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Banco Santander Central Hispano, S.A. v. Banco Santander Of Central Hispano [2005] GENDND 1457 (11 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Santander Central Hispano, S.A. v. Banco Santander Of Central Hispano

Case No. D2005-0631

1. The Parties

The Complainant is Banco Santander Central Hispano, S.A., Madrid, Spain, represented by Carmen de la Hoz Llarandi, Spain.

The Respondent is Banco Santander Of Central Hispano, New York, and Banco Santander Central Hispano, California, United States of America.

2. The Domain Names and Registrars

The disputed domain name <santander-central-hispano.com> is registered with eNom and <santander-central-hispano.net> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2005. On June 17, 2005, the Center transmitted by email to eNom and, on June 21, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On June 17, 2005, eNom transmitted by email to the Center its verification response and, on June 22, 2005, Melbourne IT trading as Internet Name Worldwide 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.

In response to a notification by the Center that the Complaint was deficient concerning the language of the administrative proceeding, the Complainant filed the Complaint in English on July 1, 2005. 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 July 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2005. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on July 28, 2005.

The Center appointed Isabelle Leroux as the sole panelist in this matter on August 8, 2005. 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 Banco Santander Central Hispano, S.A., one of the largest financial institutions in Europe. Its main activity concerns commercial banking.

In the Complaint, it is indicated that the Santander Central Hispano Group, backed by Spanish largest branch network, has consolidated its domestic market leadership position in the most important areas of financial business, reaching leading positions in terms of market share in loans and deposits.

Furthermore, the presence of Banco Santander Central Hispano extends throughout all major countries and financial centers. Among others, it has a prominent position in London, Paris, Frankfurt, New York and Miami, generating important financial flows in all of the aforementioned centers. With respect to retail banking abroad, this area embraces the commercial banking activities developed by the Group in Europe (Germany, Belgium, Italy and Portugal) and Latin America (Argentina, Bolivia, Brazil, Colombia, Chile, Mexico, Panama, Paraguay, Peru, Puerto Rico, Uruguay and Venezuela). It has more than 126,000 employees and 63 million customers.

The name and mark SANTANDER CENTRAL HISPANO is famous internationally and the Complainant’s banking services are well-known under its brand.

The Complainant informs the Panel that on January 22, 1999, the year in which the Banco Santander Central Hispano name was first used, applications were made to the Spanish Industrial Property Register for the trademarks BANCO SANTANDER CENTRAL HISPANO and the trademark SANTANDER CENTRAL HISPANO (and has provided copies of their certificates in Spain). Since then, both trademarks have been used continuously in numerous advertising campaigns for products and services of the Bank and also in daily references in the press and in sponsoring cultural events. The Complainant concludes that the result is that the SANTANDER CENTRAL HISPANO trademark is, without doubt, extremely well known in the international financial markets.

The Complainant now owns many trademark and service mark registrations for the mark SANTANDER CENTRAL HISPANO in particular in classes of services 35, 36, 38 and 42.

These include national registrations of the sign SANTANDER CENTRAL HISPANO, for example in the USA (registered in October 28, 2003, under number 2777303) where the Respondent is located, but also in Canada, Chile, Ecuador, Brazil, Argentina, Mexico, Japan, etc. The Complainant also owns OAPI, international trademarks and Community trademarks.

The Complainant has registered more than 30 domain names incorporating the SANTANDER CENTRAL HISPANO mark, and in particular the following ones:

- <santandercentralhispano.com>

- <santander-centralhispano.com>

- <santander-centralhispano.net>

On January 22 and March 29, 2005, the Respondent registered the domain names <santander-central-hispano.com> and <santander-central-hispano.net>.

The Respondent has used the domain names by creating contact email accounts (via MSN Personal Address Service) to perpetrate a worldwide lottery scam, according to the Complainant. It consists of invitation in writing for consumers to contact “their” bank in order to claim money. The letter, which is sent to consumers, bears a similar logo as the one of the Complainant. The details mentioned in the letter are false and refer to the disputed domain name <santander-central-hispano.com> as a contact email address.

The Respondent also attempted to create a website using the domain name <santander-central-hispano.net> via Microsoft, but this attempt was blocked by the Complainant and rejected by Microsoft.

On May 25, 2005, Complainant’s representative sent the Registrar eNom a message by email requesting cancellation of the domain name <santander-central-hispano.net>, without success.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The domain names <santander-central-hispano.com> and <santander-central-hispano.net> are virtually identical and are confusingly similar to the Complainant’s trademarks and trade name.

The Respondent is not commonly known by and has not acquired any trademark or service marks in the <santander-central-hispano.com> and <santander-central-hispano.net> domain names.

It is inconceivable that the Respondent did not have knowledge of Complainant’s famous mark when registering the domain names <santander-central-hispano.com> and <santander-central-hispano.net>.

The Respondent has no authorization from the Complainant to register the domain names <santander-central-hispano.com> and <santander-central-hispano.net>.

The Respondent has not used the <santander-central-hispano.com> and <santander-central-hispano.net> domain names in connection with a bona fide offering of goods and services.

Since the registration of the domain names on January 22 and March 29, 2005, and as of the filing date of the Complaint, the Respondent attempted to use the domain name <santander-central-hispano.net> (but not the other disputed domain name), for “worldwide lottery scam”.

The Complainant demonstrates with copies of emails how the Respondent has used the SANTANDER CENTRAL HISPANO trademark and the logo to run an Internet scam. The scam involves sending emails purporting to be from the bank to members of the public advising them that they will receive substantial sums of money (in excess of one million Euros). These are followed up by emails from the email address banco@santander-central-hipano.net or banco@santander-central-hispano.com, which request the person concerned to contact “Compliance intermediary agent (...) for the Notarization and swearing of the affidavit (…) to pay money” (cf. London Merchant Securities plc v. Anjei Gandhi, WIPO Case No. D2005-0433).

The Respondent, which bears fraudulently the same name as the Complainant, is not making a legitimate non-commercial or fair use of the <santander-central-hispano.com> and <santander-central-hispano.net> domain names without intent for commercial gain to misleadingly divert consumers or to tarnishing the trademark at issue.

There is no evidence that shows that the Respondent has taken any positive action in relation to the <santander-central-hispano.com> and <santander-central-hispano.net> domain names, other than trying to mislead consumers. Such action has been held to constitute use of a domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 seems applicable”.

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain names; and,

(iii) that the domain names have been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for SANTANDER CENTRAL HISPANO in the European Union and in America. Furthermore, the Complainant’s trademarks SANTANDER CENTRAL HISPANO are well-known throughout the world.

The disputed domain names <santander-central-hispano.com> and <santander-central-hispano.net> consist of the Complainant’s trademark.

In the Panel’s view, including a hyphen between the words “santander”, “central” and “hispano” does not make a sufficient difference between the domain names and the Complainant’s trademark. On the contrary, this Panel believes that the domain names are similar to the trademark and, therefore, may confuse the public about the business origin, the quality of products or services, and about the ownership of the domain names.

Furthermore, the addition of the gTLDs “.com” and “.net” which were required for registering the disputed domain names, have no distinguishing capacity (Telecom Personal, S.A. v. Namezero.com, Inc., WIPO Case No. D2001-0015; Nokia Corporation vs. Private, WIPO Case No. D2000-1271).

The disputed domain names are consequently confusingly similar to the Complainant’s registered trademarks SANTANDER CENTRAL HISPANO.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c) of the Policy, the Respondent may demonstrate rights to or legitimate interests in the disputed domain names by proving any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is well established by prior UDRP panels that once a complainant makes a prima facie showing that a respondent lacks rights to a domain name, the respondent must come forward with proof that it has a right or legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademarks or to apply for any domain name incorporating the trademarks. The registrant of record of the disputed domain names is “Banco Santander Of Central Hispano”. The Complainant has alleged and provided evidence of the fact that the Respondent is pretending to be the Complainant in order to deceive the public and that the Respondent is using the disputed domain names to perpetrate a lottery scam.

The Respondent has not filed any Response to the Complaint and has thus neither rebutted the Complainant’s allegations and evidence nor provided any facts or elements to justify rights or legitimate interests in the disputed domain names.

In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), indicates that the following circumstances may, “in particular but without limitation”, be evidence of bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The SANTANDER CENTRAL HISPANO trademarks are well-known and the use of the disputed domain names demonstrates that the Respondent was well aware of the existence of the Complainant and its trademarks at the time of registering the domain names <santander-central-hispano.com> and <santander-central-hispano.net> (see Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).

The Panel has reviewed the material sent by the Complainant together with its submissions. It is clear that the Respondent has no connection with the Complainant and is trying to deceive the consumers into believing that it is the Complainant as explained above under Factual Background.

Based on the case file, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.

For the above reasons, the Panel decides as follows:

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 names <santander-central-hispano.com> and <santander-central-hispano.net> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Dated: August 22, 2005