WIPO-UDRP Entscheid
D2003-0475
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Bilbao Vizcaya Argentaria S.A. v. Nicolas Zalcberg, Z & A Group
Case No. D2003-0475
1. The Parties
The Complainant is Banco Bilbao Vizcaya Argentaria S.A., of Madrid, Spain, represented by Enrique J. Sirvent of Spain.
The Respondent is Nicolas Zalcberg, Z & A Group, of Montevideo, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <wwwbbva.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2003. On June 19, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 21, 2003, Go Daddy Software 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. 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 June 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on July 18, 2003.
The Center appointed Daniel Peña as the sole panelist in this matter on July 28, 2003. 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 owns the registrations for the trademark "BBVA" in many countries around the world. The Complainants rights in several of the trademarks "BBVA" pre-date the Respondents registration of the disputed domain name.
The Complainant's registered trademarks include, amongst many others, the following:
European Community Trademarks:
FILE NUMBER
TIPO
TM
DATE APPL. AFSOLICITUD
DATE REG.
CLASS
A 0001355270
D
BBVA
21/10/1999
20/11/2000
1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 37, 39, 40, 41, 42.
A 0001952746
M
BBVA
14/11/2000
16/01/2002
35, 36, 38.
A 0001973965
M
BBVA
24/11/2000
30/01/2002
9, 16, 42.
A 0001457746
M
BBVA
11/01/2000
02/07/2001
1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42.
US Trademarks:
FILE NUM.
TIPO
TM
APPL. DATE
REG. DATE
CLASES
MX 2562867
D
BBVA
23/11/1999
23/04/2002
16.
MX 2561023
D
BBVA
23/11/1999
16/04/2002
35.
MX 2562869
D
BBVA
23/11/1999
23/04/2002
36.
MX 2562866
D
BBVA
23/11/1999
23/04/2002
38.
MX 2561073
M
BBVA
28/01/2000
16/04/2002
36.
MX 2562931
M
BBVA
28/01/2000
23/04/2002
38.
MX 2569053
M
BBVA
28/01/2000
14/05/2002
9.
MX 2562929
M
BBVA
28/01/2000
23/04/2002
16.
Spain Trademarks:
FILE NUMBER
TM
APPL. DATE-
REG. DADateFRESOLUCIO
CLASES
M 0002264652
BBVA
19/10/1999
07/03/2000
35.
M 0002264653
BBVA
19/10/1999
22/05/2000
36.
M 0002264654
BBVA
19/10/1999
07/03/2000
38.
M 0002265322
BBVA
22/10/1999
07/03/2000
39.
M 0002265324
BBVA
22/10/1999
07/03/2000
41.
M 0002265323
BBVA
22/10/1999
07/03/2000
40.
M 0002265325
BBVA
22/10/1999
07/03/2000
42.
M 0002265320
BBVA
22/10/1999
06/03/2000
34.
M 0002265319
BBVA
22/10/1999
06/03/2000
33.
M 0002265318
BBVA
22/10/1999
06/03/2000
32.
M 0002265317
BBVA
22/10/1999
06/03/2000
31.
M 0002265316
BBVA
22/10/1999
06/03/2000
30.
M 0002265315
BBVA
22/10/1999
06/03/2000
29.
M 0002265314
BBVA
22/10/1999
06/03/2000
28.
M 0002265313
BBVA
22/10/1999
06/03/2000
27.
M 0002265312
BBVA
22/10/1999
06/03/2000
26.
M 0002265311
BBVA
22/10/1999
06/03/2000
25.
M 0002265310
BBVA
22/10/1999
06/03/2000
24.
M 0002265309
BBVA
22/10/1999
06/03/2000
23.
M 0002265306
BBVA
22/10/1999
06/03/2000
20.
M 0002265307
BBVA
22/10/1999
06/03/2000
21.
M 0002265308
BBVA
22/10/1999
06/03/2000
22.
M 0002265305
BBVA
22/10/1999
06/03/2000
19.
M 0002265304
BBVA
22/10/1999
06/03/2000
18.
M 0002265303
BBVA
22/10/1999
06/03/2000
17.
M 0002265302
BBVA
22/10/1999
06/03/2000
16.
M 0002265301
BBVA
22/10/1999
06/03/2000
15.
M 0002265300
BBVA
22/10/1999
06/03/2000
14.
M 0002265299
BBVA
22/10/1999
06/03/2000
13.
M 0002265298
BBVA
22/10/1999
06/03/2000
12.
M 0002265297
BBVA
22/10/1999
06/03/2000
11.
M 0002265296
BBVA
22/10/1999
06/03/2000
10.
M 0002265295
BBVA
22/10/1999
06/03/2000
9.
M 0002265287
BBVA
22/10/1999
06/03/2000
1.
M 0002265289
BBVA
22/10/1999
06/03/2000
3.
M 0002265290
BBVA
22/10/1999
06/03/2000
4.
M 0002265291
BBVA
22/10/1999
06/03/2000
5.
M 0002265292
BBVA
22/10/1999
06/03/2000
6.
M 0002265293
BBVA
22/10/1999
06/03/2000
7.
M 0002265294
BBVA
22/10/1999
06/03/2000
8.
M 0002265288
BBVA
22/10/1999
06/03/2000
2.
M 0002265321
BBVA
22/10/1999
07/03/2000
37.
Uruguay Trademarks:
FILE NUM.
TM
APPL. DATE
REG. DATE
CLASS
MX 317965
BBVA
27/10/1999
24/07/2000
9.
MX 317966
BBVA
27/10/1999
18/08/2000
16.
MX 317967
BBVA
27/10/1999
18/08/2000
35.
MX 317968
BBVA
27/10/1999
18/08/2000
36.
MX 317969
BBVA
27/10/1999
18/08/2000
38.
The Complainant has also protected its trademarks internationally. BBVA registrations also exist in Andorra, Argentina, Benelux region, Brazil, Costa Rica, Cyprus, Dominican Republic, Egypt, Germany, Ireland, Italy, Lebanon, Mexico, Peru, Puerto Rico, South Africa, Swaziland, Venezuela and Zimbabwe.
5. Parties Contentions
A. Complainant
BBVA is one of the major players in the European banking market. The more than 90 thousand persons who together make up the BBVA Group, serving 35 million customers in 37 countries through a network of 7,500 branches, will continue to manage 400 million Euros to our characteristic high standards of excellence and individual responsibility, to the benefit of the organization, customers, shareholders and society as a whole. The international presence of BBVA now dates back a century. In 1902, Banco de Bilbao opened a branch in Paris and, in 1918, another in London. In this respect, the group was several decades ahead of other Spanish banks.
BBVA is involved in corporate, retail and international banking, and other financial services. The Complainant BBVA is one of the leading banks in the Spanish market. The Complainant BBVA is listed on nine different exchanges and operates in over 35 different countries.
The <wwwbbva.com> domain name is confusingly similar to the Complainants BBVA mark as the two are almost identical. In fact, the Respondents Domain Name incorporates the BBVA mark in its entirety combined with the letters "www".
The Respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term "bbva" alone or combined with the denomination of the products or services that 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 Complainant contends that the disputed domain name was registered and has been used in bad faith. Because of the international notoriety of the Complainants trademark BBVA and the high profile of the bank and the BBVA web site, the Respondent would have been fully aware of the Complainants and/or BBVA's rights and reputation prior to the registration of the disputed domain name and was in any event on constructive notice of the trademark registrations and other domain name registrations. The disputed domain name represents an example of "typo-squatting," which is a deliberate attempt to exploit a common typographical mistake of Internet users or search engines to lure Internet users to the Respondents site. The disputed domain name is used to divert Internet users to gambling services offered by the Respondent's site directly or by an organization for which the Respondent acts as a portal.
B. Respondent
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Given that the domain name <wwwbbva.com> is not identical to trademark BBVA, registered and used in several countries by the Complainant, the Panel must examine if both expressions are confusingly similar.
The inclusion of the letters "www" as the initial part of the domain name registration allows this Panel to infer that the Respondent wanted to use this group of letters that stand for "world wide web".
With respect to the first requirement, the Panel considers that the fact of including the letter "w" three times does not make a sufficient difference between the domain name and the Complainants trademark. On the contrary, and considering the requirement that the disputed domain name and the trademark must be confusingly similar, this Panel believes that the expression <wwwbbva> is similar to trademark BBVA and, therefore, may confuse the public about the business origin, the quality of products or services, about the title-holder of the domain name and, above all, about the actual owner of the web page published under the disputed domain name.
B. Rights or Legitimate Interests
The Complainant has shown sufficient evidence about his legitimate rights over the expression "bbva" not only in his country of origin but also in a number of other countries. The Complainant has also shown evidence about the extensive use of such expression in trade during several years so as to reach the recognition of the public.
The Complainant contends that the Respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term "bbva" alone or combined with the denomination of the products or services that could eventually offer in the market. By not replying to the Complainants contentions, the Respondent has failed to show evidence to this Panel about his possible legitimate rights in the disputed domain name.
C. Registered and Used in Bad Faith
In accordance with the Rules, the Panel shall first examine whether bath faith existed at the time of registration and then whether the use of the disputed domain name is also a bad faith use.
With regard to the domain name registration, the Panel considers that bad faith existed since the Respondent registered the domain name mainly in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name Policy 4(b)(ii). This is particularly due to the ample recognition that trademark BBVA possess internationally.
With respect to bad faith use, both the evidence presented by the Complainant and the Panel's own investigations, show that the disputed domain name has been re-directed to an on-line casino page located at "www.elcasino.com". This suggests that the use of the domain name by the Respondent has intentionally attempted to attract, for commercial gain, internet users to his web site 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 his web site or location or of a product or service on his web site or location.
Additionally, there is evidence that during these proceedings, the parties exchanged e-mails regarding the price of a possible transfer. In such e-mails the Respondent refers to a price of four thousand US dollars, an amount that exceeds the customary cost of acquisition of a domain name. In accordance with the Policy, the foregoing is another argument supporting what has been previously indicated by this Panel about the existence of bad faith in the registration and use of the disputed domain name.
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, <wwwbbva.com> be transferred to the Complainant.
Daniel Peña
Sole Panelist
Dated: August 8, 2003
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