WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Complainant is Banco Bilbao Vizcaya Argentaria, S.A. of Madrid, Spain represented by Enrique J. Sirvent of Madrid, Spain.

The Respondent is N/A, N/A, of Iraq.

The disputed domain name <bbvaespana.com> is registered with Direct Information Pvt Ltd. dba Directi.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2003. On December 22, 2003, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On December 25, 2003, Direct Information Pvt Ltd. dba Directi.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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 12, 2004. The Center verified that the Complaint, together with the amendment to 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 on January 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2004.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 26, 2004. 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.

The Respondent in this case cannot be identified. None of the contact details provided by the Registrar, Direct Information Pvt Ltd. dba Directi.com, in its response to the Center’s verification request have any meaning or significance at all, consisting of repetitions of the letter ‘x’ and of ‘0’. The only detail about the registrant that can be verified is that it appears to be based in Iraq. The only email contact given is xxx@xxx.net. Effectively, therefore, there is no contact information available and the true identity of the Registrant is unknown.

The Center, not disposing of any actionable contact details of any kind, whether fax, email or postal address, has sought to comply with its notification obligations under the Rules (Para 2) by sending the Complaint to the Registrar’s mailing address, in lieu of the Respondent’s non-existent mailing address. The Center further requested the Registrar to forward copies to the Respondent in case the Registrar was aware of the Respondent’s mailing address. The Center also attempted to use the email contact address provided for the Respondent, which unsurprisingly suffered permanent fatal errors.

The Registrar confirmed receipt of a copy of the complaint. It is not known whether the Registrar did or attempted to pass on a copy of the Complaint to the Respondent, as requested by the Center.

The Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, by virtue of Paragraph 2, require the Provider, in this case the Center, to employ the measures there listed (2 (a) (i), (ii)) to discharge its responsibility to notify a Respondent of a Complaint. In this case, the measures required in the Rules cannot be complied with since they are predicated on the availability of contact details which, in this case, do not exist. It is clear that the only real option in a case such as this is the forwarding of the Complaint to the Registrar. Further, the Center has done what it can, in the circumstances, by also attempting to use the email contact details provided.

In any case, the Rules in Paragraph 2 provide that it is the Provider’s responsibility to employ reasonably available means to achieve actual notice. In the absence of actual notice, undertaking the steps listed (2 (a) (i), (ii)) discharges this responsibility. But the steps listed are not exhaustive of the ways in which the responsibility can be discharged. It is clear that this can be achieved by the Provider employing all ‘reasonably available means calculate to achieve actual notice’ as generally required. What means were reasonably available in this case have indeed been employed.

Therefore, the Center has complied with its important obligations in relation to notification of the Complaint.

The Complainant is a multinational banking organization based originally in Spain. It employs about 90,000 people worldwide. Since about 1995, the Complainant has expanded its network in Latin America, which has resulted, in recent times, in the consolidation of the BBVA brand in connection with the provision of banking services in several Latin American countries and also elsewhere.

The Complainant has registered its trade mark BBVA in a number of jurisdictions, as well as in Spain. Some of the original dates of registration of trade marks, as far as can be ascertained from the material supplied by the Complainant, and as asserted by the Complainant and not contested, predate the registration of the domain name <bbvaespana.com> by the Respondent. Be that as it may, there is no doubt on the material presented by the Complainant, that its rights to the trade mark predate the registration of the domain name by the Respondent.

The BBVA mark is also used in association with a number of Foundations which implement the Complainant’s vision of its social responsibilities.

The Complainant has also registered a large number of domain names consisting of or incorporating its mark BBVA.

The Complainant submits that the domain name <bbvaespana.com> is confusingly similar to its registered trade mark BBVA. It submits that the coupling in the domain name, of the generic country name ‘Espana,’ to the Complainant’s mark in its entirety, does not undermine this conclusion. It submits that it has been decided in a number of other Administrative Panel decisions, that the addition of a generic geographic term does not prevent the domain name from being confusingly similar. The addition does not diminish the likelihood of confusion, all the more since Spain is a country in which the Complainant conducts its business.

The Complainant further submits that the Respondent has no legitimate rights or interests in the domain name. The Respondent must have had the Complainant in mind when it registered the domain name, in the sense that it must have been aware of its reputation, given its fame. The Complainant has not consented to the use made by the Respondent of its trade mark, nor is the Respondent known by the name BBVA.

The Complainant further submits that the Respondent is using the domain name in bad faith since it has no legitimate rights or interests in the name, while its domain name suggests it is officially associated with the Complainant, and prevents the Complainant from registering the domain name and using it.

Furthermore, the provision of false information in applying for a registration shows bad faith, as has been decided in a number of Administrative Panel decisions. The Complainant further submits that the fact that the Respondent knew or should have known of the Complainant’s trade mark registrations yet proceeded to register the domain name incorporating the trade mark is indicative of bad faith.

The Respondent did not reply to the Complainant’s contentions.

The domain name is not identical to the registered trade mark BBVA of the Complainant.

However, the domain name is confusingly similar. The incorporation of the mark in a combination with a country name does not render the domain name sufficiently different to distinguish it from the Complainant’s trade mark. There are many Administrative Panel decisions which can be referred to in support of this conclusion, e.g., Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363.

The fact that the country name is not rendered in English does not detract from the conclusion that the domain name is confusingly similar. The Complainant conducts business in Spain and other Spanish-speaking countries where the country Spain would be primarily known by its Spanish denomination ‘Espana.’ The reference to that country would be immediately apparent to consumers in Latin American countries as well as in Spain, itself. Furthermore, since the Complainant is a major bank well- known in a number of countries, the confusing imputation is strong that the domain name is specifically concerned with the Complainant’s operations in Spain, itself, which is not now in fact the case.

There is no evidence of the Respondent having any right or interest in the domain name. The Respondent does not have the license or permission of the trade mark owner to incorporate its trade mark or use its mark in any way. There is no evidence of the real name or nature of the business of the Respondent, so there is nothing to indicate that it has a legitimate name, mark or brand that is the same or similar to BBVA.

It is legitimate to conclude that the registrant was aware of the reputation of the trade mark, both from the fact that the mark is registered and used in a number of countries and is well-known, and from the deliberate nature of the combination of the mark BBVA with the word Espana. This combination is not likely to be due to coincidence.

Furthermore, and most tellingly, the Respondent has taken deliberate steps to disguise its identity and render it impossible to be identified. It is in breach of the Registration Agreement. In many Administrative Panel decisions, it has been decided that evidence of deliberate steps to disguise the real identity of the owner of a domain name is evidence of bad faith, starting with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It must be presumed that a person who hides his identity and makes it impossible to be found or contacted, indeed has something to hide.

It is true that the requirement of registration and use in bad faith is conjunctive, i.e., both registration and use must be shown.

The Respondent has not done anything with the domain name in this case: there is no related website, or offer to sell, and the Respondent is not in competition with the Complainant. Nonetheless, the special circumstances referred to in the Policy at 4(b) (i) to (iv) do not themselves in all cases require positive action after registration. Furthermore, it is clear from the wording of Paragraph 4 of the Policy that bad faith is not limited to the circumstances listed in the Policy at 4(b) (‘the following circumstances in particular but without limitation’). It was correctly pointed out in WIPO Case No. D2000-0003 (Telstra Corporation Limited v. Nuclear Marshmallows), that inaction after bad faith registration can, in certain circumstances, suffice to establish registration and use in bad faith. All the circumstances, taken together, need to be assessed to determine the question of bad faith. In this case the following circumstances are relevant:

- that the mark is a well-known mark in multiple jurisdictions, including in Spain and other Spanish-speaking jurisdictions;

- that the Respondent has no legitimate claim, right or interest to the domain name;

- that the Respondent has sought to disguise its true identity so that it cannot be contacted, and in fact, has given no, or false details as to address, contact email, location, even in the most general sense;

- that the Registrant by so doing is in breach of the Registration Agreement;

- that there is no evidence of actual or intended use in good faith; and

- that the Respondent has not replied to the Complaint.

Given all these circumstances, the domain name was registered and used in bad faith.

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 <bbvaespana.com> be transferred to the Complainant.