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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

La Caixa d’estalvis i Pensions de Barcelona v. N/A

Case No. D2005-0601

 

1. The Parties

The Complainant is La Caixa d’estalvis i Pensions de Barcelona, Barcelona, Spain, represented by Bufete Dexeus Abogados Asociados, Barcelona, Spain.

The Respondent is N/A, c/o Charles Osabor, Huntington, West Virginia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lacaixaonline.net> is registered with Tucows Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2005. On June 10, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 10, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center, the Complainant filed the hardcopies of the Complaint on November 28, 2005. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on December 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2006.

The Center appointed Christian Pirker as the sole panelist in this matter on February 13, 2006. 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.

The Panel notes the considerable time, in spite of numerous reminders issued by the Center, taken up by procedural formalities leading up to the Panel’s appointment. However, in light of the fact that, as the Center had noted, resolution of the domain name to an alleged phishing site had changed to non-resolution when the Center notified the Complaint, this passage of time has not had adverse consequences, taking also into account the obvious nature of the Panel’s conclusions as set out in Section 6 below.

 

4. Factual Background

The Complainant is La Caixa d’Estalvis i Pensions de Barcelona, a major bank widely known, whose main business is in the field of pensions, banking and financial services. The group is known under the trade name “La Caixa”.

The Complainant has registered numerous trademarks containing the term LA CAIXA, since 1977, among others:

- Spanish Trademark N° 1053032-33-34-35 in classes 16, 35, 36, 38;

- Spanish Trademark N° 105480-81-82-83 in classes 16, 35, 36, 38;

- International Trademark N° 512198 in classes 16, 35, 36, 38

The essential part of those trademarks appears to be the term “LA CAIXA”.

The Complainant has also registered numerous domain names containing the “term “la caixa” to present the company and offer its Internet services, among others:

- <lacaixa.es> registered on July 4, 1995, and <lacaixa.com> and <lacaixa.org>.

The domain name <lacaixaonline.net> was registered in June 11, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it had noticed a website which adopted the same basic design and trade dress as Complainant’s website to which the disputed domain name resolved. The Complainant states that this website was intended to attract Internet users in order to obtain their Internet user passwords and usernames and/or any undue advantage from mistaken third parties.

Further, the Complainant alleges that it owns numerous trademarks which include the term “LA CAIXA”, that it registered and used numerous domain names, including <lacaixa.es> and that the Respondent has registered and used the disputed domain name which is confusingly similar to the La Caixa group’s trademarks.

The Complainant specifies that it has no connection whatsoever with the Respondent, nor that the Respondent has business or any other connection or affiliation with the Complainant, nor that the Complainant has licensed, expressly or implicitly, or otherwise permitted the Respondent to use the trademark LA CAIXA or to apply for any domain name incorporating the LA CAIXA trademark. The Complainant also alleges that the Respondent does not use the domain name <lacaixaonline.net> for a legitimate non-commercial or fair use, but registered it only for phishing purposes i.e. to attract and confuse Complainant’s Internet customers in order to obtain their user names and passwords through mistaken logins to the Respondent’s website. Complainant adds that the Respondent’s website was also intended to deceive Internet users who believed they were in contact with the Complainant’s website. Accordingly, the Complainant alleges that the Respondent has no legitimate interests in the domain name <lacaixaonline.net>.

Finally, the Complainant contends that the Respondent has registered and is using the domain name in bad faith since the Respondent intentionally attempted to attract, for phishing purposes, the Complainant’s Internet users and any customers to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark and website.

Accordingly, the Complainant requests the Administrative Panel to issue a decision to transfer the domain name <lacaixanonline.net> to the Complainant.

B. Respondent

As noted above, the Respondent is in default pursuant to paragraphs 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules, as no Response was submitted.

It is further noted that the Respondent did not give further response nor communicate any further message after having been informed of the filing of a Complaint against him.

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rules, paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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”.

Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:

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

(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The term “LA CAIXA” is included in trademarks which are registered in some countries in classes 16, 35, 36 and 38, mainly for banking, pensions and financial services. As mentioned above, the disputed domain name is <lacaixaonline.net>, and the question is therefore whether that name is identical or confusingly similar to the Complainant’s trademark. Previous panels have decided that ‘essential’ or ‘virtual’ identity is sufficient: The Stanley Works and Stanley Logistics, Inc v. Camp Creek Co., Inc, WIPO Case No. D2000-0113 and Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102. In the present case, the essential part of Complainant’s trademarks appears to be the term “LA CAIXA”. Accordingly, this term in its entirety is included in the disputed domain name. Moreover, the adjunction of the word “online” to the name “la caixa” in the domain name does not diminish the confusing similarity between the domain name and the trademark, since the essential part of the disputed domain name and the trademark is the term “la caixa” and the word “online” is a descriptive term. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark. See, e.g., AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627. It further appears to the Panel that adding the term “online” to the essential part of the trademark increases the likelihood of confusion. Consistent with these and other decisions, the Panel has no hesitation in concluding that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial 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.

It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in establishing such prima facie condition, it is for the Respondent to answer thereto. Accordingly, the main burden of proof is on the Respondent.

The Complainant alleges that the Respondent has no connection whatsoever with them, and that the use by the Respondent of the domain name for “phishing” purposes obviously does not constitute a right or legitimate interest in the domain name.

As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).

In any event, as further discussed under C. below, the Panel finds these contentions convincing and the Panel considers that the Respondent does not have any rights or legitimate interests in the domain name. It is clear that the alleged phishing purposes cannot constitute a right or legitimate interest. Also, the record contains no information which would explain any type of use of this domain name by the Respondent.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or your location.

The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D1999-0001).

The Complainant owns numerous trademarks which include the term “LA CAIXA” and the Respondent’s domain name includes this term. Moreover, the Complainant is using “La Caixa” as a trade name for its bank and Internet services. The Complainant has provided documentation suggesting that the Respondent’s web site adopted, without Complainant’s licence or authorization, the same basic design and trade dress as the Complainant’s web site. Accordingly, the Complainant’s Internet users apparently were able to access Respondent’s web site and transmit, without being aware of it, their usernames and passwords to an unauthorized third party. Clients may have believed that they had successfully contacted the Complainant.

As similarly stated by the panel in Finter Bank Zьrich v. N/A, Charles Osabor, WIPO Case No. D2005-0871, the Respondent appears to be using the web page for “phishing”, which can be described “as the fraudulent acquisition, through deception, of sensitive personal information such as passwords and credit card details, by masquerading as someone trustworthy with a real need for such information”. The panel in CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 noted: “The Panel agrees with the Complainant that the Respondent’s motive must be to somehow cash in on the personal data thus obtained. This is a violation of the bad faith registration and use provisions of the Policy at paragraph 4(b)(iv): ‘by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location’. (See The Coryn Group, Inc. and Apple Vacations East, Inc. v. Azra Khan, WIPO Case No. D2003-0655 (October 17, 2003)). The Respondent’s actions may also well be a crime in the United States of America, but the Panel believes any possible criminal aspect of the Respondent’s conduct lies beyond the bounds of the UDRP”. Consistent with these and other decisions, the Panel has no hesitation in concluding that both elements of paragraph 4(a)(iii) of the Policy have been met.

The Panel thus concludes that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith. In this connection, the Panel also notes the absence of any explanation by the Respondent of its use of this disputed domain name at any time during the registration period.

 

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, <lacaixaonline.net> be transferred to the Complainant.


Christian Pirker
Sole Panelist

Dated: March 6, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0601.html

 

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