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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

La Caixa D'Estalvis I Pensions de Barcelona v. David Jones

Case No. D2006-1639

 

1. The Parties

The Complainant is La Caixa D'Estalvis I Pensions de Barcelona, Barcelona, Spain, represented by Rodes & Sala Abogados, Spain.

The Respondent is David Jones, La Habra, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <lacaixab.com> is registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006 by e-mail and on January 4, 2007 in hardcopy. On December 27, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On December 29, 2006, Tucows, Inc. 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. On January 8, 2007, due to a request for clarification from the Center, the registrar reconfirmed that the Respondent is the current registrant of the disputed domain name. 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 January 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 7, 2007. 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 trademark upon which the Complaint is based is LA CAIXA. According to the documentary evidence and contentions submitted, Complainant owns a large number of trademark registrations around the world for the name “LA CAIXA” and for terms similar to LA CAIXA. Examples of such registrations are Spanish Trademark and Patent Office (“OEPM”) Registrations Ns. 2.100.533, issued December 5, 1997, 1.054.083, issued March 6, 1987, 1.054.082, issued March 5, 1985, 1.054.081, issued March 6, 1987, 1.053.032, issued March 6, 1987, 836.481, issued December 20, 1978, 836.456, issued April 24, 1978, 1.946.889, issued September 4, 1995, 1.996.117, issued April 22, 1996, 2.158.606, issued September 21, 1998, and 1.168.636, issued April 17, 1989. U.S. Trademark Registration N. 1.567.492, issued November 21, 1989, relates to trademark CAIXA DE PENSIONES “LA CAIXA” for banking services. Reference is made to Annexes 4, 5 and 6 of the Complaint.

According to the documentary evidence and contentions submitted, Complainant owns a variety of domain names which incorporate the terms “la caixa” or “caixa”, including the domain names <lacaixa.com> and <lacaixa.es>. Reference is made to Annexes 7 and 9 of the Complaint.

According to the documentary evidence and contentions submitted, Complainant is the result of the merger in 1990 of Caja de Barcelona, founded in 1844, and Caja de Pensiones, founded in 1904, all of which have been devoted to insurance, financial and related services and constitute one of the leading financial institutions in Spain and within Europe. Further, Complainant is known by the name LA CAIXA, as evidenced by articles of the press and by the results of a search on the keyword LA CAIXA in certain search engines. Reference is made to Annexes 8 and 10 of the Complaint.

The notoriety of the “LA CAIXA” sign has been recognized in a number of prior WIPO UDRP decisions, as for instance in Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”) v. Awanebi David, WIPO Case No. D2006-0632 (“the Complainant has a well renowned name in the financial sector in Spain (currently being among the foremost Spanish savings banks) and Europe”); Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”) v. Inversiones G.O.S. S.A., WIPO Case No. D2006-0506 (“El Demandante ha probado que “La Caixa” es en Espaсa una conocidнsima y prestigiosa entidad financiera”); Caixa DґEstalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 (“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”).

According to the documentary evidence and contentions submitted, Respondent registered the domain name <lacaixab.com> with Tucows, Inc. on March 12, 2006. On May 18, 2006, Complainant sent a letter to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 11 of the Complaint. Complainant states that Respondent never replied to this letter.

 

5. Parties’ Contentions

A. Complainant

Complainant argues that, except for the letter “b”, the disputed domain name is identical to the trademark LA CAIXA and, relying on previous WIPO UDRP decisions, contends that (i) incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark, and (ii) the mere addition of a slight spelling variation is not to be considered as creating a different trademark or avoiding confusion with Complainant’s registered trademark. Complainant also stresses that it owns the trademark CAIXABANK to which the disputed domain name would be identical or confusingly similar and that the suffix “.com” does not interfere with the valuation of identity or similarity.

Complainant contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent is not the owner of any trademark registration protecting the denomination “la caixa”, and is not commonly known by the domain name at issue, (ii) “la caixa” is a term in Catalan language spoken in very few places and the term LA CAIXA is a well-known trademark, (iii) Respondent did not respond to Complainant letter of May 18, 2006, and (iv) there is no website to which the disputed domain name resolves.

Finally, Complainant argues that Respondent registered the disputed domain name in bad faith because (i) Respondent knew of the existence of Complainant, (ii) LA CAIXA is an extremely well-known Spanish financial institution, (iii) Respondent knew that LA CAIXA is, from a commercial point of view, a key point for the Complainant, and (iv) Respondent knew of the existence of at least the domain name <lacaixa.com>. Complainant also contends that there is no service or product offered by the Respondent through the domain name in dispute and, relying on previous WIPO UDRP decisions, argues that lack of use or inactivity amounts to use in bad faith.

B. Respondent

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

 

6. Discussion and Findings

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Respondent provided inaccurate contact information on his Tucows, Inc. Whois record and the Center’s notification to Respondent was returned. Upon receipt of the Center’s Notification of Complaint and Commencement of Administrative Proceeding, the administration contact for Respondent replied to the Center and advised that Respondent had ceased to be a customer of theirs. This Panel does not find there are any exceptional circumstances within Paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Therefore, the Respondent’s default stands.

As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainants. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

A. Identical or Confusingly Similar

This Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, Case No. D2002-0615.

In fact, the similarity between the trademark LA CAIXA and the domain name <lacaixab.com> is obvious, as one panel has decided with respect to Complainant’s domain name <wwwlacaixa.com> in La Caixa d’Etalvis i Pensions de Barcelona v. Unaci Inc., Case No. D2005-0567. The addition of the letter “b” is not sufficient in this case to avoid confusion or to render a domain name dissimilar. The Panel also agrees with Complainant’s contention that, even if the letter “b” were to be considered a semantic contribution, the combination used by Respondent would still be in conflict with Complainant’s trademark CAIXABANK.

Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. In the disputed domain name it is clear that the registered trademark LA CAIXA stands out and is likely to lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel accepts Complainant’s contentions that (i) Respondent is not the owner of any trademark registration protecting the denomination “la caixa”, and is not commonly known by the domain name at issue, and (ii) “la caixa” is a term in Catalan language spoken in very few places and the term LA CAIXA is a well-known trademark.

Additional facts reinforce the evidence that Respondent lacks rights or legitimate interests to the disputed domain name: (i) Respondent never responded to Complainant’s letter of May 18, 2006, to assert any legitimate right or interest in the disputed domain name; (ii) the domain name <lacaixab.com> is inactive; and (iii) the domain name is not used in connection with a bona fide offering of services.

The Panel finds that the Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa dґEstalvis i Pensions de Barcelona (“La Caixa”) v. Young N, WIPO Case No. D2006-0406; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to provide the Panel with any evidence of the circumstances set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that, in light of the reputation of the trademark LA CAIXA and the adoption by Respondent, residing in the USA, of a word taken from the Catalonian language which is confusingly similar to Complainant’s trademark LA CAIXA, Respondent certainly knew of the existence of Complainant’s trademark and of its relevance in the European market.

It is very unlikely that Respondent would have registered <lacaixab.com> unless Respondent knew (i) of the existence of the domain name <lacaixa.com> and (ii) that the domain name at issue might be of some type of economic advantage. As decided in a previous case, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa DґEstalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, supra; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Relying on previous WIPO UDRP decisions, Complainant also argues 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 of bad faith.” See Telstra Corporation Limited v. Nuclear Marshmallos, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 NetPower, Inc., WIPO Case No. D2000-0022; J. Garcнa Carriуn, S.A. v. MЄ Josй Catalбn Frнas, WIPO Case No. D2000-0239.

The consensus view in the WIPO URDP Panel decisions has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2).

The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. Bayer Aktiengesellschaft v. Henrik Monssen, WIPO Case No. D2003-0275. In the instant case the majority of the circumstances referred to above is present and, therefore, the Panel concludes that there is sufficient evidence to show bad faith by Respondent as far as the use element is concerned.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

 

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 <lacaixab.com> be transferred to the Complainant.


Manoel J. Pereira dos Santos
Sole Panelist

Dated: February 16, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1639.html

 

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