Generic Top Level Domain Name (gTLD) Decisions

Complainants are Grupo Financiero BBVA Bancomer and Banco Bilbao Vizcaya Argentaria, S.A., Col Xoco, Mexico, D.F. ("Complainants") represented by Liora E. Sneideman, of Van Etten, Suzumoto & Becket LLP. Respondent is MIC, Closter, NJ, USA ("Respondent").

The domain names at issue are "bbva-bancomer.org", "bbvabancomer.com", and "bbvabancomer.org" registered with Bulkregister.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 18, 2001; the Forum received a hard copy of the Complaint on January 17, 2001.

On January 18, 2001, Bulkregister confirmed by e-mail to the Forum that the domain names "bbva-bancomer.org", "bbvabancomer.com", and "bbvabancomer.org" are registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bbva-bancomer.org, postmaster@bbvabancomer.com, postmaster@bbvabancomer.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

Complainants request that the domain names be transferred from Respondent to Complainants.

A. Complainants

B. Respondent

The Rules state the following with regard to default cases:

In this case, Respondent has not submitted a response, and therefore this Panel may infer, for the purposes of this decision, that the averments in the complaint are true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").

Complainants established the "BBV" and "BANCOMER" marks prior to the time that Respondent registered the domain names in issue. Respondent registered the domain names on March 10, 2000 years after Complainants satisfied the requirements to register their "BANCOMER" and "BBV" marks.

Complainant BBVA has rights in the "BBVA" service mark as the owner of the service mark "BBVA" in the United States and throughout the world. Complainant BBVA has been using the "BBVA" mark for products and services offered throughout the Western Hemisphere. Complainants have invested substantially in the service marks associated with the services marketed under the "BANCOMER", "BBV" and "BBVA" brand names.

Respondent did not attempt to use the domain names for any purpose other than to sell them to Complainants. Complainant Bancomer has been using the "BANCOMER" mark on the worldwide web since November1999. At the present time, the bancomer.com web site receives approximately 250,000 visitors each month. Publicity about the merger between the two companies began several months prior to the actual merger.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants' undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The "bbva-bancomer.org", "bbvabancomer.com" and "bbvbancomer.org" domain names are identical to and/or confusingly similar to the "BANCOMER", "BBV" and "BBVA" service marks. The four domain names in question are simply a combination of the marks of two companies that have a business relationship. Each domain name begins with the "BBVA" mark, and ends with the "BANCOMER" mark, followed by a top-level domain indicator. Confusion exists even though Complainants’ marks were not previously registered together prior to the merger. See Kinko's Ventures, Inc. v. MIC, FA 95961 (Nat. Arb. Forum Dec. 26, 2000) (concluding that an alliance between Kinko’s and AOL "could lead a reasonable person to believe that a web site associated with either of the domain names at issue was affiliated or sponsored by Complainant").

Adding top-level domain names to the combination of Complainants’ marks does not eliminate the similarity or likelihood of confusion between the "BANCOMER", "BBV" and "BBVA" marks and the domain names registered by Respondent. See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name "microsoft.org" is identical to the mark "MICROSOFT").

Therefore, the Panel concludes that Complainants have met the burden of showing that the domain names in issue are identical to or confusingly similar to Complainants’ registered marks. Policy ¶ 4(a)(i).

Complainants have established their rights in the registered marks at issue here. Complainants further assert that Respondent has no rights or legitimate interests in the "bbva-bancomer.org", "bbvabancomer.com" and "bbvbancomer.org" domain names and Respondent does not deny this assertion.

Respondent has not attempted to use the domain name in connection with a bona fide offering of goods and services as required. Policy ¶ 4(c)(I). Nor is Respondent commonly known by any of the domain names as required. Policy ¶ 4(c)(ii). Respondent offered to sell the domain names to Complainants but has not made a legitimate noncommercial or fair use of the domain names as required. Policy ¶ 4(c)(iii).

Therefore, the Panel determines that Complainants met their burden to show that Respondent has no rights to or legitimate interests in the marks that were used to create the domain names at issue here. Policy ¶ 4(a)(ii).

Complainants have demonstrated that Respondent sought to profit from the domain names by seeking payments in excess of reasonable out of pocket costs to register these domain names. Respondent offered, in exchange for such sums, to return to Complainants domain names that were based on Complainants’ registered marks. Such a demand for payment has been deemed evidence of bad faith. See World Wrestling Fed’n Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Further bad faith is shown where Respondent read about the merger between Grupo Financiero Bancomer and Grupo Financiero BBV Probursa and then registered domain names using these respective marks. See Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 25, 2000) (finding bad faith where Respondent purchased the domain names on the date of Complainant’s press release regarding a merger and business expansion).

Therefore, the Panel concludes that Complainants have met their burden of showing that Respondent registered and attempted to use the domain names in issue in bad faith. Policy ¶ 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is Ordered that the domain names "bbva-bancomer.org", "bbvabancomer.com", and "bbvabancomer.org" be transferred from Respondent to Complainants.