"Capitalone Credit Card"
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banco Nacional de México, S.A. Integrante del Grupo Financiero Banamex and Citibank (Banamex USA) v. Domain Park Limited Case No. D2008-1457 1. The Parties Complainants are Banco Nacional de México, S.A. Integrante del Grupo Financiero Banamex, of Mexico, D.F., Mexico, and Citibank (Banamex USA), of Los Angeles, California, United States of America, represented by Paul, Hastings, Janofsky & Walker, LLP, United States of America. Respondent is Domain Park Limited, of Apia, Samoa. 2. The Domain Name and Registrar The disputed domain name <banamexusa.com> is registered with Rebel.com Corp. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2008. On September 25, 2008, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On September 25, 2008, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2008. page 1 The Center appointed Roberto Bianchi as the sole panelist in this matter on November 7, 2008. 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 Complainants have contended the following facts and circumstances without any opposition by Respondent: - Banamex is Mexico’s second largest bank with more than 1,427 branches and 4,492 ATMs in Mexico. - Banamex owns numerous trademark registrations for the trademark BANAMEX and variations thereof in Mexico, Argentina and the United States of America. In particular, Banamex owns the United States word mark BANAMEX USA, Reg. No. 1838831, filed on August November 17, 1992 registered on June 7, 1994. This registration has been renewed. Banamex also owns the United States word mark BANAMEX, Reg. No. 1614211, filed on August 22, 1989 and registered on September 18, 1990. This registration also has been renewed. - Banamex has invested more than USD100,000,000.00 in the last 12 years advertising BANAMEX branded financial services worldwide. - Citibank (Banamex USA) is the licensee of the BANAMEX trademark in the United States and Mexico for financial services. - Respondent registered the disputed domain name on November 29, 2006. - On August 28, 2008, the disputed domain name pointed to a web page containing links to the websites of Complainants’ competitors such as HSBC Bank USA N.A., Countrywide Bank, Bank of America, Discover Bank, Wells Fargo Bank, Wachovia Corporation, etc. 5. Parties’ Contentions A. Complainant Complainants contend as follows: - The <banamexusa.com> domain name is likely to cause confusion with the inherently distinctive and famous BANAMEX trademarks, as well with the domain name <banamex.com>, owned by Banamex. The addition of a country name does nothing to change an otherwise identical or confusingly similar domain name. - Respondent has no rights or legitimate interests in respect of the disputed domain name. page 2 - The disputed domain name was registered and is being used in bad faith. Respondent is using the domain name to confuse and divert Internet users to competing websites through a “pay-per-click” domain-parking page that contains links to the websites of Complainants’ competitors. Respondent’s activities are also designed to disrupt and harm Complainants’ business by diverting potential customers to Respondent’s website, thereby inducing them to purchase services from other parties instead of Complainants. B. Respondent The Respondent did not reply to the Complainant’s contentions, and is in default. 6. Discussion and Findings UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar By submitting printouts taken from the Trademark Applications and Registrations Retrieval (“TARR”) database of the United States Patent and Trademark Office (“USPTO”) Complainants evidenced that Complainant Banamex owns, inter alia, the United States word marks BANAMEX (Reg. No. 1614211) and BANAMEX USA (Reg. No. 1838831). Both marks are in force. Accordingly, the Panel finds that Complainant Banamex has rights in such marks. Except for the missing space between the terms “banamex” and “usa”, the disputed domain name is identical to the BANAMEX USA mark. See Grant Thornton International v. Martin Schmitz, WIPO Case No. D2006-1085 (“It is commonly known that technically the letters in domain names cannot be separated by spaces […]”). As to the BANAMEX mark, the addition of the name of a country (or its common abbreviation) to a mark in a domain name is inapt to distinguish the domain name from the mark. See InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076 (finding the mere addition of the word “India” insufficient to distinguish the domain name from the trademarks of the Complainant, as it appears to be made most likely to induce Internet users to believe that they are connecting with a site of an Indian affiliate or to some “Indian operation” of the Complainant). The Panel concludes that the first element of the Policy is met. B. Rights or Legitimate Interests page 3 According to Complainants, they have no relationship with Respondent and have never granted a license, sub- license or permission to Respondent to use the BANAMEX trademark or a domain name incorporating the BANAMEX mark or any variation thereof. Complainants further contend that Respondent has never been known by or operated a bona fide business under the name BANAMEX or under the <banamexusa.com> domain name. Complainants add that Respondent is not making a legitimate non commercial or fair use of the disputed domain name, and that its only purpose for using the disputed domain name is to enhance its personal commercial gain by holding itself out as affiliated with or connected to Complainants, or as Complainants themselves. This, say Complainants, can never constitute a bona fide offering of goods or services, or a legitimate non commercial or fair use under the Policy. Taken together, Complainants’ contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. However, Respondent has not presented the Panel with any comments or evidence. Accordingly, the Panel considers that Complainants have satisfied Policy paragraph 4(a)(ii). See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. At http://www.wipo.int/amc/en/domains/search/overview/index.html. C. Registered and Used in Bad Faith Complainants submit printouts taken from Respondent’s website at the disputed domain name with numerous links referring to Complainant and Complainant’s competitors, and to services provided by Complainant or its competitors, such as “CapitalOne Credit cards” (“www.capitalone.com”); HSBC Mastercard (“www.hsbccreditcard.com”) and “Apply for Credit cards” (“www.creditcards.com”), and related searches such as “Online Payments”, “Credit Card”, “Banamexusa Credit Card”, “WWW Banamex Com”, “Banamexusa”, “Apply For A Credit Card”, etc. Since most of these links are of financial nature, the same line of business of Complainants, the Panel infers that Respondent, at the time of registering the disputed domain name, knew of or could not have ignored the existence of Complainants, two well known financial institutions, and their equally well-known marks BANAMEX and BANAMEX USA, in use and registered about ten years prior to the registration of the disputed domain name. The Panel concludes that the disputed domain name was registered in bad faith. The links appearing on the “www.banamexusa.com” website redirect Internet users to commercial websites, either from competitors o f Complainants or from other businesses offering or related to financial services. In all likelihood, Respondent appears to be extracting a profit, from “click-through” or “pay-per-click” mechanisms. UDRP panels routinely consider this use of the disputed domain name to fall squarely within Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location). As this is a circumstance of bad faith registration and use of the disputed domain name, the Panel finds that the third requirement of the Policy is met. page 4 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 <banamexusa.com> be transferred to Complainant Citibank (Banamex USA). _____________________________ Roberto Bianchi Sole Panelist Date: November 21, 2008 page 5