WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NetBank, Inc. v. Banco Nacional de Mexico

Case No. D2013-1442

1. The Parties

The Complainant is NetBank, Inc. of Phoenix, Arizona, United States of America (“USA”), represented by Carlos Broderick, USA.

The Respondent is Banco Nacional de Mexico of Mexico, D.F., Mexico, represented by Molina Salgado & de Alva, Mexico.

2. The Domain Name and Registrar

The disputed domain name <bancanetempresarial.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2013. On August 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2013 and August 23, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2013. The Response was filed with the Center on September 16, 2013.

The Center appointed John Swinson as the sole panelist in this matter on September 30, 2013. 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 NetBank, Inc. of Phoenix, USA. It is the listed holding company for NetBank, a provider of financial services. It appears that the Complainant filed for bankruptcy in September 2007.

The Respondent is Banco Nacional de Mexico of Mexico. The Respondent, also known as Banamex, is one of the largest banks in Mexico.

The Respondent registered the Disputed Domain Name with the Registrar on May 16, 2000. The website at the Disputed Domain Name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant has registered trademark and common law rights in NETBANK and BANKNET. These trademarks are registered in the USA and Canada.

The Disputed Domain Name is confusingly similar to the Complainant’s NETBANK and BANKNET trademarks, as it is composed of BANCA and NET, which are the Spanish translations of BANK and NET. The Disputed Domain Name pertains to a Mexican bank.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not commonly known by the Disputed Domain Name. The Respondent’s name is Banco Nacional de Mexico, not Bancanetempresarial. Additionally, the Respondent has been known as Banamex in connection with its financial services, not Bancanetempresarial;

- the Respondent has no trademark rights for Bancanetempresarial in the USA or Canada;

- the Respondent is making an illegitimate commercial use of the Disputed Domain Name, with the intent for commercial gain, to misleadingly divert the Complainant’s customers; and

- the Respondent is tarnishing the Complainant’s trademarks through dilution.

Registered and Used in Bad Faith

The Disputed Domain Name was registered and is being used in bad faith for the following reasons:

- it is not in use and does not appear to have been used since it was registered;

- it has been registered to prevent the Complainant from reflecting its trademarks in the domain name; and

- it has been registered primarily for the purpose of disrupting the business of the Complainant (who is a direct competitor of the Respondent in the financial field) and to dilute the Complainant’s trademarks.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Complainant has not provided evidence of its alleged trademark registrations. Electronic searches of the United States Patent and Trademark Office (the “USPTO”) and the Canadian Intellectual Property Office (the “CIPO”) do not produce any registered marks (in force) for NETBANK or BANKNET in the name of the Complainant. Additionally, the Complainant did not prove how it had acquired common law trademark rights.

From an ideological point of view, the “net” component of the Disputed Domain Name and the Complainant’s alleged trademarks are similar to an extent. However, due to the addition of the term “empresarial” they are not graphically or phonetically similar.

In terms of technical confusion, it would be unlikely that someone would mistakenly type “bancanetempresarial” instead of “netbank” or “banknet” into a browser window.

Rights or Legitimate Interests

The Respondent owns various trademark registrations for BANCANET and BANCANET EMPRESARIAL in Mexico. The Respondent provided evidence of these registrations. The Respondent uses the trademark BANCANET EMPRESARIAL in relation to financial services.

The Respondent is making a legitimate commercial use of the Disputed Domain Name, without intent to divert the Complainant’s customers. For security reasons, access to the Respondent’s online banking services has been restricted and access to BANCANET EMPRESARIAL services is temporarily being provided from another website. The Disputed Domain Name is temporarily blocked.

The Respondent cannot be tarnishing the Complainant’s trademarks, as it is using the Disputed Domain Name properly. Further, as stated above, the Complainant has not acquired rights in the alleged trademarks.

The terms “netbank” and “banknet” cannot become diluted as BANCANET EMPRESARIAL is a different mark, which is registered and used legitimately and exclusively by the Respondent.

Registered and Used in Bad Faith

The Respondent first registered the Disputed Domain Name 13 years ago (presumably prior to the existence or incorporation of the Complainant).

In relation to non-use, as submitted above, for security reasons, the Respondent’s online banking services are being provided from another website and the Disputed Domain Name is blocked (this measure is temporary).

The Disputed Domain Name has been used in the past in connection with a website providing customers with direct access to the Respondent’s online banking services. It is likely that the Respondent will reactivate this service in the future. In the meantime, the Respondent has decided to maintain its registration of the Disputed Domain Name.

The Respondent is not attempting to disrupt the business of anybody, including the Complainant. The Respondent is the largest bank in Mexico and has no threatening competitors in this jurisdiction. The Respondent also notes that there is no evidence that the Complainant has been offering financial services online.

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.

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 one of the Complainant’s trademarks.

The Complainant alleges that it holds trademark registrations for NETBANK and BANKNET in the USA and Canada. The Respondent provided the Panel with copies of its searches of the USPTO and the CIPO, which did not produce any results for either trademark.

The Panel has conducted its own searches (as it is entitled to) of the USPTO and the CIPO trademark databases. The Panel confirms that the Complainant does not currently own registered trademarks for NETBANK or BANKNET in the USA or Canada.

The Complainant also alleges that it has common law trademark rights in NETBANK and BANKNET. In order to establish common law or unregistered trademark rights, a complainant must show that an alleged trademark has become a distinctive identifier associated with the complainant or its goods or services (i.e. that the trademark has acquired a “secondary meaning”). In order to establish this, the Complainant could have provided evidence of business activities conducted under the alleged trademarks (e.g. the length and amount of sales under the trademarks, advertising, consumer surveys and media recognition).

The Complainant has not submitted that either of the alleged trademarks has acquired a secondary meaning. It has not provided any evidence whatsoever to support its claim of common law trademark rights. Previous Panels have held that “a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0”), at paragraph 1.7).

In light of the above, the Complainant has failed to establish any rights (either registered or unregistered common law) in NETBANK or BANKNET.

As the Complainant has failed to establish the first element of the Policy, the Complaint must fail. The Panel does not need to address the remaining elements of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: October 11, 2013