DECISION

Popular, Inc. v. Henry Chan

Claim Number: FA0308000183739

PARTIES

Complainant is Popular, Inc., San Juan, Peurto Rico (“Complainant”) represented by Michael W.O. Holihan of Holihan Diaz. Respondent is Henry Chan, Nassau, Bahamas (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bancopopulardepuertorico.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that, to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 11, 2003; the Forum received a hard copy of the Complaint on August 13, 2003.

On August 21, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <bancopopulardepuertorico.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2003, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bancopopulardepuertorico.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 22, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <bancopopulardepuertorico.com>, is confusingly similar to Complainant’s BANCO POPULAR mark.

2. Respondent has no rights or legitimate interests in the <bancopopulardepuertorico.com> domain name.

3. Respondent registered and used the <bancopopulardepuertorico.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant produced evidence in this proceeding of its trademark registration with the United States Patent and Trademark Office (“USPTO”) for the BANCO POPULAR mark (Reg. No. 1,882,478 registered on March 7, 1995) in relation to banking services. Complainant has used the mark in connection with banking services in Puerto Rico for some 100 years.

Respondent registered the <bancopopulardepuertorico.com> domain name April 4, 2003. Respondent is using the disputed domain name to redirect Internet traffic to a website at the <dp.information.com> domain name. This website diverts Internet users to banks that compete with Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BANCO POPULAR mark through registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant argues that the domain name registered by Respondent, <bancopopulardepuertorico.com>, is confusingly similar to Complainant’s mark because the disputed domain name incorporates Complainant’s mark and adds “de Puerto Rico” to the end of the mark. Since the Spanish word “de” translates to the English word “of,” the only substantive difference between the domain name and the mark is the addition of the geographic designation “Puerto Rico.” The addition of a geographic term to a trademarked term in a domain name does not sufficiently differentiate the domain name from the trademark under Policy ¶ 4(a)(i). See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

The Panel finds that Policy ¶ 4(a)(i) has been established.

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.  Respondent did not contest Complainant’s allegations in this proceeding; thus, the Panel accepts as true all of the reasonable allegations and inferences in the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, the Panel will presume that Respondent lacks rights to or legitimate interests in the <bancopopulardepuertorico.com> domain name because Respondent failed to respond. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent is using the <bancopopulardepuertorico.com> domain name to divert Internet traffic to a website that provides links to banks that compete with Complainant’s banking services. The use of a domain name confusingly similar to Complainant’s BANCO POPULAR mark to provide links to competitors of Complainant is not a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

Respondent offered no proof and no evidence in the record suggests that Respondent is commonly known by <bancopopulardepuertorico.com>. Therefore, the Panel finds that Respondent failed to establish rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the domain name in bad faith. Respondent uses the <bancopopulardepuertorico.com> domain name to divert Internet users to Complainant’s competitors.  Using Complainant’s mark in the disputed domain name evidences Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). Further, Respondent intentionally is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See H-D Michigan, Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Furthermore, Respondent’s registration of a domain name incorporating both Complainant’s BANCO POPULAR mark and Complainant’s primary place of business, Puerto Rico, suggests that Respondent knew of Complainant’s interest in its mark prior to such registration and use. Respondent’s registration of a domain name containing Complainant’s mark, <bancopopulardepuertorico.com>, despite Respondent’s knowledge of Complainant’s rights in its mark, establishes Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bancopopulardepuertorico.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 6, 2003.

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