The Complainant is Montes de Piedad y Caja de Ahorros de Ronda, Cádiz, Almería, Málaga y Antequera of Málaga, Spain, represented by Landwell, PricewaterhouseCoopers, Spain.
The Respondent is Rare Names, Web Reg of Massachusetts, United States of America, represented by NameMedia, Inc. of United States of America.
The disputed domain name <unicaja.net> is registered with TierraNet d/b/a DomainDiscover.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. On March 5, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On March 6, 2009, TierraNet d/b/a DomainDiscover 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” or “UDRP”), 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 March 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2009. The Response was filed with the Center on March 30, 2009.
On April 2, 2009, the Center received a Supplemental filing on behalf of the Complainant and on April 7, 2009 the Center received a Supplemental filing on behalf of the Respondent.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on April 21, 2009. 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.
The Complainant is a prominent banking institution in Spain. It is also the owner of several Spanish and international trademarks for UNICAJA including the following:
(a) Spanish trademark No.M-1.261.789 dated June 30, 1988 for UNICAJA;
(b) International Trademark No.663.482 issued by WIPO on July 22, 1996 for UNICAJA
(“the UNICAJA trademarks”).
The Complainant has also registered the following domain names and uses them in its business: <unicaja.com>, <unicaja.org>, <unicaja.tv>, <unicaja.mobi>, <unicaja.biz>, <unicaja.es>, <unicaja.sur>, <unicaja.info> and <unicaja.sur.es>.
The disputed domain name had originally been registered in the name of the Complainant and was restored to it pursuant to an administrative proceeding, Montes De Piedad Y Cajas De Ahorro De Ronda, Cádiz, Málaga, Almería Y Antequera (Unicaja) v. Fernando Labadia Pardo, WIPO Case No. D2000-1402. The Respondent registered the disputed domain name on April 9, 2004.
The Complainant alleges that the disputed domain name <unicaja.net> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4(a) of the Policy, the disputed domain name is identical to the Complainant's registered UNICAJA trademarks, the Respondent has no rights or legitimate interests in the disputed domain name, and the disputed domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the disputed domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the UNICAJA trademarks to which reference has already been made. It then says that it is self-evident that the disputed domain name <unicaja.net> is identical to the UNICAJA trademarks as it incorporates the trademarks without any change to their spelling.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the disputed domain name because the facts show that the Respondent has registered the disputed domain name without the consent of the Complainant, is not connected with a company or trademark incorporating the word “Unicaja”, is not commonly known by the domain name and that in all probability it registered the domain name to divert Internet users who are looking for the Complainant to other websites where a broad range of goods and services are offered, including services similar to those offered by the Complainant.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that this is so because the Respondent RareNames, WebReg registered the disputed domain name on April 9, 2004 and gave as the contact address a link to the website “www.buydomains.com” which displayed an advertisement that the disputed domain name was for sale. On the basis of this evidence the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant within the meaning of paragraph 4(b)(i) of the Policy.
The Complainant also submits that a perusal of the website to which the disputed domain name resolves, namely “www.unicaja.net”, shows that the website carries links to providers of various goods and services including links to banking and financial services in competition with the Complainant. The Complainant then submits that these facts show that the Respondent has used the disputed domain name to attract Internet users to its website by creating confusion with the UNICAJA trademarks as to the sponsorship of the services offered on the Respondent's website within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant submits that these circumstances show that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant also states that the disputed domain name “was under the Complainant's possession since year 2000 as the result of a WIPO resolution stated by the Document 11, (annexed to the Complaint), but that domain name was lost by our client by a mere administrative matter, and the Defendant took the domain name despite knowing of the priority rights of my client.”
The Respondent in its formal Response has not responded to the Complainant's submissions that the disputed domain name is identical to the UNICAJA trademarks or that the Respondent has no rights or legitimate interests in the domain name. The Respondent denies that it registered the domain name in bad faith. However, it makes no submission as to whether it has used the domain name in bad faith.
The Response also submits that as the domain name is not critical to the Respondent's business and to save the costs involved in defending its rights to the disputed domain name, it stipulates that the disputed domain name should be transferred to the Complainant.
Accordingly, the Respondent submits that the Panel should order the transfer of the disputed domain name to the Complainant without issuing an opinion on the merits of the case.
However, the Response was not the only submission made by the Respondent. The stipulation of the Respondent referred to above is contained in an affidavit sworn on March 30, 2009, by Mr. Bennett, the President and Chief Operating Officer of NameMedia, Inc. and annexed to the Response. The affidavit deposes to the fact that NameMedia, Inc. is the successor-in-interest to the Respondent and also deals with numerous other issues. It deposes that:
(a) the Respondent's business is to register domain names that become eligible for registration through expiration and deletion;
(b) the disputed domain name was registered more than a year after the Complainant's registration expired;
(c) it had offered the domain name for sale but did not register it for the purpose of selling it to the Complainant;
(d) it did not register the domain name with the Complainant's trademark in mind;
(e) it did not register the domain name to disrupt the Complainant's business, deny the Complainant a domain name or confuse its customers; and
(f) at the time of registration it was unaware of the Complainant's trademark and did not offer to sell the mark (sic) to the Complainant.
Both the Complainant and the Respondent filed supplemental submissions, the Complainant by way of an email to the Center dated April 2, 2009 and the Respondent by way of an Objection And Reply to Complainant's Supplemental Email Communication of April 2, 2009. The Panel has read both submissions but does not propose to refer to them in its decision or take them into account as they do not contain new material that would assist the Panel in reaching its decision.
The question arises first whether the Panel should accede to the Respondent's stipulation that the Panel should order the transfer of the domain name to the Complainant without issuing an opinion on the merits of the case. It is undoubtedly true that a panel has a discretionary power to make such an order. Previous UDRP panels have decided on appropriate facts that where a respondent consents that the transfer of a disputed domain name may take place, the panel may so order forthwith, without entering onto a discussion of the merits of the case. Such a position was adopted by the panelist in Levantur, S.A. v. Rarenames, WebReg, WIPO Case No. D2007-0857, who observed:
“Previous panels have held that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) of the Rules. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer: Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames WebReg, WIPO Case No. D2006-1336.”
The panel as presently constituted has also made similar orders in cases such as Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, FA 670051(Nat. Arb. Forum, May 23, 2006).
In the present case, however, the Respondent has joined issue with the Complainant on whether the Respondent registered the domain name in bad faith. Moreover, the affidavit of Mr. Bennett goes beyond the stipulation for transfer of the domain name and ranges over many of the issues that are usually canvassed in UDRP proceedings and are directly relevant to the issues of whether the Respondent has a right or legitimate interest in the domain name and whether it registered and used the domain name in bad faith. In these circumstances, the Panel's view is that the issues thus raised should be resolved and that the Complainant is entitled to a considered decision on each of them. The Panel will thus deal with the merits of the case as advanced in the Complaint and the Response.
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 Panel will therefore deal with each of these requirements in turn.
The Panel finds that the disputed domain name <unicaja.net> is identical to the UNICAJA trademarks. That is so because the disputed domain name consists of the totality of the trademark without any changes in spelling or additions.
It is also now well-established that if it is found, as in this case, that a domain name is identical to a trademark, that finding is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.net”.
As the Complainant clearly has rights in the UNICAJA trademarks as their registered owner, the Panel finds that the disputed domain name is identical to the trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable 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; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
It is also well-established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <unicaja.net>. That prima facie case is made out from the following considerations.
The Respondent chose for the disputed domain name, without the Complainant's authorization, the Complainant's well-known trademark UNICAJA which it has used since 1991 in its business as a leading Spanish and international banking and financial services company. Secondly, as well as the trademark being a prominent one, it is also an unusual name, having clearly been invented, suggesting that its significance would not have gone unnoticed at the time of its registration as a domain name. That notion is underlined by the fact that since its registration the domain name has been used to promote a wide range of goods and services with further links to banking and financial services. Moreover, the evidence shows that the Respondent is not associated with a business enterprise or a trademark in the name “Unicaja”. These facts give rise to the prima facie case made out by the Complainant.
The Respondent has raised several matters in the affidavit of Mr. Bennett that are clearly meant to show the legitimacy of the Respondent's interest in the domain name. They are in substance that, when it registered the disputed domain name, it was not influenced by the existence of the Complainant's trademark. However, those considerations do not rebut the prima facie case, for they do not show why the Respondent registered a domain name that, on inquiry, would have been revealed as the name and trademark of a prominent bank with an internationally registered trademark or why its name and trademark were then used to sell such a wide range of goods and services from which the Respondent must be presumed to have derived a financial benefit.
Accordingly, the prima facie case has not been rebutted and the Complainant has made out the second of the three elements that it must establish.
The Complainant has thus made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent's 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 site or location.
The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith and that in particular the Respondent's conduct puts the case squarely within paragraphs 4(b)(i) and (iv) of the Policy.
With respect to the former provision, the Panel notes that the Respondent concedes in the affidavit of Mr. Bennett that it buys domain names and that it has offered the disputed domain name for sale, although it denies that it registered the disputed domain name for the purpose of selling it to the Complainant. However, paragraph 4 (b)(i) looks to whether the Respondent registered or acquired the domain name primarily for the purpose of selling the domain name registration to “the Complainant… or to a competitor of (the) Complainant.” Having regard to the nature of the Respondent's business, the fact that it offered the domain name for sale and the fact that the unusual and invented name of the domain name would be of substantial value to the Complainant and its competitors and to no-one else, the Panel concludes that it was registered so that the Complainant or a competitor would buy it.
In this regard it should be noted that the Complainant has adduced evidence annexed to the Complaint showing that on February 18, 2009, prior to the filing of the Complaint, the website “www.unicaja.net” carried the statement that the disputed domain name was for sale and a link to BuyDomains.com where the further statement appeared that <unicaja.net> is available for $2,088.00.
Accordingly, the Panel concludes on the balance of probabilities that the case falls within the provisions of paragraph 4(b)(i) of the Policy.
The case also falls within the provisions of paragraph 4(b)(iv) of the Policy. The reasons why the Complainant's case has been made out are as follows.
First, by registering a domain name in the same name as the Complainant's clearly invented trademark and without any legitimate reason for doing so, it is more probable than not that the Respondent's intention in registering it was to create confusion with the UNICAJA trademark and also with the Complainant's name.
Secondly, the Respondent has undoubtedly been attempting to attract Internet users to the website “www.unicaja.net” within the meaning of paragraph 4(b)(iv) of the Policy, for the disputed domain name has been used and is currently being used for an active website.
Thirdly, the confusion likely to be created is confusion with the UNICAJA trademark about the affiliation of the products being promoted on the Respondent's website and the websites to which it is linked and as to whether those products are sponsored or endorsed by the Complainant. The Panel has been able to verify this matter itself by visiting the website “www.unicaja.net”, where a large range of goods and services of suppliers other than the Complainant are currently being displayed. There is, therefore, clear scope for confusion as to whether the goods and services being promoted on the websites are associated with the UNICAJA trademark and hence with the Complainant.
The Panel finds that these circumstances create confusion with the Complainant's trademark as to the sponsorship, affiliation and endorsement of the Respondent's site and the products and services linked to them and that the Respondent must be taken to have intended this confusion. Moreover, as the Complainant submits, it is a reasonable inference that the Respondent engaged in this activity for commercial gain in one form or another: see Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463.
The facts therefore come within paragraph 4(b) (iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts, for example: Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 and MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743.
Accordingly, the Panel finds that the domain name has been registered and used in bad faith and that the Complainant has therefore made out the third of the three elements that it must establish.
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, <unicaja.net> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: May 4, 2009