WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Davivienda S.A. v. Gretchen Scharnagl

Case No. D2016-0913

1. The Parties

The Complainant is Banco Davivienda S.A. of Bogota, Colombia, represented by Posse Herrera Ruiz, Colombia.

The Respondent is Gretchen Scharnagl of Miami, Florida, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <daviviendatributario.com> (the “Disputed Domain Name”) is registered with Melbourne IT Ltd (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 9, 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 sent an email communication to the Complainant on May 20, 2016 requesting a clarification of the Complaint regarding the Registrar’s identity. The Complainant filed an amended Complaint on May 20, 2016.

The Center verified that the Complaint together with the amended Complaint (hereinafter both referred together as 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 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 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 Gretchen Scharnagl of the United States. 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 August 29, 2015. The website at the Disputed Domain Name contains pay-per-click (“PPC”) links, most of which are in Spanish.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name adds the Spanish word “tributario” to the Trade Mark, which in English means tax, and is commonly used in relation to financial services.

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 the United States. 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 her 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.

B. Respondent

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. “tributario”, which in English means tax). As the Complainant submitted, “tributario” 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 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, which redirect Internet users to third party websites. In the circumstances, this 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 Respondent had the opportunity to demonstrate her 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 she registered the Disputed Domain Name.

It is probable that the Respondent intended to divert traffic from the Complainant’s website to the Respondent’s websites for her own financial gain. This constitutes bad faith registration and use under paragraph 4(b)(iv) 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.

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, <daviviendatributario.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: July 4, 2016