Banco Zaragozano SA v. Mikato Muto

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Banco Zaragozano SA v. Mikato Muto

Case No. D2004-0062

1. The Parties

The Complainant is Banco Zaragozano S.A., Zaragoza, Spain, represented by UBILIBET, Spain.

The Respondent is Mikato Muto, Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name is <banco-zaragozano.net> registered with Stargate.com.

3. Procedural History

The complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2004, by e-mail and in hard copy on February 5, 2004. On January 26, 2004, the Center transmitted by email to Stargate.com a request for registrar verification in connection with the domain name at issue. On February 2, 2004, Stargate.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. In response to a notification by the Center that the complaint was administratively deficient, the Complainant filed an amendment to the complaint on February 9, 2004. 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 February

10, 2004. In accordance with the Rules, paragraph 5(a), the due date for response

was March 1, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on March 2, 2004.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on March 8, 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

Banco Zaragozano S.A. is the owner of the community trademark registration

no. 000895995 "BANCO ZARAGOZANO" in classes 35, 36 and 42, filed on

August 4, 1998, and registered on March 20, 2002, in the European

Union’s OHIM (Office for Harmonization in the Internal Market).

Complainant also owns, since many years ago, many trademark registrations containing

the name "Banco Zaragozano" including, "BANCO ZARAGOZANO S.A",

"Z BANCO ZARAGOZANO", "BANZANO BANCO ZARAGOZANO S.A.", "SERVICIO

DE BANCA TELEFÓNICA LÍNEA ABIERTA BANCO ZARAGOZANO", among

others, registered in the Spanish Office of Trademarks and Patents.

It also owns the domain name <bancozaragozano.es> and <banco-zaragozano.es>.

Mikato Muto registered the domain name <banco-zaragozano.net> on March

2, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

Founded in 1910, Banco Zaragozano is a bank with 360 branches distributed throughout

Spain. It provides employment to more than 1.500 people and enjoys an unquestionable

level of recognition within and outside Spain. In mid-May 2002, the British

bank Barclays Bank and Banco Zaragozano S.A. initiated negotiations towards

a merger between the two corporations, which increased Banco Zaragozano’s popularity

outside the Spanish border.

Since its foundation, it has used the name "Banco Zaragozano" for

commercial dealings. It is also the owner of the community trademark "BANCO

ZARAGOZANO" and the national trademarks "Z BANCO ZARAGOZANO",

"BANZANO BANCO ZARAGOZANO S.A.", "BANCO ZARAGOZANO S.A",

"SERVICIO DE BANCA TELEFÓNICA LÍNEA ABIERTA BANCO ZARAGOZANO",

among others, registered in Spain, which predate Respondent’s registration of

the domain name <banco-zaragozano.net>.

The domain name <banco-zaragozano.net> is formed by the word "bank"

in Spanish "banco" and the word "zaragozano" with a hyphen

in the middle. Obviously, if we remove the suffix ".net", the trademark

"BANCO ZARAGOZANO" is identical to the domain name in conflict.

The Respondent has no legitimate interests or rights in respect of the conflicting

domain name. Respondent is not on record neither in the Spanish Office of Trademarks

and Patents nor in the European Union’s OHIM (Office for Harmonization in the

Internal Market) as owning any distinctive symbol under "Banco Zaragozano".

Nor is there any record in the Japan Patent Office.

The Respondent is not commonly known by this domain name. A search for companies,

entities, individuals or organizations bearing that denomination has turned

up negative in Japan. A search on the Internet for "Banco Zaragozano"

also failed to turn up any connection with the Respondent and therefore it seems

obvious that the Respondent is not making any legitimate non-commercial or fair

use of "Banco Zaragozano", nor it is known by this name.

Respondent is making an unfair and illegitimate use of the domain name with

the intention to divert Internet users to a pornographic web page. Respondent’s

intention is nothing less than to besmirch the good name of Banco Zaragozano

and his aim is to be pressured into selling the domain name and profit in an

illegitimate way.

The domain name was registered and is being used in bad faith. The registration

of a well-known trademark of which the Respondent must reasonably have been

aware is in itself sufficient to amount to bad faith, and that is how various

rulings have understood the issue. Banco Zaragozano is a very strong and notorious

mark and is so obviously connected with the Complainant and its services that

its very use by someone with no connection to the Complainant suggests opportunistic

bad faith.

Respondent uses a notorious trademark as domain name to redirect internet users

to an adult sex site in order to create a confusion and obtain an economic benefit

because the web page pays Respondent $30 per signup.

"BANCO ZARAGOZANO" trademark is inherently distinctive and without

any meaning other than as a trademark of Banco Zaragozano. Registration of this

trademark in circumstances where the mark has no inherent meaning other than

as a trademark of the Complainant, where the Respondent does not appear to be

known under this mark, where Respondent does not appear to be using it in connection

with any business and where the name resolves to an adult sex site, confirms

that Respondent is indeed aware of the fame of "BANCO ZARAGOZANO"

trademark and Complainant’s rights in this trademark.

Finally, the Complainant requests that the domain name <banco-zaragonano.net>

be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element

of paragraph 4(a) of the UDRP, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) The disputed domain name has been registered and is being used in bad

faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the

complaint on the basis of the statements and documents submitted and in accordance

with the Policy, the Rules, and any rules and principles of law that it deems

applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party,

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

time periods established by the Rules or the Panel, the Panel shall proceed

to a decision on the complaint and (b) if a Party, in the absence of exceptional

circumstances, does not comply with any provision of, or requirement under,

the Rules or any request from the Panel, the Panel shall draw such inferences

therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine

the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous WIPO Cases in which the Respondent

failed to file its response, the Panel’s decisions were based upon the Complainant’s

assertions, evidence and inferences drawn from the Respondent’s failure to reply

(The Vanguard Group, Inc. v. Lorna Kang, WIPO

Case No. D2002-1064) since Respondent’s failure to dispute the allegations

of the Complainant permits the inferences that the Complainant’s allegations

are true. (Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp,

WIPO Case No. D2001-0936).

Notwithstanding the above, the Panel must not decide in the Complainant’s favor

solely given the Respondent’s default. (Cortefiel S.A. v. Miguel García

Quintas, WIPO Case No. D2000-0140).

The Panel must decide whether the Complainant has introduced elements of proof

which allow the Panel to presume that its allegations are true.

A. Identical or Confusingly Similar

The Panel finds that the domain name <banco-zaragozano.net> is almost

identical to the Complainant’s trademark "BANCO ZARAGOZANO".

As held in numerous precedents, the addition of a hyphen and a suffix, in this

particular case ".net", does not provide the domain name with distinctiveness

(Info-Space.com v. Tenenbaum Ofer, WIPO

Case No. D2000-0075; Pfizer, Inc. v. Martin Marketing, WIPO

Case No. D2002-0793) and therefore, it is evident that the domain name in

conflict creates confusion among the Internet users.

Consequently, the Panel finds that the Complainant has proved the first element

required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel understands that proving "a negative proposition can be particularly

difficult" and agrees "that the burden on a Complainant regarding

the second element is necessarily light, because the nature of the registrant’s

rights or interests, if any, in the domain names lies most directly within the

registrant’s knowledge" and that "once the Complainant makes a prima

facie showing that the registrant does not have rights or legitimate interest

in the domain name, the evidentiary burden shifts to the registrant to rebut

the showing by providing evidence of its rights or interests in the domain name"

(The Vanguard Group, Inc. v. Lorna Kang, WIPO

Case No. D2002-1064).

Complainant has introduced different arguments in order to prove that the Respondent

has no rights or legitimate interests in the conflicting domain name, namely:

Respondent does not own neither in Spain nor in Japan any trademark containing

the name "BANCO ZARAGOZANO"; Respondent is not commonly known by this

domain name as a search in Japan for companies, entities, individuals or organizations

bearing "BANCO ZARAGOZANO" has turned up negative; and that no connection

between Respondent and the domain name was found on the Internet.

On the other hand, Respondent failed to file a reply and therefore it did not

bring to these proceedings any element to show that it has rights or legitimate

interests in the domain name in conflict.

In view of the above and in accordance with the paragraphs 15(a), 14(a) and

(b) and 10(d) of the Rules transcribed above the Panel finds that the Respondent

has no rights or legitimate interests in the conflicting domain name.

Consequently, the Panel finds that the Complainant has proved the second element

required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(b)(iv) the use of the domain name with the intention

to attract for commercial gain Internet users to the web site by creating a

likelihood of confusion with the Complainant’s mark shall constitute evidence

of the registration and use in bad faith.

As proved by the Complainant, the domain name <banco-zaragozano.net>

diverts Internet visitors to a different web site. Complainant alleges that

this web site consists of a pornographic web page and that Respondent obtains

an economic benefit since "the web page pays to him $30 per signup".

As explained above, Respondent has no rights or legitimate interests in respect

of the domain name. Given the fact that Respondent has not filed a reply to

the complaint nor filed any evidence which could justify its conduct, the Panel

infers that Respondent has chosen Complainant’s trademark "BANCO ZARAGOZANO",

which has no particular meaning other than the name of the Spanish bank, with

the intention to attract for commercial gain Internet users to the pornographic

web site, which has no relation with the bank. As held in similar cases, the

Panel finds that such conduct clearly does not constitute a "bona fide"

offering of goods and services and that it proves that the Respondent has registered

and used the domain name in bad faith. (Motorola, Inc. v. NewGate Internet

Inc, WIPO Case No. D2000-0079; Six

Continents Hotels Inc. v. Seweryn Nowak, WIPO

Case No. D2003-0022).

In view of the foregoing and in accordance with the paragraphs 15(a), 14(a)

and (b) and 10(d) of the Rules transcribed above, the Panel finds that Respondent

has registered and used the domain name in bad faith.

Consequently, the Complainant has proved the third element required in paragraph

4(a) 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 <banco-zaragozano.net>

be transferred to the Complainant.

Miguel B. O'Farrell

Sole Panelist

Dated: March 22, 2004.