Claim Number: FA1710001755479




   Complainant: BANCO POPULAR ESPAÑOL, S.A. of Madrid, Spain
Complainant Representative: Ubilibet, S.L. Marta Pomada Llatser of Barcelona, Spain

   Respondent: PERFECT PRIVACY, LLC of Jacksonville, FL, US


   Registries: DotOnline Inc.
   Registrars: Network Solutions LLC


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Flip Jan Claude Petillion, as Examiner


   Complainant Submitted: October 25, 2017
   Commencement: October 25, 2017
   Default Date: November 9, 2017
   Having reviewed the communications records, the Examiner finds that the 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.


   Findings of Fact: The Complainant is a Spanish banking group composed of six subsidiary banks and other financial entities. Among these banks is BANCO PASTOR, S.A., which allegedly has 197 branches in Spain. BANCO PASTOR, S.A. is the holder of inter alia the national European word mark “GRUPO BANCO PASTOR”, of a Mexican figurative trademark containing the word “PASTOR” and of figurative trademarks in the European Union and Norway containing the words “BANCO PASTOR”. Respondent registered the disputed domain name on September 14, 2017. The disputed domain name is used to redirect to a parking page mentioning that the domain name “isn’t connected to a website yet”. 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.


Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS] The registered domain name(s) is/are 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.

Determined: Finding for Complainant 

The record makes clear that the Complainant’s subsidiary “holds a valid national or regional registration and that [it] is in current use”. The Examiner finds that the second-level portion of the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it contains the word “pastor” followed by the letter “b”. For banking services, the word “pastor” can be seen as a distinctive element of the trademarks registered by the Complainant’s subsidiary. As the disputed domain name contains the word “pastor” in its entirety together with the letter “b” which could be associated with the word “banco”, the Examiner considers that Complainant has satisfied the first element of the URS in accordance with paragraph of the URS.    Although the above is sufficient with respect to the first element of the URS, the Examiner notes that the word “pastor” is also a “dictionary word” that appears unrelated to the BANCO PASTOR trademark; the Merriam-Webster online dictionary defines it as “a spiritual overseer; especially: a clergyman serving a local church or parish” (<https://www.merriam-webster.com/dictionary/pastor>, visited November 10, 2017).  The letter “b” is the second letter of the English alphabet and can be used as an abbreviation of a name or surname beginning with the letter “b”. he Examiner considers this relevant to both the second and third elements of the URS.

[URS] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Respondent 

Complainant has not authorized Respondent to use its registered BANCO PASTOR trademark. Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. However, the Examiner observes that the dominant word elements of the Complainant are descriptive. The Examiner considers that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the Respondent's aim in registering the disputed domain name was to profit from and exploit the complainant's trademark (See Harvard Lampoon, Inc. v. Reflex Publishing Inc., WIPO Case No. D2011-0716; National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424). The Complainant does not provide clear and convincing evidence indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the Complainant's trademark. As a matter of fact, the Complainant does not provide any proof of use of the disputed domain name. No screenshot of the website associated to the disputed domain name is provided. The Examiner’s own research reveals that the disputed domain name is linked to a parking page of a website developing company mentioning that the domain name “isn’t connected to a website yet”. The Respondent does not use the disputed domain name for commercial purposes and does not refer to the Complainant or its business on the website linked to the disputed domain name. The mention that the domain name is not connected to a website yet may indicate that the Respondent has plans to use the disputed domain name in connection with its dictionary meaning or for services that are unrelated to the Complainant. Therefore, Examiner finds that the second element for Complainant to obtain the suspension of a domain name under URS has not been proven.

[URS] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s 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 Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Respondent 

Given Examiner’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use. However, Examiner considered the issue, and finds that no bad faith is shown. Examiner considers that Respondent was at liberty to register the disputed domain name as a common term. There is no evidence that in making the registration the Respondent targeted the Complainant or Complainant’s trademark. The URS process is a narrow one – with a 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.


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


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(s) be returned to the control of Respondent:

  1. pastorb.online


Flip Jan Claude Petillion
Dated: November 10, 2017



Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page