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Banco Bilbao Vizcaya Argentaria. S.A. v. Laura Ayoub [2005] GENDND 2101 (20 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Bilbao Vizcaya Argentaria. S.A. v. Laura Ayoub

Case No. D2005-0958

1. The Parties

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

The Respondent is Laura Ayoub, Las Vegas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bbvaneet.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2005. On September 7, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On September 28, 2005, CSL Computer Service Langenbach GmbH dba Joker.com 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 (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 October 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2005.

The Center appointed Christian Pirker as the sole panelist in this matter on November 7, 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.

After reading the Complaint, the Panel noted that there was an uncertainty about the date of communication as per Rules, paragraph 3(b)(xii) and Supplemental Rules, paragraph 4(b), that there were some missing details about some evidence submitted and that there was an uncertainty about the Mutual Jurisdiction in the proceeding as required by paragraph 3(xiii) of the Rules. Thus, the Panel decided to issue an Administrative Panel Procedural Order requiring the Complainant to produce this evidence and amendment. The order, issued on November 25, 2005, fixed a 7-day deadline for the Complainant to comply with the order. The Panel further extended the deadline to forward its decision until December 9, 2005. On December 1, 3 and 5, 2005, the Complainant submitted the requested evidence and amendment. After reading the Amendments, the Panel noted that the requested amendment regarding the Mutual Jurisdiction was not signed. Thus, requested the Complainant to sign this amendment, and extended the deadline to forward its decision to December 20, 2005.

4. Factual Background

The Complainant is Banco Bilbao Vizcaya Argentaria SA, a major bank worldwide known, whose main business is in the field of corporate, retail and international banking and financial services. The group is widely known under the trade name BBVA. The Complainant has numerous subsidiaries and/or offices in many countries around the world (over 35 different countries).

The Complainant has registered numerous trademarks containing the terms BBVA, among other :

- Spanish Trademark BBVA N° 2454197, N° 2454198, N° 2454199 in class 43, 44, 45;

- European Trademark BBVA N° 2569580 in classes 43, 44, 45;

- European Trademark BBVA N° 2569614 in classes 43, 44, 45;

- European Trademark BBVA N° 1349943 in classes 35, 36, 38;

- American Trademark BBVA N° 2 705 771 in classes 21, 23 26, 36 and 38

The Complainant has also registered numerous domain names containing the word “BBVA” to present the company and offer its internet services, among other :

- “www.bbva.info” registered on July 31, 2001;

- “www.bbva.com” registered on August, 14, 1997;

- “www.bbvabanco.net” registered August 14, 2002.

The Complainant uses bbvanet as part of its internet trade names for its banking and financial Internet services.

The Respondent is located in Las Vegas, United States.

The domain name <bbvaneet.com> was registered in August 23, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has received numerous complaints from Internet users regarding the fact that they received a fraudulent e-mail intended to attract them on the disputed website, which is adopting the same basic design and trade dress as Complainant’s website, in order to obtain Complainant’s internet users password and usernames.

Further, the Complainant alleges that it owns numerous registrations of the BBVA mark, that it registered and used numerous domain names, including <bbva.com> and that the Respondent has registered and used the disputed domain names which are confusingly similar to the BBVA group’s Trademarks.

The Complainants specifies that it has no connection whatsoever with the Respondent, nor that the Respondent has business or any other connection or affiliation with the Complainant, nor that the Complainant has licensed, expressly or impliedly, or otherwise permitted the Respondent to use the trademark BBVA or to apply for any domain name incorporating the BBVA trademark. The Complainant also alleges that the Respondent does not use the domain name <bbvaneet.com> for a legitimate non-commercial or fair use, but registered it only for phising purposes i.e. to attract and confuse Complainant’s Internet customer in order to obtain their user names and passwords through mistaken logins to the Respondent’s site. Accordingly, the Complainant alleges that the Respondent has no legitimate interest in the domain name <bbvaneet.com>.

Finally, the Complainant contends that the Respondent has registered and is using the domain name in bad faith since the Respondent intentionally attempted to attract, for phising purposes, the Complainant’s Internet users and customers to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark and website.

Accordingly, the Complainants requests the Administrative Panel to issue a decision to transfer the domain name <bbvaneet.com> to the Complainant.

B. Respondent

As noted above, the Respondent is in default pursuant to paragraph 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules, as no Response was submitted in due time.

It is further noted that the Respondent did not give any response nor communicated any message at any time in the course of the present proceedings.

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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”.

Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:

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

(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The BBVA trademark is registered in numerous countries in numerous classes, among other for banking and financial services. The disputed domain name is <bbvaneet.com>, and the question is therefore whether that name is identical or confusingly similar to the Complainant’s trademark BBVA. In the present case, the entire BBVA trademark appears to be included in the disputed domain name. Further, the adjunction of the word “neet” to the name “BBVA” in the domain name does not diminish the confusing similarity between the domain name and the trademark. Previous Panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. Applying that test, the Panel finds that the domain name is identical to the Complainant’s trademark, since it is essentially or virtually identical to it. First, the Panel finds that the adding of the letters “neet” has not enough distinctivness to change the overwhelming impression of similarity. Second, the pronunciation of the domain name recalls both the Internet trade name of the Complainant and the generic top level domain “.net”. Accordingly the Panel draws the inference that some have and others will, accidentally type the contentious domain name or click on such an hyper link, although meaning to type or to click on the domain name of the Complainant. The Panel has no hesitation in saying that an objective third party would consider that the domain name is very similar to the trade mark, and that one would be very likely to be confused with the other (see also The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, Yahoo! Inc. v. Eitan Zviely et al, WIPO Case No. D2000-0273).

Consistent with these and other decisions, the Panel has no hesitation in concluding that the domain name is essentially identical to the trademark and certainly confusingly similar to it.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are 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 for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in establishing such prima facie condition, it is for the Respondent to answer thereto. Accordingly, the main burden of proof is on the Respondent.

The Complainant alleges that the Respondent has no connection whatsoever with them, and that the Respondent has no right or legitimate interest in the domain name.

Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.

As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).

Based on the case file and the fact that the Respondent has not challenged the Complainant’s contention, the Panel finds the Complainant’s case credible.

Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name.

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or your location.

The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D1999-0001).

The Complainant’s trademark is distinctive and the domain name includes the trademark. Moreover, the Complainant is using the BBVANET as a trade name for its Internet services. The Complainant has proven that one or different entities have sent an e-mail to numerous Internet users in order to have them access the Respondent’s website which adopts the same basic design and trade dress as the Complainant’s website. Accordingly, the Complainant’s Internet users may access Respondent’s website and transmit, without willing it, their usernames and password to unauthorized third Party.

As similarly stated by the Panel in Finter Bank Zürich v. N/A, Charles Osabor, WIPO Case No. D2005-0871, the Respondent appears to be using the web page for “phising”, which can be described “as the fraudulent acquisition, through deception, of sensitive personal information such as passwords and credit card details, by masquerading as someone trustworthy with a real need for such information”. The panel in CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 noted: “The Panel agrees with the Complainant that the Respondent’s motive must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv): `by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location. (See The Coryn Group, Inc. and Apple Vacations East, Inc. v. Azra Khan, WIPO Case No. D2003-0655). The Respondent’s actions may also well be a crime,” but the Panel believes any possible criminal aspect of the Respondent’s conduct lies beyond the bounds of the UDRP”. Consistent with these and other decisions, the Panel has no hesitation in concluding that both elements of paragraph 4(a)(iii) of the Policy have been met.

The Panel thus concludes that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith.

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, <bbvaneet.com> be transferred to the Complainant.

Christian Pirker
Sole Panelist

Dated: December, 20, 2005