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Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon [2004] GENDND 809 (4 June 2004)

1. The Parties

The Complainant is Banco Bilbao Vizcaya Argentaria, S.A., Madrid, Spain, represented by Mr. Enrique J. Sirvent.

The Respondent is Mr. Victor Edet Okon, BBVAFinancial and Trust Inc., Madrid, Spain.

2. The Domain Name and Registrar

The disputed domain name is <bbvafinance.org> (hereinafter, the Domain Name), being registered with Tucows, Inc. (hereinafter, Tucows).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2004. On April 1, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On the same date, Tucows 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 (hereinafter, the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, 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 April 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2004.

The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on May 17, 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.

4. Factual Background

The Complainant is a Spanish entity that owns and manages a global group of banks, being one of the leading financial entities in the Spanish market and one of the major players in the European and Latin American markets.

At present, the Complainant provides its clients with corporate, retail and international banking and other financial services, being present in 37 countries by means of a network of 7,500 branches and more than 90,000 employees.

The Complainant uses the "BBVA" trademark for the development of all its activities. Consequently, the Complainant holds many Spanish, Community and international trademarks based on the name "BBVA". In this regard, the Complainant is the owner, inter alia, of the following trademarks:

Trademark	Type	Registration no.	Class
BBVA	Spanish	2454197	43
BBVA	Spanish	2454198	44
BBVA	Spanish	2454199	45
BBVA	Community	2569614	43, 44, 45
BBVA	Community	2569580	43, 44, 45
BBVA	Community	1349943	35, 36, 38
BBVA	U.S.	2705771	9
BBVA	Canadian	567987	9,16, 35, 36, 38
BBVA	Japanese	768895	36

The "BBVA" trademarks have become well-known in Spain as a consequence of their extensive use by the Complainant, linking them not just to its banking and financial services but also to philanthropic and not-for-profit activities such as social programs, education and training, promotion of art and culture as well as health and socio-economic research.

The Complainant currently does also own more than 20 gTLDs exclusively or partially based on the name "BBVA" and more than 60 ccTLDs based on the name "BBVA". By means of said domain names, the Complainant offers general information on its group as well as electronic banking services for its customers.

The Respondent has not filed any response to the complaint and, therefore, has not identified himself before the Panel. In appearance, the Respondent is a Spanish citizen residing in Madrid (Spain) that is somehow linked to a supposed financial entity named BBVA Financial and Trust Inc. Nonetheless, the Complainant has proved that such an entity is not active in Spain at present and that the address provided by the Respondent in the Whois database does not host any legal registered entity.

The Domain Name is currently linked to an inactive website where the only message that is posted states: "Account suspended. Your account has been suspended. We have sent you an email explaining why. This email should also contain information on how you can unsuspend your account". Apparently, such a message has been posted by the company offering hosting services to the Respondent. As stated above, the Respondent has not provided the Panel with information on the use of the Domain Name as well as on the reasons why the corresponding website has been suspended.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

- It holds a large number of national, Community and international trademark registrations on the name "BBVA", which it has extensively used in Spain and world-wide and, consequently, they have become well-known;

- The Domain Name is confusingly similar to the "BBVA" trademarks on which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the Domain Name;

- The Respondent registered and uses the Domain Name in bad faith; and

- As a consequence of the above-mentioned findings, the Domain Name should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In accordance to Paragraph 4(a) of the Policy, the Complainant must prove to the Panel the concurrence of three circumstances in order to obtain the transfer of the Domain Name.

Said circumstances are the following ones:

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

(ii) That the Respondent does not hold rights or legitimate interests in respect of the Domain Name;

(iii) That the Domain Name has been registered and is being used by the Respondent in bad faith.

Consequently, the Panel shall further analyze the concurrence or not of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

The first circumstance that must be given is that the Domain Name may be considered to be identical or confusingly similar to the "BBVA" marks on which the Complainant holds rights.

The comparison between the Domain Name and the Complainant's trademarks shows two main differences between them:

- <bbvafinance.org> is composed by the mark "BBVA" combined with the generic term "finance".

- The domain name does include the ".org" suffix.

In regards of the first difference, the Panel considers that the Domain Name clearly relates to the "BBVA" trademarks, as in the Domain Name the generic term ("finance") is just a complement to the BBVA mark.

Moreover, such a generic term is clearly related to the Complainant's activities. Thus, the Domain Name could lead the Internet users to confusion (at least at a first moment), due to the inclusion of a well-known trademark combined with a generic term clearly linked with the Complainant's activities. This approach has been applied by many decisions adopted under the Policy such as, for example Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Adaptive Molecular Tech., Inc. v. Priscilla Woodward and Charles R. Thorton, WIPO Case No. D2000-0006 and Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363.

Furthermore, such a test of confusion must be specially strict when Complainant is the owner of well-known trademarks. Said risk of confusion does increase in the present case as, according to what has been stated above, the "BBVA" trademarks are notorious in Spain, where the Respondent does apparently reside.

Consequently, the Panel considers that the disputed domain name creates somehow the appearance that the Complainant has registered or has permitted the registration and use of the Domain Name or at least the Complainant does support or endorses its use by the Respondent, with the corresponding confusion that such a fact implies.

The second difference between the "BBVA" trademarks and the Domain Name is the inclusion of the ".org" suffix in the latter one. Such an inclusion is due to the current technical specificities of the domain name system. Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the disputed domain names and the Complainants' trademarks (see, for example, New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al., WIPO Case No. D2003-0172).

As a consequence of what has been stated, the Panel considers that the Domain Name is confusingly similar to the "BBVA" trademarks owned by the Complainant. Therefore, the Panel considers that the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

In second place, Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. In this regard, Paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the disputed domain name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the disputed domain name, even when no trademark or service mark right has been acquired; or

- To make a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present case, none of the above-mentioned circumstances applies. Indeed, taking into account the information provided by the Whois database, the Respondent would be linked to a supposed-financial company seated in Spain. Such activities are severely regulated in the above-mentioned country, requiring the fulfillment of a great number of conditions as well as the registration of the corresponding entity before several public registries. As shown by the Complainant, neither an entity named "BBVAFinancial and Trust, Inc." is registered in Spain, nor is Mr. Victor Edet Okon a financial intermediary, according to the conditions set out by Spanish law. Thus, it is unlikely that the Domain Name was registered for the purpose of using it in connection with a good-faith offer of goods or services.

In addition, it is important to remind that, as stated before, "BBVA" may be considered as a well-known trademark in Spain (where the Respondent seems to be located). Therefore, it is quite unlikely that a "coincidence" has occurred in the present case. On the contrary, it seems that the Respondent was clearly aware of the existence of the Complainant's trademarks and he did not register the Domain Name for other purposes than to include the Complainant's trademarks in said domain name.

Finally, the Panel wants to emphasize the fact that the Respondent has not filed any response to the Complaint in this proceeding, an attitude that seems to prove its clear absence of rights or legitimate interests in the Domain Name or at least its lack of interest in demonstrating the contrary.

With regard to this circumstance, many decisions adopted under the Policy (see, for example Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 or Adventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401), have stated that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other evidence of its rights or legitimate interests in the disputed domain names.

The Panel considers that this approach is fully applicable to the present case. Indeed, the Respondent has not refuted any of the evidence provided by the Complainant in regards neither of his lack of rights or legitimate interests in the disputed domain name nor of the doubts related to his real identity.

As a consequence, the Panel considers that the Respondent does not hold rights or legitimate interests in the disputed domain name and that the second condition set out by the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The last of the elements foreseen by Paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the Domain Name in bad faith.

In this regard, it is important to remind that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, for example). Consequently, the Complainant must clearly show that: (i) the Domain Name was registered by the Respondent in bad faith and, (ii) the Domain Name has been used by the Respondent in bad faith.

Further, the concurrence of said circumstances in the present case shall be analysed.

i. Registration of the Domain Name in bad faith

First of all, the Complainant must prove that at the time of registering the Domain Name, the Respondent was guided by bad-faith purposes. In this regard, once again it is important to remind that, due to its extensive use by the Complainant, "BBVA" is a well-known trademark in Spain. Consequently, it seems quite clear that, taking into account the circumstances proved before the Panel, in this case the only feasible possibility seems to be that the Respondent registered the Domain Name in order to unfairly benefit from the Complainant's trademarks.

Moreover, some of the information provided by the Respondent in the Whois database seems to be false. Such a fact shows clear evidence of bad faith by the Respondent as it has adopted deliberate steps in order to avoid that anyone may know his real identity and contact information (In this regard see, for example, Consitex SA et Al. v. Lionheart Securities Corp., WIPO Case No. D2003-0285; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155 or Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111). Such a behaviour seems to be far from a bona fide conduct and, joint with the argument indicated before, leads the Panel to consider that the Respondent registered the Domain Name in bad faith.

ii. Use of the Domain Name in bad faith

The Complainant considers that the Respondent's "passive use" of the Domain Name may be deemed as a bad faith behaviour as foreseen by the Policy. As previously stated, the website linked to the Domain Name is currently inactive.

Such a "passive use" may be considered as an infringement of the above-mentioned paragraph if the circumstances applying to this case are taken into account. Indeed, if the Panel adopts a factual approach to the Respondent's behaviour (similar to the one applied in many decisions adopted under the Policy such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 or eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633), it is quite clear that the "passive use" held by the Respondent must be considered "bad faith" as considered by the Policy.

In order to reach such a conclusion the following facts must be taken into account:

- The "BBVA" trademark is well known in Spain, where the Respondent seems to be located;

- The Respondent has not filed a response to the Complaint within this proceeding. In consequence, the Respondent has not provided the Panel with any element or evidence of good faith in regards of the registration and use of the Domain Name;

- There is no evidence of actual or intended use in good faith of the Domain Name by the Respondent; and

- The Respondent did apparently use false information when registering the Domain Name. Thus, it seems that he was aiming at avoiding the inclusion of real information in the Whois database. As stated in many decisions (see above), such a behaviour constitutes a clear evidence of bad faith in the sense of the Policy. Likewise, the use of false contact information does also constitute a breach of Clause 17 of Tucows' registration agreement; and

- The Respondent did harm the Complainant's rights on the "BBVA" trademarks when registering the Domain Name. Such a behaviour constitutes a clear breach of Clause 2 of the Tucows' registration agreement, which does expressly require the registrant not to infringe third parties' rights by registering and using the corresponding domain name.

Taking into account the above-mentioned arguments, the Panel concludes that the evidence shown by the Complainant regarding the Respondent's passive holding of the disputed domain name satisfies the requirements foreseen by the Policy.

As a consequence, the Panel considers that the Complainant has been able to prove that the Respondent registered and has used the disputed domain name in bad faith, fulfilling the requirements set out by paragraph 4(a)(iii) of the Policy.

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 <bbvafinance.org> be transferred to the Complainant, Banco Bilbao Vizcaya Argentaria, S.A.

Albert Agustinoy Guilayn
Sole Panelist

Dated: May 31, 2004