DECISION

Grupo Financiero BBVA Bancomer & Banco Bilbao Vizcaya Argentaria, S.A. v. Alfredo Labadia Pardo

Claim Number: FA0101000096455

PARTIES

Complainants are Grupo Financiero BBVA Bancomer and Banco Bilbao Vizcaya Argentaria, Mexico, MX (“Complainants”) represented by Liora E. Sneideman, of Van Etten, Suzumoto & Becket LLP.  Respondent is Alfredo Labadia Pardo, Huesca, Spain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "bbva-bancomer.com" registered with Register.com.

PANEL

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.

PROCEDURAL HISTORY

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 19, 2001.

On January 22, 2001, Register.com confirmed by e-mail to the Forum that the domain name "bbva-bancomer.com" is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 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.com 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.

On February 20, 2001, pursuant to Complainants’ request to have the dispute decided by a One Member panel, the Forum appointed the Honorable Carolyn Marks Johnson (Ret.) as Panelist.

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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainants

Complainants contend that (1) Respondent registered the BBVA-BANCOMER.COM domain name, which is identical and/or confusingly similar to the BANCOMER®, BBV® and BBVA marks in which Complainants have rights; that (2) Respondent has no rights or legitimate interests in the BBVA-BANCOMER.COM domain name; and that (3) Respondent has registered and is using the BBVA-BANCOMER.COM domain name in bad faith.”

B. Respondent

No response was submitted.

FINDINGS

Complainant, Grupo Financiero Bancomer, registered the BANCOMER trademark with the United States Patent and Trademark Office (“PTO”) under Registration Number 1,249,276, for a term of 20 years from August 23, 1983.   Complainant Grupo Financiero Bancomer is authorized to use and has used the BANCOMER trademark in connection with “Banking Services” under this registration.

Complainant Banco BilbaoVizcaya, registered the BBV trademark with the United States Patent and Trademark Office under the Reg. No.1,636,297 for a term of 10 years from February 26, 1991.  Complainant is authorized to use and have used the BBV trademark in connection with the following goods and services: insurance and financial services, namely, commercial banking services.

Complainant Banco Bilbao Vizcaya also filed applications with the United States Patent and Trademark Office for the BBVA trademark, including Serial Numbers 75/905974, 75/905,944, 75/905,773, 75/904739, 75/904725, 75/856,544, 75/856,407, 75/856,358, 75/856357 and 75/856257. Complainant uses the BBVA mark in connection with the following goods and services: telecommunications, communications through computer terminals, optic fiber nets and worldwide informatic nets; advertising and business services; publications including pamphlets, catalogues, stickers and publicity materials; recorded programs of operative systems for computers and other technology; insurance and financial affairs.

Complainant, Grupo Financiero BBVA Bancomer, with approximately 2,400 branches across Mexico, is one of Mexico’s largest banks. Grupo Financiero BBVA Bancomer was formed by the merger of Grupo Financiero BBV Probursa (“BBV”) and Grupo Financiero Bancomer.  The merger was approved on June 29, 2000.  BBV is a subsidiary of Complainant Banco Bilbao Vizcaya Argentaria, which holds approximately 30% of the outstanding shares, and thus effective control, of Grupo Financiero BBVA Bancomer.  Grupo Financiero BBVA Bancomer offers commercial and retail banking, as well as other financial services. 

Complainants commenced their activities on the worldwide web in order to further protect its various marks, such as BANCOMER, and to facilitate any users’ ability to locate the site on the worldwide web, Complainants registered numerous domain names.  A sample of such domain names includes: aforebancomer.com, bancomer.com, bancomercafe.com, bancomerdirecto.com, Bancomerexpress.com, bancomerpersonal.com, bbva-bancomer.net, cebancomer.com, clicbancomer.com, and clubbancomer.com.  In order to further protect its various marks, such as BBVA, and to facilitate any users’ ability to locate the site on the worldwide web, Complainants also registered numerous domain names. One such domain name is bbva.es. 

Respondent registered the domain name in question on March 9, 2000, only two months before the formal merger of the two companies in this dispute.  At the time that the Respondent registered the domain name, the general public had already been made aware of the impending merger.

In July 2000, Eduardo Valencia, one of Complainants’ employees, did a search on Internic to find out who had registered the BBVA-BANCOMER.COM domain name. Upon discovering Respondent’s contact information, Mr. Valencia contacted him via telephone.  Respondent informed Mr. Valencia that he was “in the best position” to give him the domain.  There were no discussions of a sale price at that time.

Mr. Valencia contacted Respondent again in August 2000.  During that conversation, Respondent informed Mr. Valencia that he wanted to use the money from the sale of the domain name to donate to a charity.  At that point, Mr. Valencia turned the matter over to Pedro Lascurain, Project Leader for Technologic Infrastructure Development. 

Mr. Lascurain contacted Respondent via telephone in the end of August or early September 2000.  Respondent informed Mr. Lascurain that he wanted to use the money from the sale of the BBVA-BANCOMER.com domain name to donate to a charity called “Hermanos de la Cruz Blanco” (Brothers of the White Cross).  Respondent further told Mr. Lascurain that he wanted Complainant to make an offer to him.  Mr. Lascurain offered Respondent $700 U.S. for the domain name and Respondent refused.

In mid-September 2000, Mr. Lascurain contacted Respondent via telephone.  Respondent told Mr. Lascurain that the charity was building a new building for $150,000 U.S. and that he wanted Complainants to pay him $15,000 U.S. to pay for 10% of the cost of the building.  Mr. Lascurain told Respondent that the amount was too high.  There were no further discussions between Complainants and Respondent regarding the sale of the domain name.

In October 2000, Complainants discovered that when a user types in the bbva-bancomer.com URL, they are taken to the web site (www.bancomer.com).  Complainants were not involved in this linking to their web site and do not know why the link is in place.  The facts permit an obvious inference that Respondent is responsible for the linking the domain name to Complainants’ web site. 

DISCUSSION

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 the 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 must 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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.

Identical to and/or Confusingly Similar

Complainants have rights in the BANCOMER and BBV service marks as evidenced by the U.S. PTO service mark registrations for these marks.  Complainants also have rights in the BBVA service mark given its pending trademark applications. The domain name in question is clearly a combination of the service marks of two merged entities.  As such, the domain name is identical and confusingly similar to the BANCOMER, BBV, and BBVA service marks owned by Complainants.  See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the domain name pokemonpikachu.com).  The inclusion of the top-level domain indicator “com” is inconsequential and does not alter the significance of the inclusion of a trademark or service mark in a domain name.  Also, the addition of a hyphen between the two marks is inconsequential and does not eliminate the similarity or likelihood of confusion between the domain name and the marks.  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

For these reasons, the Panel finds that the domain name "bbva-bancomer.com" is identical to and confusingly similar to Complainants’ marks that were used to create the domain name.  

Rights to or Legitimate Interests

Respondent is not a licensee of Complainants’ and is not otherwise authorized to use the BANCOMER or BBVA marks.  Further, Respondent was not authorized to register the domain name in question.

Respondent’s comments to Mr. Lascurain, as summarized by the Complainants in the Complaint, indicate that Respondent has not used or prepared to use the domain name for any commercial or non-commercial purpose.  Policy ¶ 4(c)(i), (iii).  Further, Respondent cannot possibly contend that it is commonly known by or identified with the BBVA and BANCOMER terms.  Policy ¶ 4(c)(ii).  Alternatively, it appears to the Panel that Respondent is attempting to financially profit from selling a distinct domain name that is comprised of two merging companies’ names.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).  Respondent also has recently linked the domain name in question to the Complainants’ official website.  This is further evidence that Respondent has no rights or legitimate interests in the domain name but seeks to exploit Complainants’ marks.

For these reasons, the Panel finds that Respondent has no rights to or legitimate interests in the marks used to create the domain name in question.

Registration and Use in Bad Faith

As stated in the Complaint, Respondent rejected Complainants’ offer to purchase the domain name in question for $700 and instead requested that Complainants pay the Respondent $15,000.  Based on these conversations between Respondent and Complainants’ agent, it is evident that Respondent registered the domain name in question in order to significantly profit by selling the domain name to the Complainants. This is evidence of bad faith.  Policy ¶ 4(b)(i).  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 the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion and subsequently offered them for sale).

For these reasons, the Panel concludes that Respondent registered and attempted to use the domain name in bad faith.

DECISION

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

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

Honorable Carolyn Marks Johnson (Ret.), Panelist

Dated: March 2, 2001

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