WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bankoa, S.A. v. Bight Mccarthy
Case No. D2017-0932
1. The Parties
Complainant is Bankoa, S.A. of San Sebastian, Spain, represented by Herrero & Asociados, Spain.
Respondent is Bight Mccarthy of Accra, Ghana.
2. The Domain Name and Registrar
The disputed domain name is <bankoa-online.com> which is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 9, 2017. On May 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 9, 2017.
In the period May 26-June 6, 2017, the Center received several email communications from a third party alien to this administrative proceeding (apparently supplying alert services to Complainant). The Center acknowledged receipt of such communications and provided no further information on this administrative proceeding to such third party.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on June 20, 2017. This Panel finds that it was properly constituted. This 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
Complainant has rights over the BANKOA trademark for which it holds several trademark registrations with the Spanish Office of Patents and Trademarks, such as registration No. M0769464 registered on January 19, 1978, in class 36 and registration No. M1326642 registered on September 20, 1991, in class 4.
Complainant also holds an international trademark registration for BANKOA, registration No. 586286, registered on April 27, 1992, in classes 35 and 36.
Complainant is the registrant of the following domain names: <bankoa.es> created on April 12, 1996, <bankoaonline.com> created on November 27, 2012, and <bankoa.eus> created on June 27, 2014.
The disputed domain name was created on May 3, 2017. The disputed domain name resolved to a website that showed an "index" and the name of two files.
5. Parties' Contentions
Complainant's assertions may be summarized as follows.
Complainant is a financial institution that was founded in 1975 under the name Banco Industrial de Guipúzcoa. Complainant's core financial and credit activity resides in small and medium-sized companies and household economies.
Most of Complainant's capital stock belongs to Crédit Agricole, which is one of the largest French banks by market share and by profit level. Crédit Agricole has a clear international orientation, which rests on the more than 73,000 employees located all over the globe. The Crédit Agricole group has large subsidiaries worldwide covering the areas of asset management and public entity funding, private banking, corporate and international clients, employee savings, retirement savings, credit services, insurance, real estate, etc.
Complainant is the owner of a substantial portfolio of registered trademarks, many of which consist of or include the term "bankoa". "Bankoa" is an important brand in the financial sector in Spain. The term means "bank" in the Basque language. Complainant also holds the BANKOA priority in the Trademark Clearinghouse.
The disputed domain name is almost identical to the BANKOA trademark over which Complainant has rights. Complainant's trademark BANKOA has been included in its entirety in the disputed domain name. The disputed domain name also contains a hyphen ("-") and the word "online", which is a descriptive term. The disputed domain name is identical to one of Complainant's domain names, namely <bankoaonline.com>. The only difference between the disputed domain name and Complainant's mentioned domain name is the addition of a hyphen.
Respondent has no legitimate right to use the disputed domain name. Complainant has no association or business or commercial relationship with Respondent. Complainant has not licensed or otherwise authorized Respondent to use its BANKOA trademark or to apply for any domain name incorporating said trademark. Thus Respondent is using Complainant's trademark without Complainant's permission.
As result of an exhaustive Google search, there are no references to other companies or trademarks with the term "bankoa". The only ones are to Complainant so that, both on the market and in the Internet, the term "bankoa" identifies Complainant and its products.
Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services.
Complainant filed the Complaint as immediately as possible (the disputed domain name was registered on May 3, 2017, which Complainant noticed on May 5, 2017) due to the circumstances that put at risk the online banking clients and users as well as the name and reputation of Complainant.
Complainant does not know Respondent's identity since it used a privacy service; using the name of a bank and a registered trademark for the disputed domain name under a privacy service is necessarily a bad faith registration.
Complainant investigated the email address of Respondent as per the WhoIs report and found that it is related to fraudulent websites: "https://[...], "https:// [...]", "https://[...]", "http:// [...]", and "https:// [...]".
Bearing in mind that Complainant offers financial services, any likelihood of confusion or any unsafe practices -including phishing- would cause an important damage to the clients/users and to Complainant.
Respondent has registered the disputed domain name in bad faith, being aware of the existence of the BANKOA trademark that has been incorporated in its entirety in the disputed domain name. Further, the use of the disputed domain name could only happen in bad faith, as the BANKOA trademarks are registered since the 1970s and are well known in their field.
One of Complainant's domain names is almost identical to the disputed domain name. When users search on Google the terms "bankoa online", Respondent's site may appear and confuse the consumers.
The disputed domain name was registered and is being used in bad faith, since Respondent does not have any legitimate right or interest to use the trademark BANKOA and Complainant has not authorized Respondent to use it.
By using the disputed domain name, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. Respondent is not making a legitimate or fair use of the disputed domain name; instead the disputed domain name is creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the BANKOA trademark.
The disputed domain name entirely incorporates the BANKOA trademark, adding a suffix ("-online"). The addition of such suffix is not enough to avoid similarity, nor does it add anything to avoid confusion with Complainant's trademark (see F. Hoffmann-La Roche AG v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2015-1947, and Confederation Nationale du Credit Mutuel v. Balley Arthur, Touvet-Gestion, WIPO Case No. D2015-2221).
Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is clear that BANKOA has been used in commerce for many years. Complainant asserts that it has never authorized Respondent to use the BANKOA trademark in a domain name or in any other manner, and that Respondent has no affiliation or business relationship with Complainant.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.1 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Taking into consideration that the registration and use of the BANKOA trademark preceded the creation of the disputed domain name by a number of years, that "bankoa" corresponds to Complainant's name as well, and that Complainant is well known in its field, this Panel is of the view that Respondent must have been aware of the existence of Complainant and its BANKOA trademark at the time it obtained the registration of the disputed domain name.
The disputed domain name is almost identical to Complainant's <bankoaonline.com>. Complainant contends that such circumstance puts at risk the online banking clients and users as well as the name and reputation of Complainant since the disputed domain name might be used for phishing activities (that is, the deceitful obtention of sensitive information or a payment by trying to impersonate another by using a domain name confusingly similar to another's trademark).
Complainant also contends that Respondent used a privacy service, although Complainant supplied no evidence of such circumstance.
Complainant supplied a screenshot of the website linked to the disputed domain name, taken on the date the Complaint was filed with the Center, which shows an Index of two files, apparently hyperlinked (Complainant did not supply any argument or evidence on whether such two files are actually hyperlinks). Further, Complainant produced evidence showing that on the Internet Respondent's email address has been flagged as associated to websites allegedly engaged in online fraudulent activities.
As set forth above, the website associated to the disputed domain name does not show any offer of products or services, or any information on any topic, which might be deemed as passive holding absent any evidence of redirecting to other websites. Several UDRP decisions have held that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.2 In the case at hand, this Panel has taken into consideration the following circumstances altogether: (i) Complainant is a well-established company, and the BANKOA trademark is undoubtedly identified with Complainant; (ii) the specific meaning of the word "bankoa" in the Basque language, a language not widely known and prima facie unrelated to Respondent's address location as per the WhoIs report; (iii) Respondent's use of the BANKOA trademark in the disputed domain name without Complainant's authorization; (iv) the formation of the disputed domain name by adding the suffix "-online" to the trademark, which gives a clear impression of association between the disputed domain name and Complainant; (v) the fact that the disputed domain name is also confusingly similar to Complainant's domain name <bankoaonline.com> (which might enable Respondent to try to impersonate Complainant for potentially fraudulent purposes); (vi) Respondent's use of the disputed domain name, where the associated website shows the name of two files, apparently hyperlinked to redirect traffic; and (vii) Respondent's failure to appear at this administrative procedure.
In sum, the overall evidence in the file indicates that Respondent's choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of Complainant's name and trademark and potentially disrupt Complainant's business and Complainant's customers, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <bankoa-online.com> be transferred to Complainant.
Date: July 4, 2017