WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Macro S.A. v. Affordable Webhosting Inc. Advertising

Case No. D2010-1759

1. The Parties

The Complainant is Banco Macro S.A. of Buenos Aires, Argentina, represented by Obligado & Cia. Lda. S.A., Argentina.

The Respondent is Affordable Webhosting Inc. Advertising of Oregon, United States of America, represented by Leonard DuBoff, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <macrobank.com> (the “Domain Name”), is registered with Namezero (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2010. On October 18, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2010, 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 October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2010. The Response was filed with the Center on November 15, 2010.

The Center appointed Tony Willoughby as the sole panelist in this matter on December 2, 2010. 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 an Argentinian bank. It commenced business as a financial institution in 1985 and has operated as a bank in Argentina since 1988 when it obtained a banking licence from the Central Bank of Argentina.

The Complainant is the registered proprietor of a number of Argentinian trade mark registrations of marks comprising or including the name “Banco Macro” including Argentinian trade mark registration no. 2008264 dated March 5, 1990 BANCO MACRO (words) in class 36 for banking services. It is also the registrant of the domain name, <bancomacro.com.ar>, which it registered on October 17, 2001.

The Complainant is also the registered proprietor of a number of Argentinian trade mark registrations of logos featuring the name “Macro Bank Limited”. They were all applied for on April 14, 2008.

The Domain Name was registered on June 4, 2003. It is connected to a Sedo parking page featuring sponsored listings some of which are concerned with banking services and some of which are not.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant and its trade mark rights and with a view to exploiting those rights to its own commercial advantage and, in the process, causing disruption to the Complainant’s business and consumer confusion.

B. Respondent

The Respondent denies that the Domain Name is confusingly similar to the Complainant’s trade marks, asserts that it has rights and legitimate interests in respect of the Domain Name, having used the Domain Name for bona fide advertising services for the last 7 years and on the same basis contends that the Domain Name was not registered in bad faith and is not being used in bad faith.

The Respondent contends that the Complainant is guilty of Reverse Domain Name Hijacking and seeks a finding from the Panel to that effect.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The 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 Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:

“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

B. Identical or Confusingly Similar

The Domain Name comprises “macrobank” and the generic ‘.com’ domain suffix, but for the purpose of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible to ignore the domain suffix. It is also permissible to ignore the absence of spaces, ampersands etc which cannot feature in domain names for technical reasons.

The Complainant claims trade mark rights in respect of the name “Macro”, but produces nothing in support of that claim. It does, however, produce evidence of Argentinian trade mark registrations of BANCO MACRO and logos featuring the name “Macro Bank Limited” (see section 4 above).

The Domain Name (absent the generic domain suffix) is recognizably “Macro Bank” and the Complainant’s BANCO MACRO trade mark is recognizably the Spanish for “Macro Bank”.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent claims to have selected the Domain Name for its meaning of “big bank” and that it has used the Domain Name in good faith for the last 7 years without any intervention from the Complainant in relation to advertising services. It contends that it has never received any indication of confusion on the part of Internet users.

The Domain Name is connected to a website featuring sponsored links to a variety of other websites (many of which are for financial services¹) through which the Respondent no doubt generates referral or pay-per-click revenue.

The Respondent contends that this activity constitutes a bona fide offering of advertising services for the purposes of paragraph 4(c)(i) of the Policy.

In light of the Panel’s finding under the next heading, it is unnecessary for the Panel to address this issue.

D. Registered and Used in Bad Faith

Ordinarily, to succeed in a complaint under the Policy a complainant has to prove to the satisfaction of the panel that, at the very least, the respondent had the complainant (and/or the complainant’s trade mark) in mind when registering the domain name in issue, the respondent’s bad faith objective being to take unfair advantage of or to cause unfair damage to the complainant or its trade mark.

While the Complainant asserts that this is what the Respondent had in mind when registering the Domain Name, what is there in the way of evidence before the Panel to support that assertion? The Complainant relies solely upon the fame of its trade marks, but produces no evidence to show why the Respondent based in Oregon should have been aware of the existence of those marks, the use of which (on the evidence before the Panel) has been restricted to Argentina. The Complainant places “Banco Macro” in the same category as “Coca-Cola”, “American Express” and “McDonalds”, but does not show any use of “Banco Macro” outside Argentina.

Additionally, while the Complainant has Argentinian trade mark registrations of logos featuring the corporate name “Macro Bank Limited”, those marks were all applied for in 2008, several years after registration of the Domain Name. There is nothing before the Panel to show that the Complainant was using the name “Macro Bank” prior to registration of the Domain Name.

As indicated above, while the Complainant claims trade mark rights to the name “Macro” (solus), the Complainant has produced no evidence of those rights.

If it were the case that the term “macro” in relation to banks or banking services was a term used exclusively by the Complainant, then that would provide the Complainant with an arguable starting point. However, as the Respondent has pointed out, “macro” is well-known both as a dictionary word and a prefix; moreover, a simple search engine search shows that the Complainant is not the only entity using the name “Macro” in relation to banking services.

The Complainant has failed to satisfy the Panel that the Domain Name was registered in bad faith

E. Reverse Domain Name Hijacking

The Respondent contends that the Complainant’s bad faith in bringing this Complaint is obvious. The Respondent points to the delay in bringing the Complaint, the Complainant’s failure to obtain other equivalent and available domain names (e.g. the ‘.net’ equivalent) and the Complainant’s failure to ensure that search engine searches for “macro bank” will land searchers at its site. In other words, the Complainant has no serious concern to protect its brand.

The Panel disagrees. The Panel accepts that the Complainant and its trade marks will be very well-known in Argentina in the fields of banking and financial services. Moreover, the Panel is also ready to accept that if the Respondent had been shown to have Argentinian connections, the result of this Complaint might have been different.

The matters to which the Respondent refers in support of this allegation indicate (perhaps) shortcomings in the Complainant’s approach to protection of its brand, but do not, in the view of the Panel, indicate any bad faith on the part of the Complainant.

While the Complaint has failed, the Panel has no reason to doubt that the initiation of this Complaint was governed solely by a bona fide desire on the part of the Complainant to protect its trade mark rights.

The Panel rejects the allegation of Reverse Domain Name Hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Tony Willoughby
Sole Panelist
Date: December 11, 2010

¹ The links are likely to vary from time to time and from geographical area to geographical area.