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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam

Case No. D2006-0464

 

1. The Parties

The Complainant is Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”), Barcelona, Spain (the “Complainant”), represented in this proceeding by external representatives from Barcelona, Spain.

The Respondent is Mr. Eric Adam, Texas, United States of America (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <lacaixa-online.com> is registered with eNom, Inc. and is registered with Network Solutions, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2006. On April 13, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 13, 2006, eNom 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, billing, and technical contact.

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 May 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2006.

The Center appointed Marino Porzio as the sole panelist in this matter on June 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.

 

4. Factual Background

The following uncontested facts are found by the Panel to be established:

The Complainant was incorporated under the name “Caixa D’Estalvis i Pensions de Barcelona” in 1990, as the result of the merger between Caja de Pensiones para la Vejez y de Ahorros de Cataluсa y Baleares (established in 1904) and the Caja de Ahorros y Monte de Piedad de Barcelona (established in 1844).

The Complainant has used the expression “LA CAIXA” as a trade name and business denominator in relation to its provision of savings bank products and services.

The Complainant is a major Spanish Savings Bank, as well as the third-ranked in the European savings bank sector, with 9.1 million clients. The “La Caixa” Group manages a total of 133,117 million Euros in client resources, and has a commercial network throughout Spain which at the end of 2004 included 4,841 branches staffed by 24,827 employees.

The Complainant offers several banking products and services in the Spanish market, through the following internet sites: “www.lacaixa.com”, “www.lacaixa.es”, “www.lacaixa.net” and “www.lacaixa.org”. The Complainant has also registered the following domain names: <lacaixa.com.es>, <lacaixa.nom.es> and <lacaixa.org.es>.

The Complainant is the proprietor of trademark registrations for the mark LA CAIXA and a number of other marks containing the expression “La Caixa,” in Mйxico, Andorra and Spain.

The Complainant has also alleged it is the owner of several trademark registrations for the mark “LA CAIXA” and other marks containing the expression “La Caixa”, in further 49 countries. However, the Complainant did not offer any proof of said fact. Therefore, the Panel can not establish the existence of said registrations.

As sufficiently evidenced by the Complainant, the Panel accepts that La Caixa is a well-known and reputable European banking group, which owns trademark registrations for the mark LA CAIXA in Mexico, Andorra and Spain.

The Respondent registered the domain name <lacaixa-online.com> with eNom on August 6, 2005.

 

5. Parties’ Contentions

A. Complainant

The Respondent registered the domain name <lacaixa-online.com> on August 6, 2005, which is confusingly similar to the trade marks registered by the Complainant.

The Complainant’s company name in Mexico and Andorra is “La Caixa”.

The Complainant holds the Andorran trade mark LA CAIXA, for classes 16, 35, 36 and 38 from an earlier date than that of the registration of the domain name <lacaixa-online.com>, as well as the Mexican trade mark “LA CAIXA, for classes 35 and 36, also registered prior to the registration date of the disputed domain name.

The Complainant also holds the composite trade mark LA CAIXA registered with the Spanish Patent and Trade Mark Office on November 14, 1986.

The reputation and renown that the entity “La Caixa” has reached has allowed the entity to be recognized as such, adding the article “La” which assigns it singularity, while other entities must always identify themselves with their complete company name. Therefore, any name which includes the term “La Caixa” invokes the Catalonian banking entity CAIXA D’ESTALVIS I PENSIONS DE BARCELONA in the mind of the consumer.

Ownership of trademark LA CAIXA gives the Complainant the right to the exclusive use of this mark to identify its products and services in commercial traffic on the Internet, to prevent third parties from using the mark without its authorization, and to prevent third parties from using the mark to identify products or services which could cause confusion.

By virtue of article 34 of the Spanish Trade Mark Law, registration of a mark confers to the holder the right to exclusive use in commerce. Therefore, use by the respondent of the name LACAIXA-ONLINE.COM on the web constitutes an intentional and willful misappropriation of the rights which the mark confers on its holder.

It is evident that well-known marks receive special protection in Spain as well as in the European Union. This is the case regarding the mark LA CAIXA.

Any contention by the Respondent in its response referring to the generic character of the name “LACAIXA-ONLINE.COM” would have absolutely no relevance in the present proceeding. (See for example Stella D’oro Biscuit Co., Inc v. The Patron Group Inc.; WIPO Case No. D2000-0012, Raimat, S.A. v. Antonio Casals, WIPO Case No. D2000-0143, et al..)

Due to its special renown the name “LA CAIXA”, has acquired a distinctive character that makes impossible any generic evocation of same.

The mere addition of the term “ONLINE” does not exclude the probability of confusion between the disputed domain name and the complainant’s registered trade marks. (See for example A. Nattemann & Cie GMBH, WIPO Case No. D2003-0844, Avnet’s Pharma v. Derrick Homer; WIPO Case No. D2000-0075, Infospace.com Inc. vs. Tenembaum Ofer; WIPO Case No. D2003-0448, et al..)

The term “ONLINE” attached to “LA CAIXA” is to be understood as the normal domain name that corresponds to the Complainant’s Web Site in the Internet. The term “ONLINE” is generally associated with an Internet based service or product. Any term attached to “LA CAIXA” is liable to create confusion in the public and more so in this case considering that it is a common commercial practice to attach the suffix “ONLINE” to marks or commercial names in order to designate the company’s presence on the Internet.(French Connection Limited v. Frederique Taillefer, WIPO Case No. D2005-0255 ).

The dash added between the term “Caixa” and the word “online” does not change the sense of this interpretation. This is a case of typosquatting: taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom. (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).

The Complainant has been the holder of the following domain names: <lacaixa.com>, <lacaixa.net>, <lacaixa.org>, <lacaixa.biz>, <lacaixa.info>; as well as the territorial domain names, <lacaixa.es>, <lacaixa.com.es>, <lacaixa.nom.es> and <lacaixa.org.es> for some time already.

The current holder of the domain name disputed in this Complaint is not the holder of the registered trade mark LA CAIXA or any other which is similar to the aforementioned, or of any license or any other type of authorization given by the legitimate holders of said trade marks to use them. The Respondent does not have any right or legitimate interest in the use of the term “LACAIXA-ONLINE” as a domain name, and thus, to identify himself with its use.

At this time there is no web site to be found at the disputed domain name, which is evidence that it will not be used in the future. The Respondent does not have any legitimate interest in maintaining said domain name. However, it can be assumed that there is an interest in maintaining the disputed domain name with the objective of obtaining some type of economic gain from its sale.

The Complainant contends that the Respondent has not used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP.

The Respondent cannot argue that he is known by the domain name since there is no service or product offered by the Respondent through the use of the domain name in dispute. The Complainant sees no reason for the Respondent to choose the subject domain name other than to get a profit from its sale.

The Complainant contends that the disputed domain name was registered in bad faith, the Respondent has at no time made commercial use of the disputed domain name. This demonstrate a lack of legitimate interests regarding said domain name, and suggests evident bad faith behind the registration. Adding the name “ONLINE” to “LACAIXA” is not the result of a trivial act, but one that stems from a premeditation.

The Respondent does not, according to the Complainant, have any legitimate interests in maintaining said domain name as there is no content under it.

The Complainant contends that when the Respondent registered said domain name, he was conscious of the fact that he was taking over a name which, from a commercial point of view, is a key point for the Complainant. (Caja de Ahorros del Mediterrбneo v. Antonio Acuсa Racero, WIPO Case No. D2002-0506).

The Complainant also contends that the non-existence of legitimate interests on the part of the Respondent, as well as the awareness of the entity “La Caixa” at the time of registration, indicates that the only reason that the domain name <lacaixa-online.com> was registered was for attempting economic gain, taking willful and unfair advantage of the Complainant’s legitimate interests.

On the basis of the contentions referred to above, Complainant requests the transfer in its favor of domain name <lacaixa-online.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)):

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

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

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

A. Identical or Confusingly Similar

The Complainant has established legitimate rights in the “LA CAIXA” mark, in Spain and elsewhere, pre-dating the domain name registration. A simple comparison shows that the domain name is confusingly similar to Complainantґs mark and company name. The addition of the expression “ONLINE” and of a hypen are not sufficient to distinguish the disputed domain name from the Complainant’s mark. This is particularly so considering that it has been evidenced that the Complainant is also commonly known as “LA CAIXA”. (Banco de Chile S.A. v. Parkrose Investments Ltd., WIPO Case No. D2001-0694)

The Panel finds that the first element of the Policy, under paragraph 4(a)(i) is met.

B. Rights or Legitimate Interests

The Complainant has argued that the Respondent has no rights or legitimate interests in the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating any such mark.

By not submitting a Response, Respondent has also failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

When the Panel independently tried to establish an Internet connection with the web page under the corresponding <lacaixa-online.com> domain name, a “Page cannot be found” message was displayed. This indicates that the web site is not being used in any respect. It also indicates that the Respondent is not making any bona fide use, or any fair and non-commercial use of the domain name.

The Panel finds that the Complainant has established the second element of the Policy, paragraph 4(a)(ii). The Respondent has no rights or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must prove both bad faith registration and bad faith use pursuant paragraph 4(a)(iii). Paragraph 4(b) of the Policy which sets out (expressly without limitation) four sets of circumstances, any one of which, if proved, shall be evidence of both bad faith registration and use:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In addition to the above criteria, other factors alone or in combination can support a finding of bad faith.

In the light of the Complainant’s trademark registrations for “LA CAIXA”, and its reputation, it is most likely that the Respondent was aware of the Complainant’s mark LA CAIXA when registering the disputed domain name. Moreover, it appears unlikely that the Respondent, resident of the United States of America, would have registered a domain name in the Catalonian language, without knowledge of its relevance in the Spanish market.

Knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith. (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.)

In the circumstances, the Panel infers that a likely purpose of the <lacaixa-online.com> domain name registration was to prevent the Complainant from reflecting its mark and commercial name in a corresponding domain name. This is a bad faith circumstance under Policy, paragraphs 4(b)(ii).

As to the requirement of bad faith use, the Panel finds that the evidence of the inactivity and lack of use of the disputed domain name amounts to passive holding by the Respondent and a finding in the circumstances of use in bad faith.

The Complainant has thus also proved the requirement of the Policy, paragraph 4(a)(iii).

 

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, <lacaixa-online.com>, be transferred to the Complainant.

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Marino Porzio
Sole Panelist

Dated: June 29, 2006