WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caja de Ahorros Municipal de Burgos v. Web Advertising Corp.
Case No. D2007-1547
1. The Parties
The Complainant is Caja de Ahorros Municipal de Burgos, Spain, represented by Landwell-PricewaterhouseCoopers, Spain.
The Respondent is Web Advertising Corp., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <cajaburgos.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2007. On October 19, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On October 19, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 October 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2007.
The Center appointed Luca Barbero as the sole panelist in this matter on November 22, 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 Caja de Ahorros Municipal de Burgos, a private welfare institution.
The Complainant is the owner inter alia, of the following trademarks CAJABURGOS and CAJA DE BURGOS (Trademark numbers: M-.2.54.215, M-1.042.490, M-768.766, M-1.914.896, M-1.914.900, M-1.914.901, M-914.903, M-1.914.906, M-1.914.907, M-1.914.908, M-2.564.480, M-1.665.474, M-2.618.428, M-2.598.404, M-2.406.760, M-2.070.272, M-2.070.273, M-2.479.600, M-2.406.758).
The Complainant is furthermore the registrant of a number of domain names consisting of or including the signs “Cajaburgos” or “Caja de Burgos” such as <cajadeburgos.es> registered on February 13, 1997; <cajaburgos.es> registered on September 20, 2000; <cajadeburgos.com.es> registered on November 24, 2006; and <cajaburgos.com.es> registered on November 24, 2006.
The Respondent registered the domain name on January 14, 2004.
5. Parties’ Contentions
The Complainant points out that Caja de Burgos is a private welfare institution incorporated on June 11, 1926 for an indefinite period at the initiative of Burgos City Council.
The Complainant informs the Panel that as a not-for-profit credit institution, its purpose is to receive funds, foment saving and manage funds entrusted to it, acting autonomously and independently with respect to all corporations, entities or persons.
The Complainant emphasizes to be the leading financial institution in the province of Burgos according to the Moody’s Investors Service September 2006 report.
The Complainant states that the Respondent registered the disputed domain name on January 14, 2004, i.e. approximately twenty six years after the registration of the trademark CAJA DE BURGOS and approximately seven years after the registration of the domain name <cajadeburgos.es> by the Complainant.
The Complainant states that the disputed domain name is identical to its CAJABURGOS and CAJA DE BURGOS registered trademarks as well as to the company name “Caja de Ahorros Municipal de Burgos”.
The Complainant contends that the registration and use of the contested domain name could obviously cause confusion to consumers, due to the similarity between the disputed domain name and the Complainant’s trademarks and company name.
The Complainant informs the Panel that in order to maintain its high position within the Spanish financial sector, Caja de Burgos has ensured the permanent presence of its trademarks in numerous advertising campaigns for products and services through several medias.
The Complainant also contends that the name “Caja de Burgos” forms part of the company name “Caja de Ahorros Municipal de Burgos” and is the name under which Caja de Burgos is known in the financial world, and always in the savings bank’s own activities and in the Internet.
The Complainant asserts that the trademarks CAJABURGOS and CAJA DE BURGOS are extremely well known by the general public.
The Complainant holds the view that the real intention of the Respondent is to attempt to attract for commercial gain by means of registering the disputed domain name, which is totally identical to one of the Complainant’s well known trademarks.
With respect to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is a company that does not carry on any activity related to savings banks, financial institutions or any other activity related with the term “Caja”.
The Complainant states that the Respondent has not been authorized to register or use the Complainant’s trademarks.
The Complainant concludes that the Respondent has not registered any industrial property right containing the name “Cajaburgos” or “Caja de Burgos” in Spain and therefore has no legitimate interest in the disputed domain name.
With reference to the circumstances evidencing bad faith the Complainant indicates that the disputed domain name resolves to a website displaying a number of links to commercial websites operated by third parties including Complainant’s competitors.
The Complainant further points out that such a conduct causes a real damage and that the activity of the Respondent is far away from the financial activities since the website does not seem to carry out any other financial activity apart from offering links to other financial entities’ websites.
The Complainant emphasizes that the language of this website is the Spanish language which is highly indicative of the Respondent’s bad faith because the target users of the current website are the Spanish users or at least users that understand the Spanish language, who are the commercial targets of Caja Burgos.
The Complainant underlines that the Respondent is exploiting the brand image of Caja de Burgos to offer different products and services – not related to the financial sector- through links to websites in respect of which Caja de Burgos has no relationship, not giving any kind of guarantee over them thereof. The Complainant concludes that the Respondent is obtaining an economic benefit.
The Complainant contends that, in light of previous WIPO UDRP decisions, the registration of a domain name that may be confused with a well known trademark is always deemed to be carried out in bad faith, since the respondent, whose residence is in Spain, is presumed to be aware of the existence of the brand name when the domain name is registered.
The Complainant emphasizes that the Complainant’s trademarks have been registered prior to the registration of the disputed domain name.
According to the Complainant, the Respondent could have realized that Caja de Burgos was the legitimate owner of <cajaburgos.es> and <cajadeburgos.es> (among others), both through the advertising campaigns conducted and by searching for those names in a search engine (the Complainant informs that there are 2,060,000 results for “Caja de Burgos” in the search engine google)
The Complainant underlines that the Respondent cannot legitimately operate in the Internet with the domain name <cajaburgos.com>, which is one of the most important commercial domains in the Internet and one of the main channels of the Complainant’s own activity.
The Complainant contends that it is therefore losing clients/visitors given that the current contents of the domain name <cajaburgos.com> only offers publicity of other financial entities that are the main competitors of Caja de Burgos.
The Complainant concludes with reference to the issue of bad faith that any Internet user can think that Caja de Burgos does not still offering its services through the Internet channel, or it has been absorbed by a competitor, or even it does not exist or that those services and information are provided by or under any kind of supervision of Caja de Burgos.
The Respondent did not reply to the Complainant’s contentions.
Therefore, the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default as the Panel considers appropriate according to paragraph 14(b) of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for CAJABURGOS and CAJADEBURGOS.
The Panel finds that the disputed domain name is therefore identical or confusingly similar to the trademarks owned by the Complainant.
In comparing the Complainant’s marks to the Domain Name with reference to <cajaburgos.com> it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
Indeed there is no relation, presented to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks or name under any circumstance.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the domain name.
The Panel notes that the domain name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay per click website aimed only at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed domain name merely to direct visitors to various third party commercial websites does not constitute a legitimate, non-commercial use of the Domain Name under the Policy. Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044.
Along the same lines see also Bayerische Motoren Werke AG v. (This Domain For Sale) Jonathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the disputed domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because: “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the Panel stated that “… although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The domain name <bilfinger.com> is only used as a link to a generic directory. . . there is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
Also on this point is the panel’s statement, inter alia in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of use of the Complainant’s trademarks since 1926 and their well-known character as well as the amount of advertising of the Complainant’s activity, the Respondent was likely aware of the Complainant’s trademarks.
As in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”. Furthermore, since the Complainant’s trademark in this case is well-known. e.g. Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103.
The Panel also observes that the contested domain name points to a parking page with a number of links related to financial activities which is corresponding to the activity of the Complainant, additional element confirming that the Respondent was well-aware of the Complainant’s trademarks.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Internet users, in light of the contents of the web page linked to the domain name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see i.a Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the domain name was 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 <cajaburgos.com> be transferred to the Complainant.
Dated: December 7, 2007