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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banco Atlбntico, S.A. v. Infomax 2020, S.L.
Case No. D2000-0795
1. The Parties
1.1. Complainant: Banco Atlбntico, S.A., of Spanish nationality, with a place of business at Calle Gran Vнa No. 48 - 28013 Madrid - Spain
1.2. Respondent: Infomax 2020, S.L., of Spanish nationality, with a place of business at Avenida del Paнs Valenciano No. 27 - 03720 Benissa, Alicante, Spain.
2. The Domain Name and the Registrar
2.1. The subject of the complaint is two domain names: "VIATLANTICO.COM" and "VIATLANTICO.NET".
2.2. The registering entity for both domain names is INTERNET NAMES WORLDWIDE (A division of Melbourne IT Ltd. ACN 073 716 793 Level 2, 120 King St. Melbourne 3000).
3. Procedural History
3.1. A complaint was submitted to the WIPO Arbitration and Mediation Center (hereinafter called the Center) on July 14, 2000, in accordance with the "Uniform Domain Name Dispute Resolution Policy" (hereinafter called the "Uniform Policy" as adopted by ICANN on October 24, 1999, and in accordance with the Rules for the Uniform Policy that ICANN likewise adopted.
3.2. Copies of the complaint were mailed to the Registrar on July 20, 2000 and to the respondent who replied to the complaint on August 7, 2000.
3.3. On August 24, 2000, WIPO appointed Luis H. de Larramendi as panelist and provided him with a complete copy of the documentation on the same date.
3.4. On September 4, 2000, the panel received the additional submission proposed by the complainant by e-mail and by fax. The corresponding comments from the Respondent were received on September 5, 2000.
3.5. On September 6, 2000, the Panel notified the Center by e-mail that it did not accept the additional submission proposed by the complainant basically because it felt that a decision could be rendered on the basis of the documentation and allegations already submitted by the parties. It further considered that the information on which the proposed additional submission was based was not sufficiently relevant to alter the final conclusions that the panel might reach.
4. Factual Background
4.1. The complainant, Banco Atlбntico, S.A., is registered proprietor of Community trademark application No. 000829234 VI@TLANTICO, filed with the Office for Harmonization in the Internal Market on May 20, 1998, to distinguish "financial affairs; monetary affairs; real estate affairs" in class 36 of the International Classification. It also owns US trademark registration No. 1341446 BANCO ATLANTICO for "banking services", also in class 36 of the International Classification, and with priority from July 11, 1985.
Banco Atlбntico, S.A. is a well-known Spanish banking entity and one of the highest ranking in its sector.
4.2. The respondent is a limited liability company that was incorporated in Alicante, Spain, on June 17, 1999, as follows from Document No. 5 attached to the Response.
4.3. The following facts must also be taken into account for purposes of these proceedings:
- Those who log onto "VIATLANTICO.COM" and "VIATLANTICO.NET" are redirected to "WWW.IMAX20.COM", respondent’s main web site which offers information concerning the computer industry intended for professional users and experts in the operation of the Internet in general.
- The "VIATLANTICO.COM" and "VIATLANTICO.NET" domain names were registered on March 20, 2000 and March 22, 2000 respectively (Annex A of the complaint).
5. Parties’ Contentions
The complainant contends:
- that the respondent has registered two domain names that are identical to a trademark it has applied for (Community application 829234 VI@TLANTICO) and quite similar to a registration complainant owns in the United States (US registration No. 1341446 BANCO ATLANTICO).
- that Banco Atlбntico, S.A. is also proprietor of domain name registrations for "ATLANTICOBANK.COM" and "BATLANTICO.COM", both registered on October 24, 1996.
- that Banco Atlбntico, S.A. is the fifth most important bank in Spain and currently employs over 2800 persons.
- that the complainant has used the VI@TLANTICO service mark since 1998 for finance, monetary and real estate services and the volume of sales under the mark since it was put into circulation amounts to more that ten million US dollars, over US$500.000 having been spent to promote the mark. As a result, complainant considers that the VI@TLANTICO (device) mark is famous.
- that the respondent has registered and used the domain names in question in bad faith because:
* it has attempted to sell the domain names for a price in excess of the cost of applying for and registering them;
* registration of the two domain names moreover constitutes an intentional and willful misappropriation of complainant’s rights in its VI@TLANTICO mark and their use will probably cause, or has already caused, error or confusion as to the source, sponsorship, affiliation or endorsement of the web page or pages identified by the domain names in dispute;
* it obtained financial gain by charging Internet users attracted by the domain names in question for access to its pornographic web pages.
Consequently, complainant petitions that the domain names in dispute be transferred to Banco Atlбntico, S.A.
The respondent has replied to the complainant’s contentions as follows:
- although it does not deny the importance of Banco Atlбntico in the banking industry, it alleges lack of proof evidencing the complainant’s statement that it is the fifth most important banking entity in Spain.
- it states that the VI@TLANTICO mark can in no way be considered "famous" since its fame has not been proven nor has sufficient time elapsed since the date it was filed to allow it to achieve that status. Additionally, it believes it necessary to emphasize the fact that, since the time the trademark application was filed, complainant has shown no interest in registering a corresponding domain name.
- in analyzing the case from the standpoint of comparing the domain names in dispute not only with the VI@TLANTICO (device) mark but also with the BANCO ATLANTICO mark, complainant’s intention is to attempt to have the two marks seen as having the same characteristics.
- at no time has respondent had any relation with, or conducted any activities in, the pornography business and Banco Atlбntico, S.A., taking undue advantage of its position, is availing itself of reprehensible tactics to ruin respondent’s image, reputation and good name.
- at no time has the respondent attempted to sell the domain names in dispute to Banco Atlбntico, S.A. and contacts between the parties were never intended to secure financial gain.
- not only has the complainant not proven its claim that the VI@TLANTICO (device) mark is renowned but it does not even own rights in the mark given that the Community trademark application for the mark has not yet been granted.
- the creation of the "VIATLANTICO.COM" and "VIATLANTICO.NET" domain names is the result of a project that respondent commenced in 1999 for the purpose of identifying the activities of a travel agency.
- its good faith in applying for the domain names in dispute is evidenced, among other actions, by its having requested the URYAS Patent and Trademark Agency to conduct a prior search for the purpose of ascertaining whether a VIATLANTICO mark existed and by its having then instructed the agency to file the corresponding trademark application on finding that the search had disclosed no anticipation.
- the incorporation of Infomax 2020, S.L. on July 17, 1999, was followed by the development of a project to create a portal offering travel and real estate agency services under the "VIATLANTICO.COM" and "VIATLANTICO.NET" domain names, this term having been adopted because it evokes the services to be provided, mainly trips to the Caribbean and North America.
- respondent has in general followed the procedures necessary to commence business under the name VIATLANTICO, these procedures including not only the actions taken by the URYAS Patent and Trademark Agency mentioned above but also instructions given to various advertising agencies to design and develop a corporate image for the VIATLANTICO project.
- respondent admits that the web pages corresponding to the domain names in dispute are not yet active, this being the reason for re-directing those who log on to the pages to "IMAX20.COM" until the project in question is completed.
The respondent requests that the complaint be dismissed and that the remedies requested by complainant be denied, something that implies its intention to retain the ownership of the domain names in dispute.
6. Discussion and Findings
6.1. Applicable Rules
Paragraph 15 a) of the Rules instructs the Panel to render its decision on the basis of:
- the statements and documents submitted by the parties;
- the provisions of the "Uniform Policy" and of the "Rules" themselves; and
- any rules and principles of law that it deems applicable.
Considering that both the complainant and the respondent are of Spanish nationality, the law and principles of law of Spain are particularly pertinent together with the Uniform Policy and the Rules.
6.2. Examination of the Premises for Acceptance of the Complaint set out in Paragraph 4 a) of the Uniform Policy.
These premises are:
- the domain name registered by the respondent must be identical or confusingly similar to an earlier product t or service mark in which the complainant holds rights.
- the respondent must have no rights or legitimate interest in respect of the domain name; and
- the domain name must have been registered and used in bad faith.
6.2.1. Analysis of the Identity or Similarity of the Trademark and the Domain Name
Two separate questions must be considered in connection with this first requirement:
- whether the complainant holds rights in the term VI@TLANTCO and
- whether "VIATLANTICO.COM" and "VIATLANTICO.NET" are identical or similar to VI@TLANTICO.
220.127.116.11. With respect to the first question, this panel considers that respondent’s statement denying complaint’s rights in VI@TLANTICO because Community trademark application No. 000829234 is still in prosecution cannot be accepted as valid.
Article 34, paragraph 1, of the Spanish Trademark Law establishes that "the right conferred by a trademark registration may only be enforced against third parties, except insofar as article 26 is concerned, from its grant. ..."
This panel believes it necessary to qualify the content of that article bearing in mind not only article 26 which is specifically cited in article 34 and quoted below, but also two other articles which are likewise quoted below.
- Article 26: "Any interested party who considers himself prejudiced may oppose an application for registration of a trademark."
- Article 41: "Independently from the transfer of the whole or of part of the undertaking, a trademark and an application for registration of a trademark may be assigned in all manners recognized by law."
- Article 42.2: "The rights conferred by a trademark registration or by its application may be exercised against any licensee who breaches any of the limits of his license established by the agreement or by virtue of the provisions of the preceding paragraph."
If a mere trademark application may constitute the basis for preventing third parties from subsequently registering similar trademarks through opposition and if a trademark application may be the subject of a license or the basis for making claims of other types, it does indeed constitute a right and, although that right may not have yet been consolidated, it is a right to priority in time.
The expectant right constituted by an application thus includes a genuine and preferential right in time that this panel therefore recognizes.
18.104.22.168. With respect to the second question, the panel first wishes to underscore the premise that the comparison of the domain names in dispute and the rights evidenced by the complainant must be limited to a comparison of the domain names to the VI@TLANTICO Community trademark application only.
The panel is of the opinion that the domain names and the BANCO ATLANTICO trademark are not sufficiently similar; they differ lexically and from the standpoint of meaning. It must also be admitted that the word ATLANTICO, the only word shared by the two terms, may form part of other distinctive signs, or at least part of other distinctive signs for activities other than the "banking services" protected by US trademark registration No. 1341446.
Having stated the foregoing, the panel considers that neither the visual elements included in the VI@TLANTICO Community trademark nor the different designs of the "a" and the "@", the second vowel of each term, undermine the fact that VIATLANTICO and VI@TLANTICO are identical from the standpoint of sound.
Given that, in the opinion of the panel, it is the word elements of distinctive signs that must prevail as the main instrument for their identification by consumers, it is concluded that the complainant meets the first requirement of the Uniform Policy. The domain names in dispute and the complainant’s trademark are strikingly similar; they border on identity from the lexical standpoint and they are completely identical from the standpoint of sound.
6.2.2 Analysis of the Existence or Non-Existence of Rights or Legitimate Interests in the Domain Names in Conflict held by the RespondentParagraph 4 c) of the Uniform Policy sets forth, in particular but without limitation, the specific circumstances any of which, when duly proven by the respondent, demonstrates the existence of rights or legitimate interests in the domain name.
These circumstances are quoted below:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
22.214.171.124 As evidenced in the documentation submitted by the respondent and stated under "Procedural History" above, respondent was notified of the complaint on July 21, 2000, although the dispute may be considered to have commenced on April 13, 2000, the date of the e-mail from the respondent to the complainant, the first proven contact between the parties.
Nonetheless, the panel considers respondent’s actions in connection with the use of the domain name long before that date to be preparations to use the domain names in dispute or names corresponding to the domain names in connection with a bona fide offering of goods or services.
The following documents are particularly relevant in this respect:
- The letter dated July 31, 2000 from Girones Impresores stating they had been in contact with "the company Vнa Atlбntico" since October of 1999 for the purpose of creating and developing an identifying logo and the necessary stationery.
- Invoice dated 16 December 1999 from TorreMбtica, S.L. issued to the respondent and billing several items including "the creation of a travel portal with "VIATLANTCO.COM" and "VIATLANTICO.NET".
- Consideration must also be given to the fact that, albeit after the date the dispute commenced, the respondent continued its preparations by consulting with the Spanish Patent and Trademark Office on May 16, 2000 through the URYAS Patent and Trademark Agency as to the possible existence of a VIATLANTICO trademark (Document No. 3 of the Response) and by filing a trademark application for VIATLANTICO through that same Agency in the month of June (Document No. 4 of the Response).
126.96.36.199 Another aspect to be borne in mind is the consideration of "famous" that the complainant accords to its VI@TLANTICO mark as the reason why the respondent could have been aware of the existence of its sign before commencing the preparations described above.
Regardless of whether the consideration of "famous" might or might not be recognized by other entities, the panel must restrict itself to the evidence submitted by the parties:
- the complainant states that sales of over ten million US dollars have been made through its VI@TLANTICO mark and its investment in advertising comes to more than US$500.000.
- the respondent, on the other hand, does not acknowledge that alleged "fame", stating that it has not been proven through documents and that the time elapsed since the VI@TLANTICO Community trademark application was filed is insufficient for the mark to have acquired renown.
The fact is that the documentation submitted by the complainant makes only one reference to effective use or genu ine advertising of the VI@TLANTICO mark. This reference appears in Annex D of the complaint which is a partial printout of the content accessed through WWW.ATLANTICOBANK.COM recommending that business be done on the stock market through the Internet by means of "VI@TLANTICO stock market".
Furthermore, the document is dated July 12, 2000, i.e. a date subsequent to that which the panel has held to be the date on which the dispute commenced.
Consequently, the complainant has not evidenced the reputation it claims its mark enjoyed prior to the commencement of the dispute, this being a point that must be proven and not simply stated or suggested. (Rulings along these same lines have already been made in other decisions such as No. D2000-0016).
The panel therefore concludes that, before the respondent was aware of the dispute proceedings in relation to the domain names in question, it had made preparations to use the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services.
The panel is of the understanding that the complainant has not proven that the respondent has no legitimate interest in the domain names in dispute.
6.2.3. Analysis of the Existence or Non-Existence of Bad Faith in the Registration of the "VIATLANTICO.COM" and "VIATLANTICO.NET" Domain Names.
Since the complainant has not shown that the requirement set out in paragraph 4 a) ii) of the Policy has been met, it is not necessary to examine the last requirement identified above (Decisions D2000-0008 and D2000-0040, among others).
However, in order to render a complete decision, the panel will analyze this requirement:
188.8.131.52. Preliminary Considerations
The complainant gives three reasons to evidence that the domain names in dispute were registered and used in bad faith, as quoted below from its complaint:
"- Respondent’s attempt to ‘sell’ the domain names to Complainant indicates that Respondent registered or acquired the domain names for the purpose of selling the registration for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain names.
- The prior use of the domain names by the Respondent for financial gain is an intentional and willful misappropriation of Complainant’s proprietary rights attributable to its VI@TLANTICO mark in violation of trademark and unfair competition laws. Such deliberate misappropriation is likely to or already has caused confusion, mistake or deception as to the source, sponsorship, affiliation or endorsement of Respondent’s web site activities accessed by domain names which are virtually identical to, and thus infringe, Complainant’s VI@TLANTICO mark.
- Upon information and belief, Respondent made money by charging Internet users to access Respondent’s pornographic web sites (see the User Agreement for Respondent’s web sites contained in Annex F), and is now intentionally using Complainant’s VI@TLANTICO mark to attract Internet users for commercial gain to its web sites. "
In view of the documentation submitted, the panel:
A. is unable to conclude that the respondent has made any offer whatsoever to the complainant in relation to the domain names in dispute.
In this respect, notwithstanding the statements by the parties, respectively affirming and denying the existence of a genuine financial offer by the respondent, statements that might be assessed differently by other entities, the fact is that there is documentary evidence of only two contacts between the complainant and the respondent:
A.1. The first consists of an e-mail sent to the complainant by a representative of the respondent. No financial offer whatsoever is made in the e-mail and notice is given of the creation of the corresponding web pages (Annex A of the affidavit submitted by the complainant).
Nonetheless, it is worthwhile to mention the fact that, in accordance with the interpretation given in other decisions, the existence of a financial offer by the respondent does not necessarily imply registration and use in bad faith, something which exists if the respondent has no legitimate interest in the domain name or domain names offered for sale (Decision D2000-0046).
Therefore, in this case, the respondent’s legitimate interest would rule out the conclusion that bad faith was involved in the financial offer, even in the event that the offer had been proven through documentary evidence.
A.2.- The second contact consists of the "burofax", the fax registered with and sent through the Spanish Post Office, demanding that use of the domain names in dispute cease and that they be assigned to the complainant itself with no monetary consideration of any type.
Therefore, the documentation submitted does not prove the existence of any genuine offer to sell the domain names in dispute and it is thus concluded that the respondent’s possible use of the domain names in bad faith did not take place.
B.- Since it has been proven that the respondent had a legitimate interest in the domain names in dispute, it cannot be concluded that it intended to obtain commercial gain through the domain names in dispute or that any such action was taken in bad faith.
C.- Finally, neither has it been proven through documentary evidence that the respondent intentionally re-directed users from the domains in dispute to a pornographic portal.
It cannot even be considered proven that the pornographic portal had some connection to the "VIATLANTICO.COM " and "VIATLANTICO.NET " domain names, to "IMAX20.COM" (where users are now re-directed from the domains in dispute), or even to the respondent itself.
Annex E of the complaint, later repeated as Annex C of the affidavit given by the complainant’s representative, consists of an agreement establishing the conditions for access to the pornographic material but makes no reference whatsoever to the path used to reach the web page from which the document as such was retrieved.
As a result, it has not been proven that the respondent has or had any relation whatsoever with the pornography business.
Despite the fact that, as set out above, the existence of legitimate interest made it unnecessary to analyze this last requirement, the panel concludes that the complainant did not prove the existence of bad faith in the registration and use of the domain names in dispute.
The panel concludes that the respondent secured registration of two domain names that are identical or confusingly similar to the rights held by the complainant. However, the latter has not proved that the former has no legitimate interest in its registrations nor that use and registration of the domain names in dispute were effected in bad faith.
The domain names "VIATLANTICO.COM" and "VIATLANTICO.NET" should not be transferred to the complainant.
Luis H. de Larramendi
Dated: September 15, 2000