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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociedad Rectora de la Bolsa de Valores de Bilbao, S.A. v. Vicente Mota Jimйnez
Case No. D2001-0096
1. The Parties
The complainant Is Sociedad Rectora de La Bolsa de Valores de Bilbao, S.A., a company incorporated in Spain with its principal place of business at Calle Josй Marнa Olabarri 1, 48001 Bilbao, Spain, and represented by Mr. Antonio Creus & Mrs. Carmen Burgos from Cuatrecasas Abogados ("the Complainant").
The respondent is a Spanish individual named Vicente Mota Jimйnez, with registered address in the Paseo Rнo Guadiela 15, 45007, Toledo, Spain ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <bolsabilbao.org> ("the Domain Name"). The Registrar of the Domain Name is Bulkregister.Com, Inc. and it is located at 7 Redwood Street, Third Floor, Baltimore, MD-21202 USA ("the Registrar").
3. Procedural History
A complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 18, 2001, pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 24, 1999 ("the Complaint").
This was done satisfying the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
On January 23, 2001, Acknowledgement of Receipt of Complaint was sent to the Complainant.
On January 23, 2001, a Request for Registrar Verification was transmitted to the Registrar and the Registrar confirmed by e-mail that the domain name <bolsabilbao.org> is registered with the Registrar and that the Respondent is the current registrant of the Domain Name.
On January 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted by email to the Respondent setting a deadline by which the Respondent could submit a response to the Complaint.
On January 30, 2001, a Response was submitted by the Respondent to the WIPO Center.
On January 31, 2001, the WIPO Center sent to the Respondent a Notification of Response Default, acknowledging receipt of the Response and requesting the Respondent to remedy several deficiencies identified in the Response by February 14, 2001.
On February 16, 2001, the WIPO Center sent a Notification of Respondent Default to the Respondent, notifying him that he had failed to comply with the above-referred deadline to submit his Response.
On March 6, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel to the parties, in which Mayer Gabay was appointed as Sole Panelist. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
On the basis of the documents submitted by the Complainant, the following facts can be established:
The Complainant is the owner of the following trademarks registered at the Spanish Patents and Trademarks Registry (Oficina Española de Patentes y Marcas), regarding this Complaint:
- "BOLSA DE BILBAO", registered on December 5th 1991 as a Class 14 trademark, with registration number 1562089.
- "BOLSA DE BILBAO", registered on December 5th 1991 as a Class 16 trademark, with registration number 1562090.
- "BOLSA DE BILBAO", registered on March 5th 1992 as a Class 35 trademark, with registration number 1562091.
- "BOLSA DE BILBAO", registered on March 5th 1992 as a Class 36 trademark, with registration number 1562092.
- "BOLSA DE BILBAO", registered on March 5th 1992 as a Class 41 trademark, with registration number 1562094.
Likewise, the Complainant is the registrant of the following domain names:
- <bolsabilbao.es>, registered by SOCIEDAD RECTORA DE LA BOLSA DE VALORES DE BILBAO, S.A. at NIC-ES.
- <bolsabilbao.net>, registered by SOCIEDAD RECTORA DE LA BOLSA DE VALORES DE BILBAO, S.A. at Network Solutions.
The Complainant is the managing corporation of the "Bolsa de Bilbao" (Bilbao Stock Exchange), which is one of the four Stock Exchanges existing nowadays in Spain, incorporated on July 26, 1989. Besides serving as a trading centre, it offers to its users other value added services through its websites.
The Bilbao Stock Exchange is a well-known institution in the Basque and the Spanish financial system, and has an increasing and recognised international projection.
The volume of purchases and sales realised in the Bilbao Stock Exchange was, in the year 1999, 12.478.950.000 Pesetas (75.000.000 Euro).
Respondent is the registrant of the following domain names:
<bolsavalencia.net>,<bolsabarcelona.net>,<cnmv.org> and the disputed domain name (<bolsabilbao.org>), which were registered through the Registrar (Bulkregister.Com, Inc.). From the data supplied by the Registrar, the registrant of the Domain Name appears to be a Spanish individual named Vicente Mota Jimйnez with registered address in Toledo, Spain (the Respondent), whose activity the Complainant has not been able to identify, since the web pages corresponding to the Domain Name and the other referred domain names do not include any content in this regard.
In any event, based on registration of such domain names, the Complainant considers that the Respondent’s activity consists of registering and reselling domain names.
These are the only facts that can be established since no Response was duly submitted by the Respondent.
5. Applicable Rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.
6. Parties' Contentions
6.1 The Complainant
In the Complaint, the Complainant states that there are circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name.
The grounds for the Complaint are:
(1) the Domain Name <bolsabilbao.org>is identical or confusingly similar to the "BOLSA DE BILBAO" trademark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interest in respect of the Domain Names as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy regarding <bolsadebilbao.net>. The Respondent is not using nor has used, neither is demonstrating nor has demonstrated an intention to use the Domain Name legitimately for any kind of professional or private activities but its resale.
(3) <bolsabilbao.org> was registered in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy.
In the Complaint, the Complainant requests that the Respondent transfer the ownership of the Domain Name in issue to it.
6.2 The Respondent
No Response was duly submitted by the Respondent to the WIPO Center.
7 Discussion and Findings
7.1 Identical or confusingly similar
The Domain Name <bolsabilbao.org> is clearly confusingly similar to the Complainant's trademarks "BOLSA DE BILBAO". And the word "DE" makes no difference since it is only a Spanish preposition used as a link between two nouns and may not be understood as an essential part of the denomination that contributes it to be identified from another domain name.
In any event, since the Spanish Trademark Act prohibits registration of trademarks that lead to confusion in the market or create a risk of association with other previously requested or registered trademarks, the Respondent could have not registered such trademark in Spain, since it had been already registered by the Complainant. Moreover, due to the fact that the Complainant’s web site has been linked to the domain name <bolsabilbao.org>, it would have been clearly misleading to Internet users.
7.2 Rights or legitimate interest
According to the Complainant the registration by the Respondent of the Domain Name was not guided by a legitimate purpose, such as the use of the Domain Name for the development of the commercial activities linked to a trademark owned by the Registrant, but only intended to impede the use of the Domain Name by the Complainant.
It may be stated that the fact that the Domain Name, as well as the above-referred domain names, all of which are related to the Spanish Stock Exchange field, were not further used by the Respondent but when registering them all, supports that the Respondent did not intend to use them for any kind of professional or private activities other than their resale.
The Respondent had no right on the trademarks referred to the name "BOLSA DE BILBAO" nor any relation with the Bilbao Stock Exchange that would make it legitimate for him to use such trademark.
In view of the above, it seems to be that the only goal of such a registration was to impede the use of the Domain Name by the Complainant.
Paragraph 4(c) of the Policy states circumstances which demonstrate a Respondent's rights or legitimate interest to a domain name. The Paragraph sets out by providing:
"Any of the following circumstances (...) found by the Panel to be proved on its evaluation of all evidence presented shall demonstrate your rights or legitimate interest to a domain name (...)".
Therefore, on the basis of this Paragraph, upon the prima facie shown by the Complainant that the Respondent lacks rights or legitimate interests in the Domain Name, the Respondent has the burden of proof of its rights or legitimate interest in the Domain Name. Since no Response was ever submitted by the Respondent and no evidence has been provided that it used the Domain Name in connection with a bona fide offering of goods or services, prior to receiving the notice to him of the dispute, no rights or legitimate interest may be seen as proven.
In conclusion, under the circumstances of this case, it should be held that the Respondent has no rights or legitimate interest in the Domain Name <bolsabilbao.org>, in accordance with Paragraph 4(c) of the Policy.
7.3 Bad faith
Paragraph 4(b)(i) of the Policy establishes that there is bad faith at the moment the disputed domain name is registered if there are circumstances indicating that the registration of the domain name was done primarily for the purpose of selling or otherwise transferring the domain name registration to the owner of the trademark, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name (i.e. an unfair profit).
The fact that in this case the Domain Name is so obviously connected with the Complainant and its characteristic services suggests that any use by anyone not related with the Complainant may just be an act of opportunistic bad faith (as stated in the Decision adopted in WIPO Case No. D2000-0277).
Furthermore, the fact that the Respondent was a Spanish individual with residence in Spain and that he chose a name which is identical to the trademark of the Complainant, a well-known financial institution in Spain, preventing use by its legitimate holder, states circumstances which are found to be evidence of the registration and use of a domain name in bad faith. And the Respondent could have been aware of it, since was even obliged by Clause 12 of the Registration Agreement with the Registrar to agree that the registration was not made in bad faith and that the domain name to be registered was not in conflict with another name.
In view of the above, the Panel finds that, by having registered the Domain Name, the Respondent has infringed a prior trademark right, and it should be held that the Respondent has acted in bad faith.
In light of the foregoing, the Sole Panelist finds that the Domain Name <bolsabilbao.org> at issue is confusingly similar to the Complainant's trademark "BOLSA DE BILBAO", that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name has been registered and used in bad faith. Consequently, the Sole Panelist decides that the Domain Name be transferred by the Registrar from the Respondent to the Complainant.
Dated: March 30, 2001