Banco Bilbao Vizcaya Argentaria, S.A. v. Gandiyork SL et al.
Claim Number: FA1403001548656
Complainant: Banco Bilbao Vizcaya Argentaria, S.A., of Madrid, Unknown, Spain.
Respondent: Gandiyork SL of Gandia, Valencia, ES.
REGISTRIES and REGISTRARS
Registry: Pine Moon, LLC c/o Donuts Inc.
Registrar: Godaddy LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complainant submitted: March 14, 2014
Commencement: March 14, 2014
Response Date: March 25, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
As this Examiner has stated in previous determinations, the URS is in its earliest stages. Indeed, as of the date on which this decision has been drafted, only 14 URS decisions have been published, including one initiated by the same Complainant as in the instant proceeding, Banco Bilbao Vizcaya Argentaria, S.A. v. farris nawas, NAF Claim No. 1547721 (suspension of <bbva.careers>). Given this newness, the Examiner here (as in this Examiner’s other determinations thus far) has provided findings and discussion above and beyond that which he would expect in URS determinations, especially once these proceedings presumably become more popular.
Complainant has provided the following explanatory text, in toto, in its Complaint (subject to the 500-word limit specified in paragraph 1.2.7 of the URS):
BBVA is a multinational group providing financial services in over 30 countries and to 53 million customers throughout the world. It has a strong position in Spain, it is the top financial institution in Mexico, it has leading franchises in South America and in the Sunbelt region in the United States. Spain, it's the bank's country of origin and where its main office and centralized corporate services are located, as well as the Group's parent company.
Complainant is the owner of numerous trademark registrations worldwide that consist of or contain the mark BBVA, and enjoys a widespread reputation in the world. The disputed domain name is identical to the above cited trademarks, consisting in whole of the word “BBVA”, incorporates Complainant’s mark in its entirety. Respondent registered the disputed domain name on March 5, 2014 despite receiving notification that the domain names match a mark registered with the Trademark Clearinghouse. The Respondent is required to have clicked on the Registrar notice Acknowledge Claim when presented with the Trademark Claims Notice to complete registration of the name. Respondent at the time of registration of the disputed domain names knew of the existence of the Complainant's trademarks.
The comparison between the trade mark and the domain name itself determine likelihood of Internet user confusion. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bon fide offering of goods or services. The website connected to the Domain Name all feature pay-per-click links related to the Complainant’s industry including links to the Complainant’s competitors. The Respondent is not affiliated with the Complainant in any way. Complainant has never granted any license or other permission to Respondent to use Complainant’s mark. Respondent has not been authorized by the Complainant to register or use any domain name incorporating the BBVA Mark and Respondent is not named or commonly known as BBVA. Respondents have through the use of confusingly similar disputed domain name created a likelihood of confusion with Complainant’s trademarks. The Respondent did not present evidence of rights or legitimate interests he might have in the disputed domain name.
The Domain Name features just a series of third party advertisements, with advertisement links related to financial services. The disputed domain name has been used only to display pay-per-click links related to the industry of Complainant. Using the website for sponsored links, Respondent is clearly attempting to divert traffic intended for Complainant’s authorized websites to its own for the purpose of earning click-through revenues from Internet users searching for Complainant’s official website. The Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The use and exploitation of trademarks to obtain click-through revenue from the diversion of Internet users is an indicative of bad faith.
Respondent has submitted the following Response, subject to the 2,500-word limit set forth in paragraph 5.4 of the URS:
The Complainant decided to base their complaint on 184.108.40.206. and 220.127.116.11. and not on 18.104.22.168. However, due to the Complaint's explanatory text, we need to mention that the Complainant has paid for having trademark rights for many products and services included in categories 1 to 42, but showed proof of use for only one of the categories, 36: financial and banking. We admit that the mark BBVA is worldwide known for banking services, and we also state that BBVA is not used for any of the other 41 categories. We understand that this is the reason why the Complaint does not call chapter 22.214.171.124. arguments in the Complainant's favor….
The Complaint is based in the theory that: (126.96.36.199.) we have no right or interest in the domain name and (188.8.131.52.) we bought the domain in bad faith. Starting by 184.108.40.206., the Complainant did not bring any evidence of any of the statements. We deny and reject this argument because it is false. BBVA.LAND is not just BBVA: *.LAND is the only extension we know created for activities related to agriculture, similarly to *.ORG being related to organizations or *.EDU to education. We are based in La Safor (Valencia, Spain), and we provide category 44 (*.LAND) services to Bellreguart, Beniarjo, Villalonga and Almoines, which are 4 neighboring towns. Attached, my personal Superior Agronomical Engineer degree (6 years at Valencia University) and a map of the area (BBVA.LAND interest). In sum, the Complainant either decided not to protect or could not protect category 44, only has activity on category 36, and has no activity related to LAND. The Registrant has LAND activity which is developed in 4 neighboring towns with the initials B+B+V+A. The process of buying the domain was a follows: 1) search if BBVA.LAND was available, which it was because the Complainant had not been interested in buying it before. 2) Read the Trademark Notice (copy of which is attached to this Response) and check that our category is not included in the list that the Complainant has protected. 3) Buy the domain. We think we proceeded correctly….
We deny and reject all the arguments because they are false. We bought the domain and received this Complaint the week after. It is not easy to prove good or bad faith when one has done nothing yet. With regards to 220.127.116.11.a., it is false. That is the reason why the Complainant has no evidence. With regards to 18.104.22.168.b., it is false. The Complainant had two months preference to buy the domain and decided not to do it. How could we prevent anybody from doing something that he/she previously decided not to do? Complainant has other URS disputes, seemingly pretending that nobody can use any BBVA.*. If the Examiner agrees on this, we could also agree that 22.214.171.124.b. is false. With regards to 126.96.36.199.c., the Complainant decided not to use this argument because it would be the most ridiculous thing to say. Finally, regarding 188.8.131.52.d., here is where the Complainant apparently found evidence of our bad faith. I was most surprised, see attachment of my own screenshot. It is false that we are monetizing the domain. We just bought it and Godaddy.com tells us that the domain is parked for free and waiting for our website to be built, as it can be seen on the screenshot. I have just tried to cancel this, but the domain is blocked because of this dispute. If the bank had only told us, the links would not be there, but they seemingly prefer things this way in order to have an argument for this dispute. We hope the Examiner will understand that this is not an evidence of bad faith. As soon as we are able to, we will upload our website for agricultural services and those links will disappear. In conclusion, we say in our favor URS 5.7.1., 5.7.3. and 5.8.1.
In all URS proceedings, “[t]he burden of proof shall be clear and convincing evidence.” URS, para. 8.2. Accordingly, the Complainant must establish, by clear and convincing evidence, each of the following three elements:
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
In other words, a complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
As the URS itself states: “The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.” URS, para. 8.5.
The record makes clear that “the Complainant holds a valid national or regional registration and that [it] is in current use,” and that the registration is identical to the second-level portion of the disputed domain name, as required by paragraph 184.108.40.206 of the URS. Accordingly, Complainant has satisfied the first element of the URS.
However, with respect to the second and third elements of the URS, that is, rights and legitimate interests and bad faith, the Examiner finds it informative that Respondent has stated that it “based in La Safor (Valencia, Spain), and… provide[s] category 44 (*.LAND) services to Bellreguart, Beniarjo, Villalonga and Almoines, which are 4 neighboring towns” – that is, towns that start with the letters B, B, V and A. The Respondent’s provision of a “Superior Agronomical Engineer degree” and “a map of the area” are also informative.
Although, as in the previous URS determination involving Complainant, , Banco Bilbao Vizcaya Argentaria, S.A. v. farris nawas, NAF Claim No. 1547721, the Respondent in the instant proceeding apparently has used the disputed domain name in connection with a monetized parking page that contains links related to the BBVA trademark, there is a key distinction in this case. Namely, the respondent in the earlier URS case apparently did not file a response, whereas the Respondent in the instant case has stated that it was “most surprised” to learn of the page, which differed from its own review of the website, and that its attempts to “cancel” the monetized parking page were unsuccessful because “the domain is blocked because of this dispute.” Given that the disputed domain name was only registered on March 5, 2014, and that the Complaint in this proceeding was filed just nine days later, this explanation from Respondent is plausible.
As a result, Respondent’s explanation as to why it selected the disputed domain name and its apparent unintended use for nine days do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.
As this Examiner has stated in three previous determinations, the URS process is a narrow one with a very high burden of proof and is “without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,” URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints. Further, the URS expressly allows a losing party to file an appeal, pursuant to paragraph 12, and the Examiner is aware of no provision in the URS that prohibits a complainant from refiling a URS complaint, perhaps based on either newly discovered evidence or a change in the applicable facts.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent: <bbva.land>.
Douglas M. Isenberg, Examiner
Dated: March 28, 2014
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