WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal
Case No. D2006-1637
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 José Antonio Bernal, Cartagena, Murcia, Spain.
2. The Domain Name and Registrar
The disputed domain name <arealacaixa.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On December 22, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On December 22, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 any response but the Center received an e-mail on January 18, 2007, where the Respondent declared not to be interested in responding the Complaint. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on February 26, 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 Complainant is a Spanish company located in Barcelona 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 Cataluña y Baleares (established in 1904) and the Caja de Ahorros y Monte de Piedad de Barcelona (established in 1844).
From the evidence submitted by the Complainant, as annexes to the Complaint, the Complainant is the proprietor of numerous marks containing the expression “la caixa” and which 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, e.g. <lacaixa.es>, <lacaixa.com> or <lacaixa.org>.
The Complainant has been involved in many other UDRP procedures in respect “Lacaixa” and “Caixabank”.
The Respondent is the current registrant of the disputed domain name which does not display an active website, and appears instead to resolve to a website in Spanish titled “buscaprof”, with a search engine, at “http://www.buscaprof.es/arealacaixa/”.
The Respondent became the Registrant of the disputed domain name <arealacaixa.com> on February 8, 2006.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is identical or confusingly similar to the Complainant’s trademark LACAIXA, except for the mere addition of the word “area”.
Numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
The Complainant also alleges that on the basis of previous WIPO UDRP decisions it has also been consistently affirmed that the mere addition of a slight spelling variation (in this case, the word “area” before “lacaixa”) does not create a different trademark and cannot be considered sufficient to avoid confusion between a domain name and the Complainant’s trademark.
In respect of the Complainant’s contention that the Respondent’s lack rights or legitimate interests in the disputed domain name, the Complainant declares the Respondent is not the owner of any trademark registration that protects the denomination “la Caixa” and it is not commonly known by the domain name in dispute. Furthermore, it can be concluded that there is little possibility that such legitimate right or interest exists, since “la Caixa” is extraordinarily well-known in Spain and holds the majority of the related trademarks.
Finally, the Complainant is convinced that the disputed domain name has been registered in bad faith, with the only purpose of obtaining some type of economic gain from its sale. Complainants asserts it is obvious that the Respondent knew of the existence and identity of the Complainant when registering the domain name.
In respect the use of the domain name the Complainant considers that the evidence of inactivity and lack of use of the disputed domain name amounts to passive holding by the Respondent in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432). Here, Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied that Complainant has made continuous use of its registered and incontestable marks, in which where LA CAIXA appears to be a distinctive element and has spent much time, money and effort promoting the mark, and has established significant good will.
Previous panels have decided that the addition of a generic and descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809 (finding that the addition of the words “buy” and “online” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).
Accordingly, in the present case, the addition of the word “area” to the domain name is not sufficient to distinguish new Internet sources from existing service sources. Therefore, the Panel is prepared to accept the submission of the Complaint that the addition of the term “area” to the Complaint’s trademarks to form the domain name <arealacaixa.com> is insignificant and consequently the domain name is confusingly similar to the Complaint’s trademark.
The Panel therefore concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by Complainant.
- There is no indication in the file that Respondent is known under the disputed domain name.
- There is no indication in the file that Respondent is the owner of any trademark registration.
- La Caixa is extraordinarily well-known in Spain and holds the majority of the related trademarks.
- Respondentis apparently domiciled in Spain.
- There’s no website to be found at the disputed domain name.
Furthermore, the Respondent has not provided evidences of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent is apparently domiciled in Spain and any legal action would presumably have to be taken against him in that country, the Panel considers also Spanish Law, even it is not strictly necessary to do soin the terms of the Policy. However, I believe that under article 34 of the Spanish Trademark Law, the Complainant would be able to show prior and better rights to hold the contested domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel has considered Complainant’s assertions and evidence with regard to Respondent’s registrations and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.
Complainant has also established that Trademarks have been used extensively in Spain and throughout the world and that Complainant’s Trademarks are famous and valuable. Accordingly, it is very unlikely that Respondent would have registered <arealacaixa.com> unless he knew either the existence of the domain name <lacaixa.com> or that the domain name at issue might be of some type of economic advantage.
The Panel and based on previous WIPO UDRP decisions, eg. World Wrestling Federation Entertainment Inc (WWFE) v. M. de Rooij, WIPO Case No. D2000-0290, is also in a position to make a finding of bad faith based on the fact that the domain name website had not been developed: “the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts.”
Given the evidence put forward by the Complainant, and the lack of any response from the Respondent, this Panel finds that the Domain name <arealacaixa.com> has been registered and is being used in bad faith.
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, <arealacaixa.com> be transferred to the Complainant.
Dated: March 12, 2007