Banco Bilbao Vizcaya Argentaria, S.A. v. Javier Samalea
Case No. D2007-0326
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria, S.A., Madrid, Spain, represented by Enrique J. Sirvent, Spain.
The Respondent is Javier Samalea, Cádiz, Spain.
2. The Domain Name and Registrar
The disputed domain name <bbva.net> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2007. On March 7, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On March 7, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response April 8, 2007. The Response was filed with the Center March 22, 2007.
The Center appointed Manuel Moreno-Torres, David Maher and Jonas Gulliksson as panelists in this matter on May 10, 2007. The Panel finds that it was properly constituted. Each member of 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 one of the largest commercial banks in Spain which was formed in 1999 from a merger of Banco Bilbao Vizcaya with Banco Argentaria. There was extensive publicity regarding the planned merger commencing at least as early as January 15, 1999.
The Complainant owns a large portfolio of registered trademarks BBVA all over the world, e.g., Kirguistan, Switzerland, Mongolia, Liberia and Colombia, among others. In order to further protect its various marks, such as BBVA and to facilitate any user’s ability to locate the sites on the worldwide web, the Complainant registered numerous domain names; one such domain name is <bbva.com>, amongst many others.
The Respondent is a Spanish individual, who acquired the disputed domain name <bbva.net> on January 26, 1999. The name was inactive for some years, then was used to redirect to different financial links, and finally was used to redirect to the website “www.psoe.es” of a Spanish political party for some period.
5. Parties’ Contentions
A. Complainant
The Complainant contends as follows: The name “BBVA” is a contraction of the trade name of Banco Bilbao Vizcaya Argentaria, one of the largest commercial banks in Spain. In order to protect its BBVA trademark, the Complainant owns the registrations for the trademark BBVA in many countries around the world. By reason of the extensive use, promotion and advertising of the BBVA business by reference to the mark, it enjoys substantial goodwill. Complainant also registered “BBVA” as part of numerous domain names.
The domain name is identical to the Complainant’s trademark registered after the merger (BBVA), and confusingly similar to the combination of the two previous trademarks (BBV and Argentaria).
The Complainant has not consented to the Respondent's use of the domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the BBVA mark in a domain name or in any other manner.
The Respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term “BBVA”, either alone or combined with the denomination of products or services that it could eventually offer in the market. The Respondent is not known in the market with the name “BBVA” and has not registered any mark containing this term. The Respondent has no relationship with, license from or specific permission from the Complainant for the use of the BBVA mark.
Bad faith is shown where the Respondent came to know about the merger between BBV and Argentaria and then registered the domain name using these respective marks.
Based on the fact that the Respondent has held the domain name for six years and has failed to develop any other use for the disputed domain name until forwarding to the “PSOE” web page, the Respondent does not intend to use <bbva.net > for any purpose other than to cause Internet confusion for its own commercial gain.
The Respondent’s behavior is therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv). The notoriety of the Complainant’s BBVA marks, the Respondent’s lack of any connection to the Complainant, and the Respondent’s failure to use the website connected to the domain name all indicate opportunistic bad faith registration and use
B. Respondent
The Respondent contends as follows: The Complainant’s website includes a statement that the announcement of merger between Banco Bilbao Vizcaya and Banco Argentaria was made on October 19, 1999. The Respondent states that it “was not knowed [sic] by the citizens that Banco Bilbao Vizcaya and Banco Argentaria reached agreement to merge their banks” before that date.
The disputed domain name <bbva.net > was initially chosen by the Respondent to open a web page called “Barcos y Bases de Vigilancia Aduanera” which was never run as a business. The Respondent decided to display a different domain name <vigilancia-aduanera.com> as a better address to start a website, and to keep the domain name <bbva.net> for the future and a more specific website related to Barcos y Bases (boats and bases) and the Respondent’s employer, Vigilancia Aduanera.
The Respondent forwarded the domain name <bbva.net> to “www.psoe.es” for “three or four days” to test the redirectioning service of the registrar.
The Respondent has never managed any kind of online business using the domain name in dispute, and has never obtained “economic or other kind of benefits” using the domain name <bbva.net>.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights,
2. The Respondent has no rights or legitimate interests in respect of the domain name, and
3. The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
On the issue of identity or similarity, the Panel finds that the facts clearly favor the Complainant. The domain name is identical to the trademark, except for the generic top-level domain name “.net”. As a rule, addition of the generic top-level domain (gTLD) reference, which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity or similarity with the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti,
WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri,
WIPO Case No. D2002-0760.
The Panel thus finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
In this case, the Respondent states that he registered the domain name to develop a business, finally run with another different domain name, <vigilancia-aduanera.com>, but the Respondent has provided no evidence to this Panel of demonstrable preparations with respect to either of the domain names. The Panel finds that the mere allegations of such future use without any evidence of demonstrable preparations is not sufficient under the Policy, paragraph 4c)(i).
The Panel finds that the Respondent is furthermore not commonly known by the domain name, and there is no evidence that the Respondent is making a fair use after seven years of passive holding.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides an illustrative but not exhaustive list of indicia of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
This Panel is aware that, as a general matter, bad faith may not be found when a complainant relies on a trademark that did not exist at the time a disputed domain name was registered when seeking to make use of the Policy. However, there are many exceptions to this general statement: One such exception may be found when (a) a portion of the domain name is a registered trademark, even though the mark as a whole is not yet a new trademark (SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston,
WIPO Case No. D2003-0642) or (b) when Respondent had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant (Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),
WIPO Case No. D2003-0320). Finally, various decisions have found bad faith because “Respondent registered the Domain Name fully conscious of what ‘business’ he could make out of mistakenly being affiliated with the Complainant”. (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598).
In the present case, the Panel finds that (a) the domain name was registered at a time when BBV was a widely-known trademark, even though the mark BBVA was not yet a new trademark; (b) the Respondent must have had knowledge that trademark rights would soon arise because the Respondent has not alleged that the Respondent was unaware of the prior public information available at least as of January 15, 1999 about the merger; (c) the Respondent must have been conscious of the business the Respondent could make out of a mistaken affiliation with the Complainant because the Respondent has provided an evasive answer to the allegation of the Complainant that the Respondent could have managed a legitimate online business with a different domain name; and (d) the Respondent could only have had expectations on registration by the Complainant of a domain name combining the two famous marks, BBV and ARGENTARIA: and (e) the Respondent never established a website corresponding to the domain name.
The Panel finds that the domain name at issue was registered by the Respondent in bad faith and that the passive holding of the domain name by the Respondent constitutes being used in bad faith within the meaning of paragraph 4(b) 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 domain name <bbva.net> be transferred to the Complainant.
Manuel Moreno-Torres
Presiding Panelist
David W. Maher
Panelist
Jonas Gulliksson
Panelist
Dated: May 24, 2007
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