WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Bilbao Vizcaya Argentaria, S.A. v. James J. Lee

Case No. DCO2015-0006

1. The Parties

Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain, represented by Maria Eguiron of Spain.

Respondent is James J. Lee of New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bbvahorizonte.com.co> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 21, 2015, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On January 22, 2015, Name.com LLC 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 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 Respondent of the Complaint, and the proceedings commenced on January 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2015.

The Center appointed Ross Carson as the sole panelist in this matter on February 23, 2015. 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

Complainant is a multinational group providing financial services in over 31 countries and to 50 million customers throughout the world. It offers individual and corporate customers a complete range of financial and non-financial products and services. It enjoys a solid leadership position in the Spanish market, where it first began its activities over 150 years ago. It also has a leading franchise in South America; it is the largest financial institution in Mexico; one of the 15 largest United States of America commercial banks.

The name "BBVA" is a contraction of Banco Bilbao Vizcaya Argentaria's trade name. In order to protect its BBVA trademark, the Complainant owns the registrations for the trademark BBVA in many countries around the world and by reason of the extensive use, promotion and advertising of the BBVA business by reference to the mark it enjoys the substantial goodwill and reputation in the use of the said mark.

As shown in Annex 4a to the Complaint, Complainant is the owner of United States of America Registration No. 75/856407 for the word mark BBVA, registered in relation to services in International Class 36 on April 23, 2002 and Registration No. 75/904725 for the figurative mark BBVA, registered in relation to services in International Class 36 on April 16, 2002. In addition, Complainant is the registered owner of numerous other United States trademark registrations for or including the trademark BBVA registered in relation to wares or services in other International Classes. In addition, Complainant is the registered owner of numerous European trademark registrations and national registrations throughout the world for BBVA.

Complainant carried on business in Colombia in association with the trade name and trademark BBVA HORIZONTE for a number of years prior to 2014. BBVA HORIZONTE was Colombia's largest foreign-owned AFP and third largest pension fund manager. Its products included mandatory pension and unemployment funds, and voluntary pension plans. The pension fund manager offered voluntary programs for individuals and companies. In 2013, Colombian financial holding company Grupo Aval closed the acquisition of BBVA local pension fund unit BBVA HORIZONTE. Attached as part of Annex 4b to the Complaint are particulars of six Colombian trademark registrations for the trademark BBVA HORIZONTE owned by Complainant registered respectively in International Class 9, 16, 35, 36, 38 and 41.

Complainant was the owner of a domain name registration for the domain name <bbvahorizonte.com.co> during the period in which it carried on business in Colombia as “BBVA Horizonte” prior to the acquisition of Complainants business by Grupo Aval in 2013. After the acquisition of its business in Colombia in 2013, Complainant did not renew registration of the disputed domain name <bbvahorizonte.com.co>.

The disputed domain name <bbvahorizonte.com.co> was registered by Respondent on December 4, 2014.

5. Parties’ Contentions

A .Complainant

A.1.Identical or Confusingly Similar

Complainant submits that it owns registrations for the trademark BBVA in many countries throughout the world and by reason of the extensive use, promotion and advertising of BBVA banking and financial services business in over thirty countries in association with its BBVA trademark it enjoys substantial goodwill and reputation in the use of the said mark. Complainant is the registered owner of numerous registrations in the United States of America for the trademark BBVA which were registered prior to registration of the disputed domain name <bbvahorizonte.com.co> by Respondent who is located in the United States of America. Particulars of some of the registered US trademarks for BBVA are set out in Section 4 immediately above.

Complainant also submits that it is also the registered owner of Colombian trademark registrations for the trademark BBVA HORIZONTE registered respectively in International Class 9, 16, 35, 36, 38 and 41.

Complainant submits the disputed domain name <bbvahorizonte.com.co>, is confusingly similar to Complainant’s trademark BBVA and identical to Complainant’s BBVA HORIZONTE registered trademarks.

Complainant submits that the disputed domain name <bbvahorizonte.com.co> consisting as it does of a combining of BBVA and HORIZONTE and the addition of “.com.co” is identical to Complainant’s registered Colombian trademarks for BBVA HORIZONTE. Combining two marks greatly enhances the confusing similarity of the disputed domain name. See 3M Co. v. Silva, NAF Claim No. 1429349 (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to complainant's LITTMANN and CARDIOLOGY III marks). See, also HomeVestors of Am., Inc. v. Sean Terry, NAF Claim No. 1523266.

Complainant further submits that such a test of confusion must be especially strict when Complainant is the owner of well-known trademarks. First, the disputed domain name creates somehow the appearance that the Complainant has registered or has permitted the registration and use of the disputed domain name or at least the Complainant does support or endorses its use by Respondent, with the corresponding confusion that such a fact implies.

Complainant submits that the disputed domain name is likely to cause confusion with Complainant’s well known trademark BBVA which is used in over thirty countries including the United States of America. When a disputed domain name incorporates a distinctive mark, such as Complainant’s trademark BBVA in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See, for example, Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, WIPO Case No. D2000-0047 (March 24, 2000), it was found that the domain name <eautolamps.com> was confusingly similar to the mark EAUTO. The inclusion of the generic term "horizonte" does not distinguish the disputed domain name from Complainant's BBVA trademarks. Respondent has deliberately added the word "horizonte" to the word "BBVA" in the disputed domain name because the Complainant's BBVA trademark is well-known around the world in connection with the Complainant's service. The common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable. Moreover in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co, 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communs, Inc. v. West Coast Entertainment Corp.,174 F.3d 1036, 1054-55 (9th Cir. 1999). Further, the addition of "com.co," and the removal of the spaces between Complainant's marks do not distinguish the disputed domain name from Complainant's trademarks.

A.2.No Rights or Legitimate Interests in Respect of the Domain Names

Complainant submits that the disputed domain name <bbvahorizonte.com.co> was chosen by Respondent to cause Internet users to believe that Complainant endorses or is associated with any web site to which the disputed domain name might resolve. The inclusion of a trademark in a domain name suggests to consumers that the website found at that domain name is associated with the owner of the trademark specially.

Complainant further submits that Complainant's BBVA trademark and its services are famous. Persons familiar with Complainant's products and services are likely to conclude that the disputed domain name is simply an extension of Complainant's business. In view of the fame of Complainant's BBVA trademarks and the lack of distinctiveness afforded by the simple addition of a non-distinctive or descriptive name, the disputed domain name is misleading. Respondent must have had the Complainant in mind when registering the disputed domain name in these circumstances and on the balance of probability, Respondent's objective in registering the domain name and using the domain name.

Complainant further submits that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name.

Complainant states that Respondent has never been authorized to use either of Complainant's trademarks, and the WhoIs record bears no evidence indicating that Respondent is known, or does business, as <bbvahorizonte.com.co>. James J Lee is listed as the registrant of record for the <bbvahorizonte.com.co> domain name. Respondent has no legal relationship with Complainant.

Complainant submits that based upon this information, it seems evident Respondent is not commonly known by the disputed domain name pursuant to Policy 4(c)(ii). See, St. Lawrence Univ. v. Nextnet Tech, NAF Claim No. 881234 (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). See also, Braun Corp. v. Loney, NAF Claim No. 699652 (concluding that the respondent was not commonly known by the disputed domain names where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

Complainant contends that the <bbvahorizonte.com.co> disputed domain name is used to host a website with reference to Complainant's BBVA trademark, with the title "the official bbva horizonte website", in an illegitimate attempt to trade off Complainant's goodwill by passing itself off as Complainant. This is not a fair or noncommercial use under paragraph 4(c)(i) and (iii) of the Policy, and demonstrates Respondent's lack of rights in the disputed domain name. See also, Dream Horse Classifieds v. Mosley, NAF Claim No. 381256.

A.3. Registration and Use in Bad Faith

Registration in Bad Faith

Complainant submits that Respondent registered the disputed domain name in bad faith because Respondent knew about Complainant's rights in the mark at the time Respondent registered the disputed domain name. Given the notoriety of Complainant's mark and the surrounding circumstances, it seems a virtual certainty Respondent actually knew about Complainant's mark at the time of registration. This constitutes sufficient evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. See, Pfizer, Inc. v. Suger, WIPO Case No. D2002-0187 (because link between complainant's mark and content advertised on respondent's website is obvious, respondent "must have known about the complainant's mark when it registered the subject domain name"); see also, Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, NAF Claim No. 1031703 (holding that respondent registered a domain name in bad faith under Policy paragraph4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")

Complainant further submits that the notoriety of Complainant's BBVA marks and Respondent's lack of any connection to Complainant all indicate opportunistic bad faith registration and use.

Used In Bad Faith

Complainant submits that the disputed domain name was registered and has been used in bad faith. The fact that Respondent chose the words "BBVA" and “HORIZONTE" to make up his or her disputed domain name <bbvahorizonte.com.co> is evidence per se of his bad faith. This selection was deliberate and not the product of chance: "BBVA" is not a common word in the Spanish language. Given the extent of the trademark BBVA's well-known character, Respondent simply could not have been unaware of it. Thus, Respondent deliberately took someone else's trademark to register a domain name. Such behavior obviously fulfils paragraph 4(b)(ii) of the Policy, which states that registration of a domain name "in order to prevent the owner of a trademark... from reflecting the mark in a corresponding domain name, provided that [respondent] has engaged in a pattern of such conduct" is evidence of the registration and use of a domain name in bad faith.

Complainant further submits upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name. Registering the domain name <bbvahorizonte.com.co> were two acts in a pattern explicitly aimed at infringing Complainant's rights. As mentioned under Section 5.1(a) above, simply adding the word ".com.co" to a domain name consisting of a well-known trademark does not establish a right, nor a legitimate interest, to own the corresponding domain name. Respondent could have managed a legitimate online business products under any different domain name, whilst its present domain name (a) suggests that it is officially associated with BBVA which it is not; (b) prevents BBVA from registering the domain name <bbvahorizonte.com.co> and to attract the corresponding Internet traffic. By the use of the disputed domain name Respondent diverts traffic which would otherwise go to Complainant's web sites. Respondent's use of the disputed domain name is clearly an attempt to attract Internet users to Respondent’s on-line location by creating a likelihood of confusion with Complainant’s BBVA's name and trademarks within the meaning of paragraph 4(b)(iv) of the Policy. (Stralfors AB v.PDS AB, WIPO Case No. D2000-0112; Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283). This is particularly because the <bbvahorizonte.com.co> web site contained information about BBVA. Further, the website includes descriptions and links to third party web sites, which evidences bad faith use of the domain name by the Respondent.

Complainant further submits that given that the disputed domain name is completely comprised of Complainant's distinctive mark, any active use of the disputed domain name by Respondent would create a false impression that Respondent and Complainant were connected. See, Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); Phat Fashions v. Kruger, NAF Claim No. 96193 (finding bad faith under Policy 4(b)(iv) even though Respondent has not used the domain name because "It makes no sense whatever to wait until it actually 'uses' the name, when inevitably, when there is such use, it will create the confusion described in the Policy").

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name have been registered and is being used in bad faith.

The fact that Respondent did not submit a formal Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a formal Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000‑0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademarks in which Complainant has rights.

Complainant is the owner of United States of America Registration No. 75/856407 for the word mark BBVA, registered in relation to services in International Class 36 on April 23, 2002 and Registration No. 75/904725 for the figurative mark BBVA, registered in relation to services in International Class 36 on April 16, 2002. In addition, Complainant is the registered owner of numerous other United States of America trademark registrations for or including the trademark BBVA registered in relation to wares or services in other International Classes. In addition, Complainant is the registered owner of numerous European trademark registrations and national registrations throughout the world for the trademark BBVA.

Complainant is also the owner of six Colombian trademark registrations for the trademark BBVA HORIZONTE registered respectively in International Class 9, 16, 35, 36, 38 and 41.

Complainant’s BBVA trademarks were registered and widely used throughout the world and Complainant’s BBVA HORIZONTE trademarks were registered and used in Colombia years before Respondent registered the disputed domain name <bbvahorizonte.com.co> on December 4, 2014.

The disputed domain name <bbvahorizonte.com.co> incorporates the whole of Complainant’s trademark BBVA HORIZONTE. The disputed domain name <bbvahorizonte.com.co> consisting as it does of a combining of BBVA and HORIZONTE and the addition of “.com.co” is identical to Complainant’s registered Colombian trademarks for BBVA HORIZONTE. Combining two marks greatly enhances the confusing similarity of the disputed domain name. See, 3M Co. v. Silva, NAF Claim No. 1429349 (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to complainant's LITTMANN and CARDIOLOGY III marks). See, also HomeVestors of Am., Inc. v. Sean Terry, NAF Claim No. 1523266.

The disputed domain name is likely to cause confusion with Complainant’s well known trademark BBVA which is used in over thirty countries including the United States of America. When a disputed domain name incorporates a distinctive mark, such as Complainant’s trademark BBVA in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See, for example, Eauto, LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises Inc, WIPO Case No. D2000-0047, where the panel found that the domain name <eautolamps.com> was confusingly similar to the mark EAUTO. Even if "horizonte" was considered as a generic term and not as part of Complainant’s trademark BBVA HORIZONTE, the inclusion of such term as part of the disputed domain name does not distinguish the disputed domain name from Complainant's BBVA trademark. Respondent has deliberately added the word "horizonte” in the disputed domain name to the distinctive term "BBVA" because Complainant's BBVA trademark is well-known around the world in connection with the Complainant's goods and services. Further, the addition of ".com.co," and the removal of the spaces between Complainant's marks, do not distinguish the disputed domain name from Complainant's trademarks.

The Panel finds that Complainant has established rights in its trademarks BBVA HORIZONTE and BBVA and has also proven that the disputed domain name <bbvahorizonte.com.co>, is identical to the trademark BBVA HORIZONTE and confusingly similar to Complainant’s trademark BBVA.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, complainant must prove that respondent has no rights or legitimate interests in respect of the disputed domain name, Paragraph 4(c) of the Policy provides that a respondent has a right or legitimate interest in a disputed domain name where:

(i) Before any notice to respondent of the dispute, respondent has made use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant contends that to the best of its knowledge and belief, Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant states that Respondent has never been authorized to use either of Complainant's trademarks, and the WhoIs record bears no evidence indicating that Respondent is known, or does business, as "bbvahorizonte.com.co". James J Lee is listed as the registrant of record for the <bbvahorizonte.com.co> disputed domain name. Complainant contends that it has no legal relationship with Respondent.

It is well established that, whilst the overall burden of proof rests with complainant, this could result in the often impossible task of proving a negative. Therefore complainant is required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If 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 Policy (see section 2.1 of the WIPO Overview, 2.0, and Croatia Airlines d. d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455). In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Complainant's BBVA trademark and its services are well known. Persons familiar with Complainant's products and services are likely to conclude that Respondent’s website is associated with Complainant.

The Panel infers that Respondent has chosen the disputed domain name in an attempt to elicit an association with Complainant’s well known BBVA and BBVA HORIZONTE trademarks in order to attract Internet users to the website in order to generate pay-per-click income from Internet users utilizing the live links on Respondents website. This is not a fair or noncommercial use under paragraph 4(c)(i) and (iii) of the Policy, and demonstrates Respondent's lack of rights in the disputed domain name. See Dream Horse Classifieds v. Mosley, NAF Claim No. 381256.

Based on the evidence before the Panel, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and is being used in bad faith.

C.1. Registered in Bad Faith

Complainant owns registrations for the trademark BBVA in many countries throughout the world and by reason of the extensive use, promotion and advertising of BBVA banking and financial services business in over thirty countries in association with its BBVA trademark it enjoys substantial goodwill and reputation in the use of the said mark. Complainant is the registered owner of numerous United States of America registrations for the trademark BBVA which were registered prior to registration of the disputed domain name <bbvahorizonte.com.co> by Respondent, who is located in the United States of America. Particulars of some of the registered United States of America trademarks for BBVA are set out in Section 4 immediately above.

Complainant is also the registered owner of Colombian trademark registrations for the trademark BBVA HORIZONTE registered respectively in International Class 9, 16, 35, 36, 38 and 41.

Complainant’s BBVA trademarks were registered and widely used in the United States of America and throughout the world and Complainant’s BBVA HORIZONTE trademarks were registered and used in Colombia years before Respondent registered the disputed domain name on December 4, 2014.

The disputed domain name resolves to a website entitled “The six personal finance applications for mobile. The Official Website of BBVA Horizonte”. The website features live links to six branded mobile applications for personal finance, none of which mobile applications emanate from Complainant. Respondent is not offering its own goods or services on the website. Respondent has never been authorized by Complainant to use any of its trademarks. The inclusion of Complainant’s trademarks in the title on the web page associated with the disputed domain name leads to a strong inference that Respondent was aware of Complainant’s BBVA and BBVA HORIZONTE trademarks at the date of registration of the disputed domain name. See, Pfizer, Inc. v. Suger, WIPO Case No. D2002-0187 (because link between complainant's mark and content advertised on respondent's website is obvious, respondent "must have known about the complainant's mark when it registered the subject domain name"); see also, Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, NAF Claim No. 1031703 (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")

The Panel infers from the evidence that Complainant has proven the disputed domain name was registered by Respondent with knowledge of Complainant’s trademarks in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

C.2. Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website 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 its website or location or of a product or service on its website or location.

Complainant's BBVA trademark is distinctive and well known internationally. The disputed domain name <bbvahorizonte.com.co> incorporate Complainant’s BBVA trademark as the distinctive element. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of bad faith (see Veuve Clicquot Ponsardin, Moison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163;

The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that the Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <bbvahorizonte.com.co>, be transferred to Complainant.

Ross Carson
Sole Panelist
Date: March 8, 2015