Banco Atlántico, S.A. v. Leticia Marco

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banco Atlántico, S.A. v. Leticia Marco

Case No. D2001-0525

1. The Parties

The Complainant is Banco Atlántico, S.A., a Spanish company which is domiciled in Avenida Diagonal 407 bis, 08008, Barcelona, Spain (hereinafter, the Complainant). The Respondent is Leticia Marco, with domicile in Darro 13, 28001, Madrid, Spain (hereinafter, the Respondent).

2. Domain Name and Registrar

The domain name at issue is <viatlantico.org>. The Registrar is Network Solutions (hereinafter, the Registrar) with domicile in 505 Huntmar Park Drive, Herndon, VA 20170, USA.

3. Procedural History

The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on April 10, 2001, and in hardcopy on April 11, 2001. On April 11, 2001, the Center sent the acknowledgement of Receipt to the parties as well as to the Registrar.

On April 11, 2001, the Center sent the request to the Registrar for the verification of the particulars of the domain name at issue. The request was answered on January 12, 2001. The Registrar did confirm (i) that the domain name was registered with it; (ii) that the current Registrant is the Respondent; (iii) the administrative contact person details’; (iv) that the domain name is in "Active" status, and finally (v) that the NSI 5 Service Agreement is in effect; consequently, the Uniform Domain Name Dispute Resolution Policy applies to the case.

After verifying that the Complaint met with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification of Complaint and Commencement of Administrative Proceeding under Paragraph 2 (a) of the Rules together with copies of the Complaint on April 18, 2001. The same notification was sent to the administrative contact, technical contact, and billing contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (with enclosures), and e-mail (complaint without attachments). Both the Complainant and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules. It must be noted that the Notification to the Respondent was refused and returned to the Center by the Transport Collect Service of the courier. Anyway the Notification was sent to the post address and e-mail address which appear on the database of the Registrar.

The Respondent did not answer the Complaint. Accordingly the Center sent the parties the Notification of the Respondent’s Default on May 9, 2001.

On May 18, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. On the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.

The date scheduled for the issuance of the Panel’s decision is before May 31, 2001.

The language of the proceeding is English.

4. Factual Background

BANCO ATLÁNTICO, S.A., was incorporated in 1901. Ever since the Complainant has carried out a full and extensive bank activity not only in Spain but also in Latin America.

Since early 80’s BANCO ATLÁNTICO, S.A. has become one of the largest banks in Spain, having more than 260 branches throughout the world. The main sector in which the Complainant is developing its activity is financial services and insurance, where it is considered as being amongst the ten largest banks in Spain.

BANCO ATLÁNTICO, S.A. has created an online bank service through which

it offers online services. This new activity is known to the public under the

name of vi@tlántico. Vi@tlántico allows the customers to have

access to their bank accounts. In addition, the customers may consult different

services such as balances and entries in sight accounts, balances and

entries of credit card accounts, balance and entries in unit links, balances

and details of time deposits, pension schemes, balance and details of trade

collections contracts, etc.

In addition, the customer of vi@tlántico may do different banking transactions

such as movements between accounts, transfers, renewal or cancellation of time

deposits, securities, pension schemes, request for cheque books, tax returns,

etc. The Panelist has checked the above by accessing the Site www.batlantico.es.

In conclusion, the Complainant takes on usual banking Internet activities.

The Complainant states that vi@atlántico began its activities in July

1998.

The Complainant bases its Complaint on the following trademarks:

- <VI@TLANTICO> that was requested on May 20, 1998 (Class 36) and granted on September 19, 2000 as Community Trademark (Registration number 829.234).

- <VI@TLANTICO> that was requested on February 9, 2001 (Class 35) under registration number 2.083.756. It has not been granted.

- <VI@TLANTICO> that was requested on February 9, 2001 (Class 38) under registration number 2.083.756.

The Complainant is also owner of the following domain names: <viatlantico.es>, <banco-atlantico.com>, <batlantico.com> and <batlantico.es>.

5. Parties’ Contentions

5.1 Complainant contends that:

a) The domain name <vi@tlantico.org> is identical and therefore confusingly

similar to the various trademark registrations VI@TLANTICO that are registered

or requested in favor of the Complainant.

b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:

i) The Respondent has no relationship with the Complainant.

ii) The Respondent has not been known under the domain name, or under any other related name to such a domain name.

iii) The Respondent does not own any right or interest on the trademark VI@TLANTICO.

c) The domain name <viatlantico.org> was registered and is being used in bad faith, due to:

i) The Respondent has registered the domain name to impede the Complainant a fair and legitimate use of the virtual space of the domain name.

ii) The lack of any content within the Web Site corresponding to the domain name at issue, which prevents the Claimant from making legitimate use of such a domain name.

iii) In Complainant’s opinion, there are circumstances that show the intention of the Respondent of selling or transferring the domain name to third parties for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name.

5.2. Respondent did not answer to the Complaint

Having been notified of the Complaint, the Respondent did not answer it.

6. Discussion and Findings

The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:

"4.a. (i) Identity or Confusing Similarity"

The generic TLD ".com" cannot be taken into consideration as part of the comparison, since it does not add any particularity or difference to the domain name chosen by the registrant. That particle is only a way to theoretically differentiate the sectors and activities advertised through the domain name. In the practice, however, this purpose has been fully left behind without the relevant organisations or registrars have had the intention to revert the status of the facts to the right understanding.

In other words, the particles used for the TLDs are of no significance with respect to the question of the identity or confusing similarity. On the contrary, the point is to check whether there is a substantial identity between the words of the Complainant’s trademarks and the Respondent’s domain name. This substantiality can be deduced from different criteria. The case law on trademarks can be helpful in this respect. From an objective point of view the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences in the words to be compared. From a subjective point of view, the Panelist must focus the analysis in the part of the words to be compared, which is rather confusing by having used the same relevant distinctive sign.

Likewise, it can be considered as a notorious fact that there is a significant coincidence between the domain name at issue and the words that the Complainant used to form the trademarks VI@TLANTICO, which are one of the legal bases of the actual proceedings.

Phonetically there is no difference between the symbol @ and the letter A in the Spanish language (and I would dare to say, also in all the western languages other than Spanish). They are both similarly pronounced. Therefore, although the difference in writing might be born in mind, being rigorous in the comparison, the result cannot be the same from the phonetic perspective, since there is no significant variation or dissimilarity.

In addition, it is to be remarked that I have only based my decision on the

Community Trademark VI@TLANTICO, which is the only one appearing as registered

in favor of the Complainant. Spanish Trademarks VI@TLANTICO are merely requested

and under Spanish Trademark Law, an application does not confer an exclusive

right until the trademarks is finally granted. Moreover, the Complainant could

not base its remedies on the requested Spanish trademarks, since the applications

were filed after the registration of the domain name. It would then be necessary

that the Complainant proves a previous use of the distinctive sign in the market.

Anyway the existence of just one trademark registration is enough to request protection under the Policy and the Rules.

As a result, it is beyond question that the trademark VI@TLANTICO, which has been registered by the Complainant, is identical to the domain name <viatlantico.org>.

In conclusion, the requirement of Paragraph 4.a.(i) is met.

"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name <viatlantico.org>

The domain name at issue does not coincide with whole or part of the Respondent’s name, trademark, trade name, corporate name or any other legitimate interest of her own.

In having failed to answer the Complaint, the Respondent has missed to submit any evidence of legitimate interest or right in the domain name <vi@tlantico.org>, if there was any.

Therefore, on the grounds of the Paragraph 14 b) of the Rules ("if

a party, in the absence of exceptional circumstances, does not comply with any

provision of, or requirement under, these Rules or any request from the Panel,

the Panel shall draw such inferences therefrom as it considers appropriate),

I conclude that if the Respondent had had any legitimate interest or right in

the words forming the domain name <viatlantico.org>, she should have had

an active disposition in order to defend such interest or right (e.g. by submitting

evidences of registration rights or previous commercial activity under the name

VI@TLANTICO). However, this is not the case. On the contrary, the Complainant

has proved that it has registered the Community Trademark VI@TLANTICO in a geographical

area, which is precisely where the Respondent lives in (Spain). Therefore, it

is legitimate to conclude that the Respondent does not have any legitimate interest

in the domain name <viatlantico.org> that should be preeminent. The mere

fact that the domain name at issue has been registered before the Community

Trademark of the Complainant does not give any priority to the Respondent, since,

as stated by the Complainant, once the trademark is duly registered, the trademark

holder may exercise his rights as from the date of the request of the application.

Furthermore, the Respondent has adopted a passive attitude, since there is no serious purpose to undertake any trade or commercial activity related with the disputed domain name. In principle, the absence of this purpose should not be taken as an evidence that the Respondent has no legitimate interests or rights on the domain name. But together with other circumstances, such as the identity with Complainant’s trademark, Complainant’s reputation in the market inter alia, the conclusion can only be that the Respondent cannot defend any right or legitimate interest on the use or ownership of the domain name.

Likewise, it should be stressed that the Complainant clearly states that the Respondent is not duly authorized, on the grounds of a license agreement or any other sort of right or entitlement, to use the name VI@TLANTICO. The Respondent has not any relationship whatsoever with the owner of the trademark rights, that is, the Complainant.

Finally, the fact that the domain <viatlantico.es> has been registered

before the Community trademark VI@TLANTICO has obtained final approval of the

OHIM cannot be taken as relevant in order to give a priority to the use of the

domain name at issue by the Respondent. It should be remarked that the Complainant

did apply for the Community Trademark long before the Respondent had registered

the domain. As the Complainant states, once the Community Trademark is granted,

the priority is backdated to the date of request of the trademark. Since the

moment of final registration the trademark holder is entitled to authorize or

to make cease the use of similar or identical distinctive signs, provided that

the application of the trademark holder is prior. On the other hand, the trademark

holder has the right to claim for a reasonable and fair indemnification for

any damages caused as from the moment of use of the opposed trademark (or distinctive

sign) until the moment in which the trademark obtains final approval of the

competent Office. In the meantime, the applicant can even oppose to the registration

of similar or identical distinctive signs. In conclusion, it has not been proved

that the Respondent has any right or legitimate interest in the use and ownership

of the domain name <viatlantico.org>.

Therefore, the requirement of Paragraph 4.a.(ii) is met.

"4.a.(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith"

As to the bad faith requirement, it should be stressed that the Complainant is the trademark holder of several trademark rights and domain names substantially similar to the domain name at issue (see Annexes 3 and 4 to the Complaint). Nevertheless, I have only taken into consideration the Community Trademark, which has been granted. Spanish Trademarks have been just requested and according to Spanish Trademark Law (Act 32/1988), the applicant is not consequently entitled to request for the transfer of the domain name at issue.

The concept of bad faith has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent when purchasing a domain name similar to a relevant trademark, it must also be decisive the sole fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.

Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainant’s trademark and activity, mainly along the Spanish market and also since the Respondent is Spaniard, the Respondent should have known or been aware of the trademark VI@TLANTICO, either in the moment of purchasing the domain name at issue, or afterwards when using it. There must be a iuris tantum presumption that the Respondent is using in bad faith the domain name if the foregoing conditions are met, since otherwise it would be very difficult, almost impossible, for the Complainant to demonstrate the internal animus of the Respondent when registering the domain name, or when using it, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainant a so-to-speak diabolical prove. Consequently, the burden of the prove must be for the Respondent who must prove that he has purchased or is using in good faith the disputed domain name.

As a result, the Panelist must come to the reasonable conclusion that the Respondent was completely aware that the registration of the domain name <viatlantico.org>, on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainant.

In the Complainant’s opinion, the lack of use by the Respondent of the disputed domain name is an evidence of his bad faith. Annex 5 of the Complaint clearly shows that the Respondent does not use the Web Site of the domain name but for offering the service of registering domain names. This kind of offer is something usual in the conflicts between domain names and trademarks.

According to previous decisions of the Center (see Decisions D2000-0018

Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal

Taveira; D2000-0020 Compagnie de

Saint Gobain v. Com-Union Corp; D2000-0239

J. García Carrión, S.A. v. Mª José Catalán Frías

and D2000-0277 Deutsche Bank AG

v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain

Name may be declared even if it has not been used at all, nor there are serious

purposes thereto.

Accordingly, the Panelist does agree with the argument that the Registrant is also using the domain name in bad faith by just using it in a passive way, that is, by not including any contents whatsoever within the Web Site corresponding to the domain name at issue, since this sort of use eventually prevents the Complainant from making a legitimate use of it on the grounds of previous trademark or any other legitimate rights. Nevertheless, in my opinion this conclusion is valid as long as the rest of requirements, previously analysed, are met. The mere lack of use should not per se be considered as decisive to confirm Respondent’s bad faith.

Therefore, the domain name <viatlantico.org> was registered and is being used in bad faith.

7. Decision

The Complainant has proved that the domain name is identical to its trademark, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and use the domain name in bad faith. Therefore, according to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name <viatlantico.org> to be transferred to the Complainant.

Jose Carlos Erdozain

Sole Panelist

Dated: May 31, 2001

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