party, and that the domain owner (i.e., the Respondent) is not responsible for the content of those links. However, previous panels have found that a respondent will generally be deemed responsible for the content appearing at the relevant domain name unless the respondent can show some good faith attempt at preventing advertising which relates to third party trade marks (see paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and e.g., Owens Corning v. NA, WIPO Case No. D2007-1143; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396).
The Respondent has shown no such good faith attempt in this case. It is probable that the Respondent intended to divert traffic from the Complainant’s website to the Respondent’s websites for his own financial gain. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Finally, the Panel has discovered at least five previous panel decisions in which an adverse finding was made against the Respondent. The Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names to prevent owners of trade marks from reflecting their trade marks in those domain names, which is a further indicator of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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, <accionesdavivienda.com>, be transferred to the Complainant.
Date: July 4, 2016