Complainant is Caja de Ahorros y Monte de Piedad de Madrid, from Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
Respondent is INFORMATION, LATIN AMERICAN TRADE of San Jose, Costa Rica.
The disputed domain names <cajamadrid.org> and <cajamadrid.net> are registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2009. On March 31, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On March 31, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that 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 “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 Respondent of the Complaint, and the proceedings commenced on April 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on April 28, 2009.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on May 11, 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 domain names <cajamadrid.org> and <cajamadrid.net> are registered to Respondent, INFORMATION, Latin American Trade, until January 26, 2010.
Complainant is the fourth largest Spanish financial group, serving over 7 million clients. Complainant is well-known throughout the world, and maintains 2,000 offices in Spain. Complainant uses the trademark CAJA MADRID in commerce by offering varying services including retail, business, and private banking. Complainant has registered and uses the domain name <cajamadrid.es>.
Complainant holds approximately 57 trademark registrations for the mark CAJA MADRID and CAJA DE MADRID, which have been registered in the European Union and Spain in relation to a variety of goods and services.
Subsequent to the Complainant's trademark registrations, the Respondent registered the disputed domains names, <cajamadrid.net> on January 25, 2000 and <cajamadrid.org> on January 26, 2000.
When typing the disputed domain names in the Internet browser, they both resolve to a page which appears to simulate the Complainant's web page at “www.cajamadrid.es”.
Complainant alleges Respondent violated paragraph (4)(a) of the UDRP when it registered and used domain names that are identical to Complainant's marks, had no rights or legitimate interests in the domain names, and acted in bad faith. As a result, Complainant requests for the disputed domain names <cajamadrid.org> and <cajamadrid.net> to be transferred to the Complainant.
Respondent did not reply to the Complainant's contentions and the Center notified the Respondent's default on April 28, 2009.
The Panel will evaluate the Complainant's allegations in reference to paragraph (4)(a) of the UDRP.
To succeed under the UDRP, Complainant must prove that Respondent is utilizing an identical or confusingly similar domain name to Complainant's trademark. The mere addition of “.org” or a similar gTLD added onto a trademark does not provide a sufficient distinction, and may still be considered identical or confusingly similar to the trademark: see Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.
Here, the disputed domain names are identical to Complainant's CAJA MADRID trademark. Therefore, the Panel considers that the first element of paragraph (4)(a) of the UDRP has been established.
Respondent is not authorized or licensed to use Complainant's mark as a domain name. There is no evidence of record supporting any alternative basis for finding a right or legitimate interest.
Moreover, the disputed domain names have no obvious association of any kind with Respondent and the only one in a position to give a reasonable explanation or demonstrate its right to or legitimate interest in the disputed domain names is Respondent. But the Respondent defaulted in this proceeding. Therefore, this Panel will not require Complainant to prove the negative, and the assertions will be taken as fact in light of Respondent's default. Accordingly, the Complainant's burden of proof has been satisfied.
When a respondent defaults, the panel may conclude the respondent has no evidence to rebut the assertions made by the complainant. It has been said that “it is appropriate to presume from the Registrant's default after notice that the Registrant does not dispute the facts presented by the Complainant” (Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
The failure of Respondent to participate in the proceeding may be suggestive of bad faith and a lack of legitimate interest in the mark: see Mars, Incorporated v. Vanilla, Ltd., WIPO Case No. D2000-0586.
When typing the disputed domain names in the Internet browser, they both resolve to a page which appears to be similar to Complainant's web page at “www.cajamadrid.es”. Such copying without authorization is clearly indicative of a bad faith intent to confuse Internet Users. This further indicates that Respondent was aware of the trademark CAJA MADRID and that it belongs to the Complainant. As a result, this Panel holds the Respondent has registered and uses the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the domain names <cajamadrid.org> and <cajamadrid.net> be transferred to the Complainant.
Gustavo Patricio Giay
Dated: May 27, 2009