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.
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,
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
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
- Respondent has no rights or legitimate interests in respect of the disputed domain
- 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.
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
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
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 of 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.
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).
Date: November 21, 2008