La Caixa D’Estalvis I Pensions de Barcelona v. La Caixa PLC
Case No. D2006-1640
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 La Caixa PLC, Paris, France.
2. The Domain Name and Registrar
The disputed domain name <lacaixabk.com> is registered with eNom, 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 eNom, Inc. a request for registrar verification in connection with the domain name at issue. On December 27, 2006, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. 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 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2007. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on February 7, 2007.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on February 14, 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 trademarks upon which the Complaint is based are LA CAIXA and CAIXABANK. 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 close to LA CAIXA, including the trademarks CAIXABANK, CAIXATRUST and FUNDACIÓ LA CAIXA. Examples of such registrations are Spanish Trademark and Patent Office (“OEPM”) Registrations Nos. 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. OEPM Registration No. 1.219.216, issued November 1, 1991, relates to trademark CAIXATRUST, OEPM Registrations Nos. 1.293.640, 1.293.641, 1.293.642, and 1.293.643, all issued issued July 16, 1989, inter alia, relate to trademark CAIXABANK, and OEPM Registrations Nos. 2.416.322 and 2.416.323, all issued March 16, 2002, relate to trademark FUNDACIÓ LA CAIXA. Reference is made to Annexes 4 and 5 of the Complaint. The trademarks LA CAIXA and CAIXABANK are also registered in France as per Annex 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 name <caixabank.com> created on December 31, 1996. Reference is made to Annex 7 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 “LA CAIXA” sign has been recognized in a number of prior WIPO UDRP decisions, as for instance in Caixa D’Estalvis 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 D’Estalvis 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 España una conocidísima y prestigiosa entidad financiera”); Caixa D’Estalvis 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”). The notoriety of “CAIXABANK” sign was recognized in WIPO UDRP cases: Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Enric-Josep, WIPO Case No. D2001-0438(“El demandante ha probado documentalmente la notoriedad de la denominación CAIXABANK en Andorra, país en el que figura domiciliado en demandando”); Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Gaspar Saludes, WIPO Case No. D2001-0437 (“El demandante ha probado documentalmente la notoriedad de la denominación CAIXABANK en Andorra, país en el que figura domiciliado en demandando”).
According to the documentary evidence and contentions submitted, Respondent registered the domain name <lacaixabk.com> with eNom, Inc. on March 18, 2006. On May 17, 2006, Complainant sent an e-mail to Respondent requiring the transfer of the disputed domain name. Reference is made to Annex 11 of the Complaint. Complainant states that Respondent never answered to this letter.
5. Parties’ Contentions
A. Complainant
Complainant argues that, except for the letters “bk”, 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, (ii) if the “bk” addition were to be considered a semantic contribution, the disputed domain name would also be identical or confusingly similar to the trademark CAIXABANK, (iii) 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 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” or “caixabank”, 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 the existence of Complainant, (ii) LA CAIXA is a extremely well-known Spanish financial institution, (iii) Respondent knew that LA CAIXA is, from a commercial point of view, a key point for Complainant, and (iv) Respondent knew the existence of at least the domain names <lacaixa.com> and <caixabank.com>. Complainant also contends that there is no service or product offered by 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
Respondent did not submit a formal reply to Complainant’s contentions. An email from the administrative contact for the disputed domain name was received by the Center on January 16, 2007.
6. Discussion and Findings
A. Effect of the Default
Initially, the administrative contact for Respondent stated that “who registered this domain name does not exist, it was a fraudulent order” and “[w]e will [be] more than happy to transfer the domain over”. The Center, copying the email addresses for the registrant of record and Complainant, advised the administrative contact for Respondent that, unless the parties would settle, the Center would proceed with the case accordingly. A series of communications from the administrative contact for Respondent followed but no settlement was reached.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. However, 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).
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. As a result, the Panel infers that 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 Complainant. 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.
B. 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 may be 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.
Here, the addition of the letters “bk” is not sufficient to avoid confusion or to render a domain name dissimilar. In fact, the domain name <lacaixabk.com> is a combination of the trademark LA CAIXA with the short form for the word “bank” which is a basic element of the trademark CAIXABANK. The result is that the word “lacaixabk” is confusingly similar to both trademarks. Panel also agrees with Complainant’s contention that the addition of the letters “bk” to the trademarks LA CAIXA and CAIXABANK can be considered a spelling variation and, accordingly, the combination used by Respondent would still be in conflict with Complainant’s trademarks LA CAIXA and CAIXABANK.
The similarity created by Respondent in the disputed domain name is particularly insidious because of the serious risk of confusion for consumers attempting to access Complainant’s websites <lacaixa.com> or <caixabank.com>. Clearly, the disputed domain name was created with the intention of taking advantage of the fame of the trademarks LA CAIXA and 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 leads 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.
C. 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 (ii) “la caixa” is a term in Catalan language spoken in very few places and the term LA CAIXA is a widely known trademark.
An issue which deserves attention is whether or not Respondent is commonly known by the domain name at issue even if Respondent has acquired no trademark or service mark rights. It might be argued that Respondent is using the distinctive part of its tradename, i.e., the words “LA CAIXA”. However, this argument does not stand for itself given the statement of the administrative contact for Respondent to the effect that “who registered this domain name does not exist, it was a fraudulent order”.
Additional facts reinforce the evidence that Respondent lacks rights or legitimate interests to the disputed domain name: (i) Respondent never responded to Complainant’s e-mail of May 17, 2006, to assert any legitimate right or interest in the disputed domain name; and (ii) the domain name is not used in connection with a bona fide offering of services since it is inactive.
The Panel finds that 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 d´Estalvis 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 of the types of evidence 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.
D. Registered and Used in Bad Faith
In light of the reputation of the trademark LA CAIXA and the adoption by Respondent of a domain name which is a combination of that trademark with the short form for the word “bank” which is a basic element of the Complainant’s trademark CAIXABANK, it is clear that Respondent in all likelihood knew of the existence of Complainant’s trademarks and of their relevance in the European market.
It is also worth noting that the trademarks LA CAIXA and CAIXABANK were registered in France where Respondent appears to be located, when the disputed domain name was created. In accordance with previous Panels findings already, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis 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 Marshmallows, WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. Mª José Catalán Frías, 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 facts referred to above are present and, therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.
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 <lacaixabk.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos Sole Panelist
Dated: February 28, 2007
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