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Grupo Financiero Inbursa, S.A. de C.V. v. Verónica Aquino Cruz [2004] GENDND 1325 (25 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grupo Financiero Inbursa, S.A. de C.V. v. Verónica Aquino Cruz

Case No. D2004–0724

1. The Parties

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

The Respondent is Verónica Aquino Cruz of Mexico City.

2. The Domain Names and Registrar

The disputed domain name <bancolnbursa.com> (the letter “l” following the word “banco”) is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on September 8, 2004, and in hard copy form on September 14, 2004. On September 9, 2004, the Center acknowledged receipt of the Complaint and on September 14, 2004, the Center transmitted by e-mail to Melbourne IT Ltd. a request for registrar verification in connection with the domain name at issue. On September 14, 2004, Melbourne IT Ltd. transmitted by e-mail 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 Complainant 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 September 14, 2004. In conformity with the Rules, paragraph 5(a), the due date for Response was October 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2004.

The Center appointed Reynaldo Urtiaga Escobar as the Sole Panelist in this matter on October 11, 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.

There is no controversy that English is the language of these proceedings as it is the language of the domain name Registration Agreement.

As fixed by the Center, the Panel’s decision is due by October 25, 2004.

4. Factual Background

Complainant is a Mexican corporation authorized by the government to operate as a financial and commercial banking institution in Mexico. Indeed, Complainant is amongst the largest financial institutions in Mexico with more than 5 million clients and funds in excess of US$12 billion.

Complainant owns and has used nationwide in the Mexican Republic for over 12 years the trademark “INBURSA”, which was registered in Mexico on January 19, 1994, under Registration No. 450596 currently in force, in class 36 covering insurance and financial services. The “INBURSA” service mark has also been registered in a number of countries.

To advertise its financial products and services, Complainant maintains its own websites for which it registered the domain names <inbursa.com.mx> and <inbursa.com> on April 20, 1995, and April 7, 1999, respectively.

By virtue of Complainant’s extensive use and advertising of services under the “INBURSA” trademark, it is unquestionable that the mark has become very distinctive and enjoys a strong reputation in Mexico.

For its part, Respondent registered the domain name that is the subject of this dispute on July 6, 2003.

Having found out about Respondent’s registration of the domain name at issue and noting that the associated website made several unauthorized references to Complainant’s registered trademarks (in regard to the “INBURSA” word mark and device), which was attested by a Notary Public on July 19, 2004, Complainant proceeded to locate the Respondent’s real property at the address appearing on record for the disputed domain name in the Whois database. Following the unsuccessful attempt to locate the domicile indicated at the aforementioned source, which was again attested by the same Public Notary on August 5, 2004, Complainant moved to commence the present proceedings.

5. Parties’ Contentions

A. Complainant

Complainant’s submissions are as follows:

(i) The domain name at issue is identical or confusingly similar to Complainant’s registered service mark.

(ii) As to the first element of the domain name at issue, that is the word “banco” (the Spanish word for bank), it is submitted that same is a generic or descriptive term in the field of financial and banking services, and as such, cannot serve to distinguish the domain name <bancolnbursa.com> (the letter “l” following the word “banco”) from Complainant’s service mark “INBURSA”. It is contended that in light of Complainant’s activities in the financial and banking services field, the addition of the term “banco” indeed heightens the likelihood of confusion with Complainant’s service mark.

(iii) In regard to the second part of the domain name, that is the term “lnbursa”(the letter “l” followed by “nbursa”), it is noted that same differs by only one letter from Complainant’s service mark “INBURSA”. It is submitted that as the letters “l” and “i” are in close proximity on the computer keybord, those are liable to be mistyped and also that both letters, especially in the lowercase form, are visually similar. In sum, Respondent’s registration of the domain name at issue constitutes what is known as “typo-piracy” or “typo-squatting”, which practice has been condemned by several WIPO UDRP Panels.

(iv) The Respondent has no rights or legitimate interests in respect of the domain name in question for he has not received from the Complainant any license or consent, express or implied, to use Complainant’s service mark in a domain name or in any other manner.

(v) On the information and belief, it is submitted that the Respondent does not use BANCO LNBURSA as part of his trade or company name and that he is not otherwise commonly known in reference to BANCO LNBURSA or <bancolnbursa.com> (the letter “l” following the word “banco”).

(vi) The Respondent purports to offer identical services under the domain name in issue to those offered by the Complainant when in fact the Respondent is not licensed or otherwise authorized by any governmental agency in any jurisdiction to engage in the rendering of financial services.

(vii) The domain name <bancolnbursa.com> (the letter “l” following the word “banco”) is not used in connection with a bona fide offering of goods or services as the Respondent’s associated website includes numerous references to the Complainant’s registered trademarks.

(viii) Respondent’s behavior consisting of the taking of the basic layout of the Complainant’s web page and the supposed association with the Complainant without the latter’s consent, was calculated to engender confusion among the purchasing public and the trade by falsely representing that the Respondent was associated with or authorized by the Complainant and to tarnish the trademark for the commercial gain of the Respondent.

(ix) Based on the fame of the Complainant’s service mark at the time when the domain name <bancolnbursa.com> (the letter “l” following the word “banco”) was registered, it can be inferred that the Respondent had notice of the mark when it registered the domain name in point.

(x) As the Complainant’s mark is a distinctive trademark, it is unlikely that <bancolnbursa.com> (the letter “l” following the word “banco”) would have been registered but for the renown of the trademark, thus giving rise to a presumption that the Respondent does not have any legitimate rights or interests in the disputed domain name.

(xi) The domain name in issue was registered and is being used in bad faith as the Respondent provided false contact information in breach of the Registration Agreement of the domain name. By doing so, the Respondent has taken deliberate steps to ensure that its true identity can not be determined, hence given rise to a presumption of bad faith use and registration for the intent to profit.

(xii) Through its use of an identical or confusingly similar URL address, and the inclusion of the trademark and other indicia of origin on Respondent’s web page, the Respondent has made itself a competitor of Complainant in the sense of Policy 4(b)(iii). Furthermore, it is submitted that because Respondent is not making a bona fide offering of goods or services under the contested domain name, there is no reason for Respondent’s use of its domain name other than to disrupt Complainant’s business.

(xiii) In registering and using the disputed domain name, the Respondent has intentionally attempted to a attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s service mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (Policy 4(b)(iv)). The use of a domain name which is a misspelling of Complainant’s trademark is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy.

(xiv) The use of a distinctive trademark as a domain name to link to Respondent’s website, which website is unconnected with the Complainant, implies that the Respondent registered and used the domain name at issue in bad faith for commercial gain and at the expense of the Complainant.

(xv) The domain name in issue and the associated web page are so obviously connected with the well-known trademark and its services that the very use of the name by someone with no connection with Complainant suggests opportunistic bad faith.

(xvi) Respondent’s bad faith is evidenced by the use of a domain name with request for user ID and password that may defraud Complainant’s clients.

B. Respondent

No counter-arguments were submitted on behalf of Respondent.

6. Discussion and Findings

Preliminary

It is worth noting that given Respondent’s failure to submit a Response, the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No. 95095 (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

General

According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

A. Identity or Confusing Similarity

First of all the Panel notes that the Complainant’s mark is a very distinctive one for it enjoys a strong reputation in Mexico in the field of financial and commercial banking services.

Secondly, as noted in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but, rather, whether the domain name in issue, standing alone, is sufficiently similar to the Complainant’s trademark to justify a remedy under the Policy.

Turning to the relevant question of this part, on its face, it is evident that the disputed domain name is confusingly similar to the Complainant’s mark, where the latter is wholly included in the domain name in point, because the mere incorporation of the word “banco” is too tenuous and insubstantial to detract from this conclusion.

Further, case law has consistently confirmed that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. See Experian Information Solutions Inc. v. Credit Research Inc., WIPO Case No. D2002-0095 (“credit” added to mark EXPERIAN); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, (“buildingsociety” added to trademark BRITANNIA); Chanel Inc., v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” were found to be confusingly similar to the CHANEL mark).

Indeed, the fact that Respondent had intentionally misspelled Complainant’s service mark and domain names by employing a letter “l” in place of the letter “i” contained in Complainant’s registered signs is by all means inconsequential and Respondent’s conduct in this case squarely falls within the so-called practice of “typo-squatting”, which has been reprehended by numerous WIPO UDRP Panels. See for instance Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588 (finding confusion to exist between the mark GAME BOY and the domain name <gameb0y.com> which was spelled with the number zero in place of the letter “o”); also Bank for International Settlements v. BIS, WIPO Case No. D2003-0986 (holding that Respondent’s domain name <bankforinternationalsettlement.com> was “identical” to Complainant’s name and mark BANK FOR INTERNATIONAL SETTLEMENTS) and more recently Overstock.com Inc. v. Larus H. List, WIPO Case No. D2004-0215 (where it was decided that the disputed domain name <0verstock.com> -the number “0” followed by “verstock.com”-, was virtually identical to Complainant’s mark OVERSTOCK.COM).

The finding of confusion in this case as to visual appearance, overall impression, sound, connotation and commercial impression is strengthened by the fact that in the physical world, the term “banco” is inextricably linked to Complainant’s mark for as noted by Complainant, the Spanish vocable for “bank” is a generic term in the banking field and as such can not be part of Complainant’s trademark even though the word “banco” is commonly found by the consumers in the marketplace, to be used in conjunction with the “INBURSA” word mark.

Accordingly, this Panel finds that the Complainant has proven the first threshold of paragraph 4(a) of the Policy.

B. Legitimacy of Respondent’s Interest

Complainant asserts to have never granted to Respondent any license or consent, express or implied, to use Complainant’s service mark in a domain name or in any other manner. Furthermore, on the information and belief, it is submitted that Respondent is not licensed or otherwise authorized by any governmental agency in any jurisdiction to engage in the rendering of financial services so as to justify its purported interest in the offering of online banking services that Respondent allegedly conducts under the domain name in issue.

In view of this and in line with other prior decisions, the Panel is satisfied that Complainant has shown prima facie evidence with respect to this element of the Policy thus shifting the burden of proof on Respondent. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; and Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.

In this vein, the Panel chooses to view Respondent’s failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc and D3M Domain Sales, eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Regardless of the foregoing, this Panel notes that by misappropriating the basic layout of Complainant’s own website and making numerous unauthorized references to Complainant’s distinctive marks within the contested domain name’s associated website, the Respondent was passing himself off as Complainant to the detriment of the latter’s clients and reputation, which deceptive behavior under no circumstance could ever be regarded as a bona fide offering of goods or services, or a legitimate non-commercial or fair use of a domain name in the sense of paragraphs 4(c)(i) and 4(c)(iii) of the Policy.

Accordingly, this Panel concludes that the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.

C. Registration and Use in Bad Faith

Complainant sets out uncontested evidence and argument in support of its contention that Respondent’s has registered and used the domain name in bad faith by having intentionally provided false data to the Registrar and misleadingly recording as Respondent’s address a non-existing domicile. In this respect, the Panel finds Respondent’s behavior to be in breach of paragraph 2 of the Policy, which clearly states:

“2.- Your representations. By applying to register a domain name…you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate…”.

Likewise, as pointed out by the Complainant, Respondent’s provision of false contact information contravenes Paragraphs 3.1 and 3.2 of the domain name Registration Agreement, which in turn provide that:

“3.1 Provision of Registration of Data. As part of the registration process, you are required to provide the registry administrator with certain information and to update this information to keep it current, complete and accurate. This information includes: (i) your full name, postal address, e-mail address, voice telephone number, and fax number if available;…”

“3.2 Inaccurate or Unreliable Data. You hereby represent and warrant that the data provided in the domain name registration application is true, correct, up to date and complete and that you will continue to keep all the information provided up to date. Your willful provision of inaccurate or unreliable information, your willful failure promptly to update information provided to the registry administrator, or any failure to respond for over five calendar days to our inquiries addressed to the e-mail address of the administrative, billing or technical contact then appearing in the Whois directory with respect to a domain name concerning the accuracy of contact details associated with any registration(s) or the registration of any domain name(s) registered by or through you or your account, shall constitute a breach of this Agreement…”

In regard to the foregoing, it has been found that the intentional supply of false registration details as in the present case constitutes bad faith under paragraph 4(b) of the Policy. See Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 and Oakley, Inc. v. Kenneth Watson, WIPO Case No. D2000-1658.

In addition, the Panel sides with Complainant’s submission that due to the distinctive character of Complainant’s service mark and the latter’s widespread presence in Mexico, it is highly unlikely that the contested domain name would have been registered if it were not for Complainant’s service mark. Therefore, this Panel finds that Respondent’s registration of the domain name at issue, and continuous use of the same, appears to be an attempt to exploit the fame and goodwill of Complainant’s service mark by diverting Internet traffic intended for Complainant’s web page to his own web page. Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070.

Lastly, in the Panel’s view, Respondent’s behavior can only strengthen the hypothesis that by willfully choosing to misspell Complainant’s service mark, it is proven that he knew of the existence of Complainant’s service mark, SADD, Inc. v. Steven Weber, et al, WIPO Case No. D2000-0170, hence constituting evidence of his bad faith in registering and using a confusingly similar domain name without any legitimate right or interest whatsoever.

The Panel thus finds that Policy 4(a)(iii) has been satisfied.

7. Decision

In light of all the foregoing, this Panel concludes that the Complainant has met its burden as established by paragraph 4(a) of the Policy. Accordingly, the Panel orders that the domain name <bancolnbursa.com> (the letter “l” following the word “banco”) be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist

Dated: October 25, 2004