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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa

Case No. D2006-0614

 

1. The Parties

The Complainant is Grupo Financiero Inbursa, S.A. de C.V., New York, New York, United States of America, represented by Abelman Frayne & Schwab, United States of America.

The Respondent is inbuirsa, Oscar Suarez, Petroleros, Mexico, Mexico.

 

2. The Domain Name and Registrar

The disputed domain name <inbursabanco.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2006. On May 18, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 18, 2006, Register.com 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”), 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 May 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2006.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on June 27, 2006. 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 was established in Mexico in 1985 under the name Promotora Carso, S.A. de C.V. In 1992, the company was reorganized under the name Grupo Financiero Inbursa, S.A. de C.V. (“GFI”). GFI provides through its affiliated companies an array of financial services in retail and commercial banking, investment and security trading, venture capitalist services, and insurance and pension services. GFI’s subsidiaries include, among others, Banco Inbursa, S.A., Instituciуn de Banca Mъltiple, Grupo Financiero Inbursa, Fianzas Guardiana Inbursa, S.A., Grupo Financiero Inbursa, Operadora Inbursa de Sociedades de Inversiуn, S.A. de C.V., Grupo Financiero Inbursa, Afore Inbursa, S.A. de C.V., Seguros Inbursa, S.A., Grupo Financiero Inbursa and Autofinanciamiento Inbursa, S.A de C.V. all of whom use the INBURSA trademark under license from GFI. GFI is among the largest financial institutions in Mexico with more than 5 million clients and funds in excess of US$12 billion.

GFI owns trademark registrations for INBURSA in Mexico and other countries for insurance and financial services (Class 36). In addition, GFI owns other trademark registrations incorporating INBURSA including Mexican Trademark Registration No. 674305 INBURSA.COM.MX dated August 25, 2000, in relation with web pages services offering insurance and financing services. This registration antedates the registration of Respondent’s domain name <inbursabanco.com>.

GFI or its affiliate registered the domain name <bancoinbursa.com> on January 17, 2000, and has a website associated with this domain name offering financial and banking services.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to the Complainant’s trademark INBURSA. The term “banco” is the Spanish word for “bank”. The word “bank” or its Spanish equivalent “banco” is a generic or descriptive term in the field of financial services and banking services, and as such, cannot serve to distinguish the domain name <inbursabanco.com> from GFI’s trademark INBURSA. In fact, given the Complainant’s activities in the financial and banking services field, the addition of such term heightens the likelihood of confusion. The domain name <inbursabanco.com> is a mere reversal of GFI’s subsidiary’s company name Banco Inbursa, S.A. and GFI’s legitimate domain name <bancoinbursa.com>. Such a reversal does not create a new or different mark.

The Respondent has not received any license or consent, express or implied, to use the trademark in a domain name or in any other manner from the Complainant. The Respondent has no right or legitimate interest in respect of the domain name. Prior to the registration of the domain name <inbursabanco.com>, the Respondent did not use INBURSA or any mark containing INBURSA as a trademark, company, business or trade name. The Respondent is not commonly known in reference to INBURSA or any combination of this mark.

The Complainant’s trademark is distinctive and it is unlikely that inbursabanco.com would have been registered but for the renown of the mark.

The Respondent does not use the domain name <inbursabanco.com> in connection with a bona fide offering of goods or services. Respondent is engaged in the mala fide use of the domain name for commercial gain by using the domain name for phishing (the Respondent has sent emails purporting to originate from [email address]@inbursa.com.mx).

The domain name was registered and is being used in bad faith. The Respondent registered and is using the domain name <inbursabanco.com> to solicit confidential bank account information from persons using Complainant’s services (“phishing”) by sending emails that appear to originate from Complainant (“spoofing”), which emails also incorporate the Trademark and other indicia of origin of Complainant. This is a violation of the bad faith registration and use provisions. The website formerly associated with <inbursabanco.com> requested confidential client information. While this has now been removed, the potential for phishing and obtaining information by deception in the future remain.

The Respondent registered and uses the domain name primarily to disrupt the business of a competitor, GFI. Through its use of an identical or confusingly similar domain name and the inclusion of the Trademark and other indicia of origin in Respondent’s phishing email, Respondent has made itself a competitor of Complainant.

B. Respondent

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

 

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 are satisfied:

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).

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. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.

On the first point, the record clearly shows that Complainant has trademark rights in the INBURSA mark.

As to the second question, the Panel finds that the domain name is confusingly similar to such mark. As a rule, when a domain name wholly incorporates a complainant’s mark and only adds a generic word, that is sufficient to establish confusing similarity for purposes of the Policy. Confusion is heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark. (See, e.g., Volvo Trademark Holding AB v. Lost in Space, SA, WIPO Case No. D2002-0445; Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020; Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026; and Alamo Rent-A-Car Management, LP v. Patrick Ory, WIPO Case No. D2003-0461).

The Panel thus finds that the Complainant has rights in the INBURSA mark, and that the Domain Name is confusingly similar to such mark.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?

The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant’s prior use of the INBURSA marks and was never authorized to use Respondent’s marks. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the Domain Name.

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.”

There is no evidence before the Panel that the Respondent has made any bona fide offering of goods or services under the name Inbursa, and the Complainant contends that the Respondent is not commonly known by the Domain Name. There is no evidence before the Panel that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product.

The Respondent registered the domain name because in all probability he knew of the Complainant and the type of services offered by the Complainant and tried to attract Internet users for commercial gain by “spoofing” and “phishing”. The Panel notes that these are practices which have become a serious problem in the financial services industry worldwide. This is a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv). “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user Ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities. See Halifax Plc. v. Sontaja Sanducl, WIPO Case No. D2004-0237; CareerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251; Finter Bank Zьrich v. N/A, Charles Osabor, WIPO Case No. D2005-0871; and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228.

In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

 

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, <inbursabanco.com> be transferred to the Complainant.

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Daniel J. Gervais
Sole Panelist

Dated: July 5, 2006